Brush Electric Co. v. Electrical Accumulator Co.

• Decision Date: 23 July 1891
• Citation: 47 F. 48
• Parties: BRUSH ELECTRIC CO. v. ELECTRICAL ACCUMULATOR CO. et al.
• Court: U.S. District Court — Southern District of New York

47 F. 48

BRUSH ELECTRIC CO. v. ELECTRICAL ACCUMULATOR CO. et al.

United States Circuit Court, S.D. New York.

July 23, 1891

W. C Witter and W. H. Kenyon, for complainant.

Frederic H. Betts, for defendants.

COXE J.

This is an equity action founded upon three letters patent, granted to Charles F. Brush for improvements in secondary batteries as follows: No. 337,299, granted March 2, 1886, No. 260,654 granted July 4, 1882, and No. 266,090, granted October 17 1882. These patents and one other, No. 337,298, granted March 2, 1886, were before this court in Brush Electric Co. v. Julien Electric Co., 41 F. 679. The court there decided that No. 337,298 and No. 337,299 were for the same invention, and intimated, as the inventor and his expert apparently regarded the former as the broader patent, that the difficulty might be met by a surrender of the latter, or by a disclaimer of similar claims therein. This solution of the difficulty was thrown out as a suggestion merely, the final disposition of the patents being left till the settlement of the decree. It was not the intention of the court to decide that one of these patents was entitled to preference over the other. For the reason stated and for convenience of illustration No. 337,298 was given prominence in the discussion, but the conclusion would have been the same had the position of the patents been reversed. Upon the settlement of the decree the complainant selected No. 337,299 as the patent upon which it chose to rely, and withdrew No. 337,298 from the consideration of the court. This was done without objection by the defendant in that case. On the 15th of July, 1890, after the decree in the Brush-Julien Case was entered, the complainant withdrew No. 337,298 from this cause and an order was entered dismissing the bill as to that patent. The cause has since proceeded upon the three patents as stated. In the prior litigations involving the subject-matter of these patents the following propositions have been decided: First. That Mr. Brush was the first in this country to hold absorptive substance, in the form of dry powder, in place on the supports of a secondary battery by paper or equivalent material, and the first who rammed or pressed it into grooves or receptacles in the plates. Second. That No. 337,298 and No. 337,299 are for the same invention and that the complainant was not entitled to both patents, but was entitled to one. Third. The complainant having elected to hold No. 337,299 it was decided, by the decree, that claims Nos. 1, 2, 3, 6, 7, 11, 12, and 13 were valid, the word 'perforations' in claims Nos. 6 and 7 being construed as synonymous with 'cells or cavities.' Fourth. That the claim of No. 260,654 was not infringed by the application of the absorptive substance to the grids by a trowel or spatula. Fifth. That the defendants, by the use of supports filled with rows of uniform square holes, did not infringe the 'rib claims' of No. 266,090. Sixth. That claims Nos. 7 and 14 of No. 266,090, the latter claim being limited to the 'perforations' described, were valid and infringed. Seventh. That No. 337,298 (and by implication No. 337,299) was not invalidated by patents Nos. 261,512 and 261,995 granted to Mr. Brush, July 18, and August 1, 1882, respectively. Eighth. That No. 337,298 (and by implication No. 337,299) was not invalidated by the expiration of the Brush Italian patent. Brush Electric Co. v. Julien Electric Co., 41 F. 679; Electrical Accumulator Co. v. Julien Electric Co., 38 F. 126. All of these conclusions were reached after careful study and mature deliberation, and now, having been re-examined in the light of the present record, arguments and briefs, except as to claims Nos. 11 and 13 of No. 337,299, are reaffirmed. No useful purpose can be subserved by again discussing them, as such a task will only involve a repetition of what has been said already in the other cases.

The proof of infringement is substantially the same as in the Brush Julien Case. It is more complete as to the manner in which the active material is applied to the plates, but in this respect it only emphasizes the former decision as to the non-infringement of the claim of No. 260,654. That claim is as follows:

'The method of forming the plates of a secondary battery, consisting in forming receptacles for oxide of lead in its surface, then applying oxide of lead to the plate and within such receptacles, and afterwards subjecting the oxide of lead to pressure.'

The claim clearly contemplates not only the treatment adopted by the defendants, but afterwards subjecting the oxide to pressure. The defendants apply the oxide to the plates and within the receptacles with a wooden trowel in the hands of the workman, and there they stop. They do not subject the oxide to pressure afterwards.

The questions arising upon the expiration of the Italian patent and as to the validity of the 'red lead claims' are, however, presented by this record in a new and different aspect and may, with entire propriety, be examined de novo, together with the question, not heretofore considered, relating to the effect of Brush patents Nos. 260,653 and 276,155 upon the broad patent in suit.

It is thought that claims Nos. 11 and 13 of No. 337,299-- the red lead claims-- are void for lack of invention. The specification, after referring to lead oxide as the active material, which is primarily and mechanically applied to the plates, proceeds:

'Peroxide is the best oxide of lead to use in the preparation of the plates; but as this is rather expensive to prepare red lead or minium may be used.'

If the record contained nothing but this statement the claims could not be upheld. After the invention of a support primarily coated with mechanically applied oxide of lead, merely coating the plate with the commonest, cheapest and best known form of lead oxide did not require the exercise of the inventive faculties. Especially is this so when the patentee himself asserts that the best results can be obtained by using peroxide. It would seem that the use of red lead would at once occur to any one who had even a superficial knowledge of the art. There is no more novelty in using red lead for the coatings than there is in using cast lead for the plates. Brush Electric Co. v. Julien Electric Co., supra, 692. The following paragraph taken from defendants' brief states with clearness and precision the views of the court upon this subject:

'The specification says that red lead is inferior to the peroxide, and we submit that no valid claim can be founded upon the use of an inferior article when it is shown that the use of the superior article is old.'

Patent No. 337,299, at least so far as its broad claims are concerned, is not invalidated by anything contained in the Brush patents No. 260,653 and No. 276,155. The application for the former (No. 260,653) was filed June 15, 1882, a year and two days after the application of No. 337,299. No one can read the specification of No. 260,653 without being impressed with the fact that the inventor intended to confine the patent to a single point, namely the form of the electrodes. He expressly says so.

'This application is a division of my application designated as 'Case 1' (337,298-9) filed June 13, 1881, in which other features of my invention are claimed. For convenience in distinguishing this invention among others of mine in the class of secondary batteries I have denominated it 'Case 1, Division A."

Again he says:

'My invention consists essentially in a secondary battery element consisting of a structure of etagere-like form, containing in the spaces between its shelves lead in a finely divided state.'

The claim is:

'In a secondary battery, an element consisting of a structure of etagere-like form, containing in the spaces between its shelves lead in a finely divided state, substantially as set forth.' It is true that the broad invention is described, but it is equally true that it is not claimed. It was hardly possible for the patentee to describe the subsidiary invention without disclosing his main invention. Having disclosed it, had he permitted the patent to issue without warning or reservation, and after the broad invention became public property, had filed an application covering what he thus relinquished to others, it is probable that he would have been informed either in the patent-office or in the courts that his application came too late. But that is not this case. Before his application for the subordinate invention he had applied for the superior one. In the former he expressly informed the public that it was but a division of the latter. He could do no more. The delay in the patent-office cannot be charged to him. Even though the inventor were responsible for the issue of the divisional before the principal patent-- and he was not-- the fact of such prior issue in no way misled the public. They never for a moment acquired the right to use the broad invention. An infringer with the statements on the face of No. 260,653 before him would scarcely have the hardihood to assert that he supposed the broad invention was released. No court would listen to such a plea. The claims of that patent did not protect Mr. Brush in the use of the broad invention. A person who did not use an 'etagere-shaped' plate could, if no other patent prevented, use the broad invention with perfect impunity. No. 337,299 was intended to prevent such use. The court has not been able to discover an authority holding a broad patent invalid in such circumstances. None has been cited by counsel. what is true of No. 260,653 is also true of No. 276,155.

Mr Brush was the first, in this country, to make the broad invention as stated above. He is entitled to the fruits of his...