General Electric Co v. Wabash Appliance Corporation

• Decision Date: 16 May 1938
• Docket Number: No. 453,453
• Citation: 37 USPQ 467,58 S.Ct. 899,304 U.S. 364,82 L.Ed. 1402
• Parties: GENERAL ELECTRIC CO. v. WABASH APPLIANCE CORPORATION et al
• Court: U.S. Supreme Court

304 U.S. 364

58 S.Ct. 899

82 L.Ed. 1402

GENERAL ELECTRIC CO.

v WABASH APPLIANCE CORPORATION et al.

No. 453.

Argued March 4, 1938.

Decided May 16, 1938.

Messrs. Merrell E. Clark and Hubert Howson, both of New York City, for petitioner.

Mr. Samuel E. Darby, Jr., of New York City, for respondents.

Mr. Justice REED, delivered the opinion of the Court.

Petitioner, General Electric Company, brought this patent infringement suit based on Pacz patent, No. 1,410,499, relating to a tungsten filament for incandescent lamps. The patent, issued March 21, 1922, on an application filed February 20, 1917, contains process and product claims; only the latter are here involved. The District Court for Eastern New York held claims 25, 26, and 27 valid and infringed, and gave petitioner a decree for an injunction and accounting. 17 F.Supp. 901. The Court of Appeals for the Second Circuit held that petitioner's product was anticipated by filament produced under the teachings of the Coolidge patent, No. 1,082,933, and reversed with directions to dismiss the bill of complaint. 91 F.2d 904. This decision conflicted with that handed down by the Circuit Court of Appeals for the Ninth Circuit, Anraku v. General Electric Co., 80 F.2d 958, which held the same claims valid and infringed. To resolve the conflict, this Court granted certiorari. 302 U.S. 676, 58 S.Ct. 143, 82 L.Ed. —-.

In incandescent lamps, the tungsten filament, through which the electric current passes, grows more luminous than the carbon filament of the early days of the art. There were faults of 'offsetting' and 'sagging,' however, affecting the efficiency of the first tungsten filaments. 'Offsetting' occurs when, during heating in the use of the lamp, the filament forms crystals which extend their boundaries across the entire diameter of the filament, substantially perpendicular to its axis. The crystals in the filament thus come to have an appearance, somewhat analogous to the joints in a bamboo rod. Lateral slipping of the crystals reduces the cross-sectional area at the point of contact of the crystals with the result that the temperature at that point is increased, thus hastening the burnout, and the filament is weakened. 'Sagging' is a change of position by the filament during incandescence. It elongates and thus is forced out of the plane it occupied between fixed supports. Sagging has many objections. The sagging filament may touch the glass and end the life of the lamp. In gas-filled lamps, when sagging causes the coils to spread apart, the gas flows in between the coils and unduly cools the filament. Combatting sagging by additional supports is also said to cool the filament, and reduce electrical efficiency.

Pacz undertook to remedy these faults. He carried out many experiments, and his 218th effort, made while he was in the employ of petitioner company, yielded the discovery disclosed by the patent in suit. The specification asserts that by means of his invention 'the sagging is substantially eliminated and 'offsetting' of the filament is substantially prevented, during a normal or commercially useful life of the lamp.' He brings 'into intimate association with tungsten a material (an alkaline silicate) which will have the desired influence upon the grain growth of the metal.' The specification continues as follows:

'When the meta r eaches the temperature at which extensive grain growth would ordinarily take place, the presence of this material intimately associated with the tungsten particles has a marked effect on the shape and size of the tungsten grains. The ingot of tungsten thus produced, whether it be due to the fact that the grains have not reached the equilibrium grain size or to other causes, is particularly susceptible to grain growth during subsequent heat treatments.

'The probable reason why filaments made according to my invention do not sag, is that the structure is comparatively coarse grained. The coarse grained filament produced by means of my invention does not 'offset' so as to cut short the life of the lamp appreciably.'

The District Court found that Pacz's patent exhibited novelty and invention; that Pacz produced large crystals early in the life of the lamp; that although coarsegrained, and thus non-sagging, filaments meant 'offsetting' to the art, where it was 'common knowledge' that grains large enough to extend across the filament induced slippage, Pacz procured a particular kind of coarse-grained filament which did not 'offset' because of the nature of the boundaries of the grains, their contour being 'a very important element.'

The Circuit Court of Appeals held that the Pacz product was anticipated by patent No. 1,082,933, issued December 30, 1913, to William D. Coolidge for a process of producing ductile tungsten for incandescent electric lamp filaments and for the product itself.

The question before this Court is the validity of the claims in suit. Claim 25, which is typical,¹ reads as follows: '25. A filament for electric incandescent lamps or other devices, composed substantially of tungsten and made up mainly of a number of comparatively large grains of such size and contour as to prevent substantial sagging and offsetting during a normal or commercially useful life for such a lamp or other device.'

We need not inquire whether Pacz exhibited invention, or whether his product was anticipated. The claim is invalid on its face. It fails to make a disclosure sufficiently definite to satisfy the requirements of R.S. § 4888, 35 U.S.C. § 33, 35 U.S.C.A. § 33. That section requires that an applicant for a patent file a written description of his discovery or invention 'in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which it appertains * * * to make, construct, compound, and use the same; * * * and he shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery.' We may assume that Pacz has sufficiently informed those skilled in the art how to make and use his filament. The statute has another command. Recognizing that most inventions represent improvements on some existing article, process, or machine, and that a description of the invention must in large part set out what is old in order to facilitate the understanding of what is new, Congress requires of the applicant 'a distinct and specific statement of what he claims to be new, and to be his invention.'² Patents, whether basic or for improvements, must comply accurately and precisely with the statutory requirement as to claims of invention or discovery. The limits of a paen t must be known for the protection of the patentee, the encouragement of the inventive genius of others, and the assurance that the subject of the patent will be dedicated ultimately to the public.³ The statute seeks to guard against unreasonable advantages to the patentee and disadvantages to others arising from uncertainty as to their rights.⁴ The inventor must 'inform the public during the life of the patent of the limits of the monopoly asserted, so that it may be known which features may be safely used or manufactured without a license and which may not.'⁵ The claims 'measure the invention.'⁶ Patentees may reasonably anticipate that claimed inventions, improvements, and discoveries, turning on points so refined as the granular structure of products, require precise descriptions of the new characteristic for which protection is sought. In a limited field the variant must be clearly defined. This was one in a series of patents. United States v. General Electric Co., 272 U.S. 476, 480, 47 S.Ct. 192, 71 L.Ed. 362.

Pacz did not adequately set out 'what he claims to be new.' The tungsten filament 'made up mainly of a number of comparatively large grains,' differentiates the claimed invention from tungsten drawn into a single crystal (Schaller, No. 1,256,930), and from Coolidge's fine-grained thoriated filament, but serves aptly to describe the product of earlier manufacture, with its large regular grains subject to offsetting. According to the District Court, the earliest, so-called 'squirted,' tungsten filaments, also 'consisted of comparatively large crystals, many of which were large enough to extend clear across the filament, but they shifted.' 17 F.Supp. 901, at page 902. The failure of the patentee to make claim to a distinct improvement is made clear by comparison of the language of the claims under consideration with descriptions of offset difficulties recognized by other inventors.⁷

The claim further states that the grains must be 'of such size and contour as to prevent substantial sagging and offsetting' during a commercially useful life for the lamp. The clause is inadequate as a description of the structural characteristics of the grains. Apart from the statement with respect to their function, nothing said about their size distinguishes the earliest filaments, and nothing whatever is said which is descriptive of their contour (termed by the District Court a 'very important element'), not even that they are irregular.

The claim uses indeterminate adjectives which describe the function of the grains to the exclusion of any structural definition, and thus falls within the condemnation of the doctrine that a patentee may not broaden his product claims by describing he product in terms of function.⁸ Claim 25 vividly illustrates the vice of a description in terms of function. 'As a description of the invention, it is insufficient, and, if allowed, would extend the monopoly beyond the invention.'⁹ The Circuit Court of Appeals for the Ninth Circuit relied on the fact that the description in the claims is not 'wholly' functional.¹⁰ Anraku v. General Electric Co., 80 F.2d 958, 963. But the vice of a functional claim exists not only when a claim is 'wholly' functional, if that is ever true, but also when the inventor is painstaking when he recites what has...