General Electric Co. v. Cooper Hewitt Electric Co.

• Decision Date: 08 January 1918
• Docket Number: 3036.
• Citation: 249 F. 61
• Parties: GENERAL ELECTRIC CO. v. COOPER HEWITT ELECTRIC CO.
• Court: U.S. Court of Appeals — Sixth Circuit

249 F. 61

GENERAL ELECTRIC CO. v. COOPER HEWITT ELECTRIC CO.

No. 3036.

United States Court of Appeals, Sixth Circuit.

January 8, 1918

Squire, Sanders & Dempsey, of Cleveland, Ohio, and Pennie Davis & Marvin, of New York City (W. B. Morton and Wm. H Davis, both of New York City, of counsel), for appellant.

Parker W. Page and Thomas B. Kerr, both of New York City, for appellee.

Before KNAPPEN, MACK, and DENISON, Circuit Judges.

DENISON Circuit Judge.

This is the ordinary suit for infringement, based upon patent No. 1,090,992, issued March 24, 1914, to Kuch for an improved mercury vapor lamp. Appellant acquired title to the patent and was the plaintiff below. The bill was dismissed because the patent was thought to be invalid, and the plaintiff appeals.

The conclusion of invalidity is rested upon two grounds: First, that new matter was introduced into the application and was not supported by new oath; and, second, that Kuch was anticipated by Bastian, and that this priority had been adjudicated in an interference between them. A due understanding of the questions thus presented requires a brief explanation of the invention. Lamps of this type consist essentially of a sealed glass tube, more or less exhausted, having a mercury electrode at each end. When the tube is filled with the mercury vapor and the electric current passed through, the vapor becomes luminous or incandescent. One of the recognized difficulties is that, since greater heat develops at the anode than at the cathode, there is at the anode a greater vaporization, and the mercury is distilled over and accumulates at the cathode, so as to destroy the proper balance. This difficulty had been met by devices or constructions which caused or permitted the excess mercury at the cathode to run back occasionally along the tube to the anode; but this remedy brought new operating difficulties in the high pressure lamps. Kuch's object was to find a better way to preserve an automatic balance between the two electrodes. He took that style of lamp which had a horizontal tube carrying the mercury at each end in a depending enlargement or bulb, and he accomplished a first or general automatic balance by directly attacking the vaporization at the anode. His remedy for the excess was to make the anode bulb larger than the cathode bulb. It followed that the outer surface of the former bulb, which would radiate heat, would be larger, and would therefore by radiation subtract heat from that generated inside the bulb, and so diminish what may be called the net heat of the mercury, and the comparative resulting anode vaporization. He knew that the effect of a given current upon these electrodes and under given conditions could be computed, and his inventive thought was that, if the radiating surfaces of the two bulbs were proportioned to the amount of the heat to be generated in each, there would be corresponding radiation and the proper vaporization balance would be maintained. ^[1] He thus brought about a rough and general equalization by attacking the cause of inequality; but changes of external temperature or other conditions would prevent this preliminary regulation from entirely and always stopping the accumulation of excessive mercury at the cathode, and so Kuch provided a further and final automatic regulation. He knew that there occurred at the cathode a phenomenon called the 'cathodic aigret.' This was an agitation suggestive of boiling, and it extended a certain depth from the surface of the mercury in the cathode. Obviously, the bulb surface adjacent to the mercury thus agitated would radiate heat much more actively than the remaining and lower part of the bulb surface. Kuch utilized this effect of this phenomenon by interposing, between his horizontal illuminating tube and his depending cathode bulb, an intermediate upwardly-inclined tube of much less diameter than the illuminating tube. A small excess accumulation of mercury in this intermediate tube would very considerably raise the lowest point of this aigret agitation and so diminish radiation, increase the net heat, and promote vaporization. A slight drop in the mercury in this tube would have the converse magnified effects; and the mercury level would, automatically, maintain itself substantially constant. We here reproduce Fig. 1 of the Kuch patent as originally filed and as amended. Claims 2 and 3 are given in the margin. ^[2] Claims 1 and 4, also sued upon, do not require separate consideration

The original drawing did not show any anode bulb or passage thereto from the illuminating tube, nor did the specification contain any particular description of either. During the progress of the application, an amended drawing was filed as above, and the specification was made to say, in so many words, that the anode bulb was larger than the cathode, and that the passage leading from the illuminating tube to the anode was larger than the passage or intermediate tube leading to the cathode bulb. The claims, as issued, are made to depend in part upon these things not originally specified. Hence it is plausibly argued that the insertion was of new matter and was vital to the invention as patented; and thereupon it is said that the patent is void. Railroad v. Sayles, 97 U.S. 554, 563, 24 L.Ed. 1053; Railroad v. Consolidated Co. (C.C.A. 6) 67 F. 121, 129, 14 C.C.A. 232. This view overlooks the substance of the invention, as disclosed in the original specification and drawing. The rule is that insertions by way of amendment in the description or drawing, or both, do not hurt the patent, if the insertions are only in amplification and explanation of what was already reasonably indicated to be within the invention for which protection was sought-- 'something that might be fairly deduced from the original application. ' Hobbs v. Beach, 180 U.S. 383, 395, 21 Sup.Ct. 409, 45 L.Ed. 586; Cleveland Co. v. Detroit Co. (C.C.A. 6) 131 F. 853, 857, 68 C.C.A. 233; Proudfit Co. v. Kalamazoo Co. (C.C.A. 6) 230 F. 120, 123, 144 C.C.A. 418; Cosper v. Gold, 36 App.D.C. 302. When we seek to apply this rule in this case, we first observe that the alleged new matter was not only permitted by the Patent Office, but was required, because an element claimed was not shown or sufficiently described. The Patent Office has a strict rule on this subject. It fully recognizes that new matter must not be permitted, and it is constantly engaged in defining what is and what is not new matter. (Image Omitted)

The application of the rule must, of necessity, be more or less arbitrary, and the presumption of correctness which attends Patent Office rulings must apply with especial force to this class of ruling; and most peculiarly is that true when the applicant has only complied with the demands which the Patent Office made.

It is clear to us that Kuch's original application did cover and include these features sufficiently to justify the later fuller description and drawing. After reciting that the evolution of heat at the anode was greater than at the cathode, so that the vaporization at the latter was less, he said that the first object of his invention was to so determine the sizes of the two electrode vessels that they should be in the same proportion as the heats developed in them, and that the second object was to connect the cathode with the illuminating tube by means of a narrow intermediate tube. He also says:

'It is easy to so proportion the positive and negative electrode vessels that the proportion of the heats given off at both electrodes is approximately the same as the proportion of heats developed at both electrodes.'

He also says:

'The size of the cathode vessel in proportion to that of the anode vessel is from the beginning so determined that' the desired results are effected.

His first claim was,

'In a gas or vapor electric lamp the combination with an illuminating tube of an anode vessel at the one end of said illuminating tube, a cathode vessel, a narrow intermediate tube between the other end of said illuminating tube and said cathode vessel, and a metal liquid doing work in said anode vessel, said cathode vessel and said narrow intermediate tube.'

The second claim specified that the sizes of the anode and the cathode vessels should be in proportion to the developed heats. Later claims had specific reference to the function of the narrow intermediate tube in controlling the cathode heat through the aigret action. Thus we find repeated and direct reference to the fact that the anode bulb is to be larger than the cathode bulb, and in the very proportion which has always been specified in the claims. Since Kuch did not illustrate this anode vessel, he must be deemed to have referred to the well-known form in common use. Cosper v Gold, supra. In this form, the illuminating tube entered the anode chamber without any constriction, but by an opening which was the full cross-secti...