Brush Elec. Co. v. Western Elec. Co.

• Decision Date: 05 October 1896
• Docket Number: 272.,271
• Citation: 76 F. 761
• Parties: BRUSH ELECTRIC CO. v. WESTERN ELECTRIC CO. (two cases).
• Court: U.S. Court of Appeals — Seventh Circuit

76 F. 761

BRUSH ELECTRIC CO. v. WESTERN ELECTRIC CO. (two cases).

Nos. 271, 272.

United States Court of Appeals, Seventh Circuit.

October 5, 1896

These cases were argued at out October session, 1895. They involve questions of the validity, construction, and infringement of letters patent No. 219,208, granted September 2, 1879, to Charles A. Brush, for a double-carbon electric lamp. In case No. 271 the Scribner lamp, made in conformity with patent No 418,758, granted January 7, 1890, to Charles A. Scribner, and in case No. 272 the Monitor lamp and the Twin lamp, which the appellee asserts the right to make and use under letters patent, also to Scribner, No. 502,535 and No. 502,536 respectively, are the devices which are alleged to infringe the Brush patent. The claims in question read as follows '(1) In an electric lamp, two or more pairs or sets of carbons, in combination with mechanism constructed to separate said pairs dissimultaneously or successively substantially as and for the purpose specified. (2) In an electric lamp, two or more pairs or sets of carbons, in combination with mechanism constructed to separate said pairs dissimultaneously or successively, and establish the electric light between the members of but one pair (to wit, the pair last separated), while the members of the remaining pair or pairs are maintained in a separated relation, substantially as shown. (3) In an electric lamp having more than one pair or set of carbons, the combination, with said carbon sets or pairs, of mechanism constructed to impart to them independent and dissimultaneous separating and feeding movements, whereby the electric light will be established between the members of but one of said pairs or sets at a time, while the members of the remaining pair or pairs are maintained in a separate relation, substantially as shown. (4)In a single electric lamp, two or more pairs or sets of carbons, all placed in circuit, so that, when their members are in contact, the current may pass freely through all said pairs alike, in combination with mechanism constructed to separate said pairs dissimultaneously or successively, substantially as and for the purpose shown. (5) In an electric lamp wherein more than one set or pair of carbons are employed, the lifter, D, or its equivalent, moved by any suitable means, and constructed to act upon said carbons or carbon-holders dissimultaneously or successively, substantially as and for the purpose shown. (6) In an electric lamp wherein more than one pair or set of carbons are employed, a clamp, C, or its equivalent, for each said pair or set, said clamps, C, adapted to grasp and move said carbons or carbon-holders dissimultaneously or successively, substantially as and for the purpose shown.'

The lifter, D, and the clamps, C, referred to in the fifth and sixth claims, are illustrated by Fig. 2 of the patent, of which the following is a copy:

(Image Omitted)

The second claim, which, as first presented, was rejected because 'altogether too broad, if not functional,' read in this wise: 'An electric lamp or light regulator having two or more pairs or sets of carbons, each pair or set adapted to have independent separating and feeding movements, whereby the voltaic arc will be established between the members of but a single one of said pairs or sets, substantially as shown.'

This patent has been in frequent litigation, and, while the validity of some of the claims is not now denied, their construction and scope are strenuously contested. In the following cases are reported opinions in some of which the prior art and other pertinent facts are so fully stated and discussed as to make a further statement or extended discussion here unnecessary: Brush Electric Co. v. Ft. Wayne Electric Co., 40 F. 826; Id., 44 F. 284; Brush Electric Co. v. Western Electric Light & Power Co., 43 F. 533; Brush Electric Co. v. New American Arc Light Co., 46 F. 79; Brush Electric Co. v. Electric Imp. Co., 52 F. 965.

It is contended, under pleadings and proofs which present the question, that the issues in case No. 271, and in No. 272 in part, were tried and determined in the suit against the Western Electric Light & Power Company, called the 'Toledo Case,' and that the Western Electric Company was privy to, and had sole and open charge of the defense in, that suit, and therefore is conclusively bound by the decree therein rendered. That case was heard by Judges Brown and Ricks, and, summing up the prior art, Justice Brown said: 'The French patent of Denayrouse, it is true, contained the principal feature of the Brush patent in the successive combustion of two pairs of carbons, but be means so different that they can by no stretch of construction be regarded as mechanical equivalents. The invention has no application to carbons placed end to end, as in the American patents, but to those lying side by side, as in the patent of Jablochkoff, who appears to have originated this arrangement. It is, in fact, a duplication of the Jablochkoff candle, with the addition of 'an electric key for making and breaking contact with the electric current for each such candle. This key is worked by one arm of a lever, the other arm of which has a stud pressed by a spring against the candle which is burning, near its lower end. When this candle is burned nearly down, so that the stud of the lever is no longer supported by the solid matter of the candle or carbon, the lever and key are moved by the spring, and contact is thus broken with the circuit for the nearly consumed candle, and is made with the circuit for a fresh candle, which is thereby kindled, and thus successively, as candle after candle becomes consumed, fresh candles are kindled automatically to take their place.' But, as this patent is not seriously claimed as an anticipation, no further reference to it will be made. The main questions in this case turn upon the proper construction of the Brush patent. While the claims are undoubtedly broad, they ought not to be interpreted as for a function or result, since there is nothing novel in substituting one pair of carbons for another, and thus securing a successive combustion of two or more pairs. It was done long before the Brush patent, and may still be done by manual interference, by replacing one set of carbons with another, or by any mechanism which does not involve the dissimultaneous and dissimultaneously separating and feeding movement. What the claims purport to cover are briefly all forms of mechanism constructed to separate the two or more pairs or sets of carbons 'dissimultaneously' (a word coined for the occasion, but readily between the members of but one pair or set at a time, while members of the remaining pair are maintained in a separate relation. It is claimed by the defendant, however, that the words 'dissimultaneously or successively,' contained in the first six claims of the patent, refer only to the exact instant-- the very punctum temporis-- of the separation of the carbons; and that, as the Scribner patent, under which the defendants are operating, provides for the initial simultaneous separation of the carbons, there is no infringement, though the light is formed between but one pair, the other being held in reserve to await their consumption. If this contention be correct, then it necessarily follows that Brush, who is acknowledged to be the actual inventor of the double carbon, and whom defendants' expert, Mr. Lockwood, frankly admits (page 243) to be justly regarded as having done more than any one else to make electric arc lighting on a large scale a practical success, secured by his parent the mere shade of an idea,-- a wholly immaterial and useless feature,-- abandoning to the world all that was really valuable in his invention.' 43 F. 537.

The court below, holding the dissimultaneous initial separation of the carbons to be an essential feature of the Brush lamp, found that the appellee had not infringed. 69 F. 240.

H. A Seymour, for appellant.

Geo. P Barton and C. A....