Baldwin v. Abercrombie & Fitch Co.

• Decision Date: 09 November 1915
• Docket Number: 26.
• Citation: 228 F. 895
• Parties: BALDWIN (JOHN SIMMONS CO., Intervener) v. ABERCROMBIE & FITCH CO. (JUSTRITE MFG. CO., Intervener).
• Court: U.S. Court of Appeals — Second Circuit

228 F. 895

BALDWIN (JOHN SIMMONS CO., Intervener) v. ABERCROMBIE & FITCH CO. (JUSTRITE MFG. CO., Intervener).

No. 26.

United States Court of Appeals, Second Circuit.

November 9, 1915

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This cause comes here on appeal from the decree of the United States district Court for the Southern District of New York entered on February 10, 1915, holding valid and infringed claim 4 of the reissue patent No. 13,542, issued to Frederick E. Baldwin on March 11, 1913. The invention covered by this patent is for a lamp designed to generate and burn acetylene or similar gas. It is intended for use as a bicycle automobile, yacht, or miner's lamp but its commercial utility has been principally in connection with miner's cap lamps. The invention is shown in the following drawing:

The complainants relied solely upon claim four, which reads as follows: 'In a lamp of the kind described, the combination with a water reservoir, and a receptacle for calcium carbid, of a water tube extending from the former a considerable distance into the latter and adapted to be embedded in the mass of carbid in the receptacle, and a rod extending through the water tube, and constituting a stirrer to break up slaked carbid around the outlet of the water tube, the rod operating to restrict and thus control the flow of water to the carbid, as set forth.'

The John Simmons Company intervened in the suit, became a complainant, and alleged that it was a corporation organized and existing under the laws of the state of New York; that it had its principal place of business in the borough of Manhattan in said state; that it was the only manufacturer of the inventions of the plaintiff, Baldwin, and that unless it was allowed to intervene it would necessitate the beginning of a new action for the recovery of damages and profits; that in 1908 an arrangement was made between it and Baldwin whereby the former manufactured the lamps while both parties sold them; that in 1911 a new contract was made, under which it acquired the exclusive right to manufacture and sell the lamps.

The Abercrombie & Fitch Company, of the borough of Manhattan and state of New York, was the original defendant and sold the lamps alleged to infringe. The Justrite Manufacturing Company of Chicago, Ill., was the manufacturer of the lamps sold by the Abercrombie & Fitch Company, and intervened under federal equity rule No. 37, which provides that any person may be made defendant who has or claims an interest adverse to the plaintiff.

The amended answer of the Justrite Manufacturing Company denied that the plaintiff, Baldwin, was the original, sole, and first inventor of the alleged improvement claimed by him in his letters patent; averred that the said improvement was null and void for want of utility, as well as for want of invention on the part of Baldwin; denied that the same had been in public use or on sale for more than two years prior to the application for the patent; denied the fact of infringement; averred that the principle of the alleged invention was not new, but had been fully described in letters patent, both of the United States and of foreign countries, long prior to the application made by the plaintiff, Baldwin, for his patent, and averred that the reissue patent No. 13,542 was invalid.

The testimony was taken in open court, and a decree entered holding reissue letters patent No. 13,542 to be valid as to claim 4, that defendants had infringed, that plaintiff recover the profits which defendants derived from their infringement, that a perpetual injunction issue, and that the injunction granted be suspended pending appeal if appeal be promptly taken. It was also decreed that plaintiffs recover their costs and disbursements.

James R. Offield and Charles K. Offield, both of Chicago, Ill., for appellants.

James Q. Rice, of New York City, for appellees.

Before LACOMBE, COXE, and ROGERS, Circuit Judges.

ROGERS Circuit Judge (after stating the facts as above).

United States patent No. 656,874 was issued to Frederick E. Baldwin on August 28, 1900, for an acetylene gas generating lamp; and letters patent No. 821,580 was issued to him on May 22, 1906, for an improvement on the form described in No. 656,874; and reissued letters patent No. 13,542 was issued to him on March 11, 1913, and is the patent in suit.

Patents No. 656,874 and No. 821,580 came before the Circuit Court for the Southern District of Illinois in a suit brought by Baldwin, who claimed his patents were infringed by the lamp of the Bleser patent, No. 949,349. The court sustained Baldwin's claims, and the case was appealed to the Circuit Court of Appeals for the Seventh Circuit, which affirmed in part and reversed in part. The court, decided that patent No. 656,874 was valid, and claim 1 infringed by the Bleser patent, but held claims 2, 3, 4, 5, 6, and 10 not infringed. Patent No. 821,580 was held valid, but not infringed. It declared that in view of the prior art patent No. 656,874 was not entitled to a broad construction with reference to equivalents. Bleser v. Baldwin, 199 F. 133, 117 C.C.A. 615 (1912).

The above decision was handed down on April 23, 1912, and Baldwin on February 3, 1913, filed his application for the reissued patent No. 13,342. The latter patent then came before the District Court for the Western District of Pennsylvania, and was held valid and infringed. Baldwin v. Grier Bros., 215 F. 735. The case was then taken on appeal to the Circuit Court of Appeals for the Third Circuit, and that court held claim 4 of the reissued patent void. The court thought claim 4 of the reissue patent broader than that of the original patent, and said that a reissue patent could not be allowed to broaden an original patent after the lapse of so long a time as seven years, and after the original patent had been limited by final adjudication. Grier Bros. Co. v. Baldwin, 219 F. 735, 135 C.C.A. 433.

In the suit now before us this same claim 4 of the reissue patent is the claim involved. The court below has held it valid and infringed. Its opinion conflicts with the decision in the Third Circuit.

This court appreciates that uniformity is desirable in decisions respecting the validity of patents, and is disposed in all doubtful cases to conform to a decision rendered in another circuit. But in a case in which this court is convinced that the conclusion reached was wrong, it is not at liberty to surrender its own judgment upon the issue involved in order that uniformity may be secured. In Mast, Foos & Co. v. Stover Manufacturing Co., 177 U.S. 485, 20 Sup.Ct. 708, 44 L.Ed. 856 (1900), Mr. Justice Brown said:

'Comity persuades; but it does not command. It declares, not how a case shall be decided, but how it may with propriety be decided. It recognizes the fact that the primary duty of every court is to dispose of cases according to law and the facts; in a word, to decide them right. In doing so, the judge is bound to determine them according to his own convictions. If he be clear in those convictions, he should follow them. It is only in cases where, in his won mind, there may be a doubt as to the soundness of his views, that comity comes in play and suggests a uniformity of ruling to avoid confusion, until a higher court has settled the law. It demands of no one that he shall abdicate his individual judgment, but only that deference shall be paid to the judgments of other co-ordinate tribunals. Clearly it applies only to questions which have been actually decided, and which arose under the same facts.'

The plaintiff, Baldwin, first began to market an acetylene miner's cap lamp in January, 1906. At that time there was no other acetylene cap lamp on the market. Prior to the introduction of the Baldwin lamp, miners used oil lamps, with a wick, or candles. In an oil lamp the mining law required the use of a high grade of oil, which cost the miners from 28 to 40 cents a gallon, and a gallon lasted for a week. The Baldwin acetylene lamp resulted in quite a saving to the miners, for it could be used for a week at a cost not to exceed 8 cents. The oil lamps, too, gave off a great deal of smoke, which contributed largely to miner's asthma and also consumed a great deal of the oxygen of the air. The Baldwin lamp gave off no smoke, and only consumed one-eighth of the oxygen that the oil lamps consumed. Then, too, the oil lamps had a very large wick, an inch in diameter and rough on the top, and in going through windy places with them sparks were often blown off into the timber, which was oil-soaked, and therefore dangerous. And miners were sometimes careless, and would throw partly consumed wicks away without putting their foot on them to extinguish them. In preparing powder to blast with, the miners often would keep the lamps on their hats, although the law prohibited their doing so, and sometimes a spark would fall on the powder and ignite it. It was not an uncommon occurrence for miners to be injured in this way. So that the invention of the plaintiffs' acetylene lamp involved a considerable saving of money to the miners, as well as an improvement in their health through better air, and gave them protection against explosions and the dangers arising from conflagrations within the mines. It is not surprising, therefore, to find that over 1,000,000 of the acetylene lamps of the patent have been sold in the market in the short time that has elapsed since the patent was granted. The Baldwin lamp had merit in it, and the inventor accomplished something that was well worth while.

We come now to consider the questions involved. The Circuit Court of Appeals in the Seventh Circuit held, as before stated, that the original patent was valid, including claim 4, and the Third Circuit held that claim 4 was...