Edison Elec. Light Co. v. Buckeye Elec. Co.

• Decision Date: 23 January 1894
• Docket Number: 5,142.
• Citation: 59 F. 691
• Parties: EDISON ELECTRIC LIGHT CO. et al. v. BUCKEYE ELECTRIC CO. et. al.
• Court: U.S. District Court — Northern District of Ohio

59 F. 691

EDISON ELECTRIC LIGHT CO. et al. v. BUCKEYE ELECTRIC CO. et. al.

No. 5,142.

United States Circuit Court, N.D. Ohio, Eastern Division.

January 23, 1894

Statement by RICKS, District Judge:

This case is now before the court upon a motion to dissolve the preliminary injunction allowed herein on the 28th day of July, 1893. Said injunction enjoined the defendant from using lamps infringing the second claim of letters patent No 223,898, for the alleged infringement of which the bill of complaint was brought. The motion recites what the record discloses: That the letters patent upon which the bill is filed bear date the 27th day of January, 1880, and purport to be for the full term of 17 years from that date. That after said letters patent were issued, and on or about the 15th day of November, 1883, Thomas A. Edison, to whom said letters patent were granted, filed with the commissioner of patents of the United States a duly-verified petition, wherein, among other things, he alleged that, while his said application for letters patent was pending, he applied for and obtained letters patent for the same invention in several foreign countries, to wit: British patent, dated November 10, 1879 No. 4,576; Canadian patent, dated November 17, 1879, No 10,654; Belgian patent, dated November 29, 1879, No. 49,884; Italian patent, dated December 6, 1879; and French patent dated January 20, 1880, No. 133,756. And that no other patents were granted upon his invention in foreign countries before the grant of said United States patent No. 223,898 and at the time of filing said application for said United States patent, and while the said application was so pending, he was advised that the rules and practice of the office, under the prevailing construction of section 4887 of the Revised Statutes of the United States, did not require an applicant to acknowledge, during the pendence of his application, a foreign patent applied for and granted subsequent to the filing of such application, and that he therefore did not acknowledge the above named foreign patents, and that the United States letters patent were granted to him, unlimited, for the full term of 17 years. He, further, in said petition, tendered said letters patent No. 223,898 to the commissioner of patents, and requested that they be corrected so that his said patent should be limited to expire with the date of said foreign patent, referred to in his petition, having the shortest time to run. The said petition of Thomas A. Edison for such correction of his said patent was duly consented to and concurred in, in writing, by the Edison Electric Light Company, to whom the said Edison had assigned the said letters patent.

The motion further alleges that the United States commissioner of patents, upon the filing and due consideration of said petition for the correction of said patent, granted the said request of the said Thomas A. Edison and the Edison Electric Light Company, and accepted the surrender of said patent for the purpose of such correction, and corrected said letters patent in accordance with the request made in said petition, and indorsed thereon such correction, wherein and whereby said letters patent were, at the election and request of the said complaints, limited so as to expire at the same time with the foreign patent having the shortest time to run, naming said patents as hereinbefore described, and certified that the proper entries and corrections had been made in the files and records, and that the said amendment was made that the United States patent might conform to the provisions of section 4887 of the Revised Statutes. Said motion further avers that 'said British patent, No. 4,576, dated November 10, 1879, was for the same invention as that for which the said United States letters patent aforesaid were granted, and as your petitioners are informed, advised, and believe, and therefore allege, was for the term of fourteen years from the said November 10, 1879,' and that said British patent, No. 4,576, has now expired.

Said motion further avers: That the defendant, the said the Buckeye Electric Company, was organized for the purpose of manufacturing and selling incandescent lamps in the month of February, 1890. That at the time of its organization it had an authorized capital of $100,000, and its investment at that time was about $25,000. That, before said business enterprise was started and said capital invested, the parties interested in the enterprise made diligent examination of the records of the patent office with reference to patents pertaining to incandescent electric lamps, and also informed themselves as to the prevailing understanding of the trade, and persons engaged in similar enterprises, as to the rights of parties to manufacture incandescent electric lamps notwithstanding said letters patent No. 223,898, and other patents professing to cover the manufacture of incandescent electric lamps at that time, and among other things ascertained that the circuit court of the United States, in a case heard by Mr. Justice Bradley, had decided to be invalid a certain patent upon incandescent lamps, known as the 'Sawyer-Mann Patent,' which was considered by the trade and all parties interested as being in all respects as valid as the said letters patent No. 223,898, which patent was commented upon and referred to in said case, and that at the time of said ruling the electrical engineers, and all parties interested throughout the country, accepted that decision as holding that the public generally were free to make, sell, and manufacture incandescent electric lamps in the form now claimed, and subsequently decided to be an infringement of the letters patent in the bill of complaint described. And, prior to the time that said Buckeye Electric Company engaged in the business, there were many other concerns in the United States manufacturing incandescent lamps, among the principal of whom were the Sawyer-Mann Company, of New York City; the Thomson-Houston Company, of Lynn, Mass.; the Bernstein Company, of Boston; the Sunbeam Incandescent Lamp Company, of Chicago; the Perkins Incandescent Lamp Company, of Manchester, Conn.; the Brush-Swan Company, of Cleveland, Ohio; and others. That none of those companies had ever been sued by the owners of the 'Edison Patent,' so called.

Said motion further avers that the defendants and those interested also ascertained from such investigation that the particular patent in suit in this case was then believed to have expired by reason of the termination of the Canadian patent covering the same invention, issued on November 17, 1879; it being, as was then understood by the petitioners, the prevailing opinion of the courts that the termination of the Canadian patent, by the decision of the deputy commissioner of patents, terminated at the same time as the Edison patent sued upon herein, which had been issued in the United States subsequent to the date of said Canadian patent, and it was the distinct understanding of the defendant at the time said company began business that there was no valid patent outstanding which could in any way interfere with their carrying on the proposed business of manufacturing and selling incandescent electric lamps. And the defendant, in common with other manufacturers throughout the United States, continued business with its said investment of about $25,000 until the summer of 1891, without molestation or threat of interference by any one claiming the patents were infringed by the defendant. That in the summer of 1891 the defendant, the Buckeye Electric Company, having some months before that time discovered and put into practical use a filament superior in every respect to that which was then and is now used by the complainants herein, and had so far increased its business that it became necessary to largely increase its investment. And thereupon further examination was made by the parties interested in the said Buckeye Electric Company's enterprise as to the patent of the said Thomas A. Edison, and it appeared from the examination which was then made, for the second time, that said letters patent had been, upon the petition of Thomas A. Edison, as hereinbefore described, corrected so that said patent was limited to expire with the aforesaid patents issued by foreign countries having the shortest time to run, and that said patent would expire on the 10th day of November, 1893. That consequently the United States letters patent would expire at the same time. And thereupon, and before any ruling had been made by the circuit court of the United States sustaining the validity of the said Edison patent, and in full reliance on said petition, and with the concurrence and consent of complainants, as hereinbefore set forth, and upon the certificate of the patent as issued and corrected, limiting its term as aforesaid, the said defendants, for the further purpose of introducing its improved and superior filaments, further increased its investment in said electric light business, so that it now has, and since said summer of 1891 has had, invested in said business, and in connection therewith, about the sum of $125,000. The motion avers that said investment was made in good faith, believing that in no event could the United States letters patent of the said Thomas A. Edison continue in force longer than November 10, 1893, which said defendant was induced to believe by the action of the said Edison and his associates as hereinbefore recited.

The motion further avers that after the decision of Judge Wallace, hereinbefore referred to, an appeal was at once taken by the parties to said suit, so that the defendant and others in the same line of business continued to manufacture lamps pending said appeal; that shortly...