Bryant Electric Co. v. Reno Sales Co.

• Decision Date: 13 April 1926
• Citation: 16 F.2d 789
• Parties: BRYANT ELECTRIC CO. v. RENO SALES CO., Inc.
• Court: U.S. District Court — Eastern District of New York

16 F.2d 789 (1926)

BRYANT ELECTRIC CO. v. RENO SALES CO., Inc.

District Court, E. D. New York.

April 13, 1926.

Howson & Howson, of New York City (Hubert Howson, of New York City, of counsel), for plaintiff.

Charles C. Gill, of New York City (Max W. Zabel, of Chicago, Ill., of counsel), for defendant.

INCH, District Judge.

On April 25, 1916, a United States patent, No. 1,181,046, was granted to plaintiff, as assignee of the inventor, Arthur J. Tizley. It was for an improved electric lamp switch. Plaintiff is a Connecticut corporation. It brings this suit, alleging that the defendant, a New York corporation, with a regular and established place of business in Brooklyn, Eastern district, has infringed the patent.

So far as I can see, plaintiff has enjoyed a more or less exclusive use of this patent for eight years. The bill of complaint also alleged, as a basis for relief against defendant, a certain Thomas United States patent, No. 1,246,493. On consent of both parties at the trial, this patent was eliminated and the complaint dismissed as to it.

The issue, therefore, is confined to the validity, etc., of the said Tizley patent. By stipulation (filed March 8, 1926), in addition to the usual provisions as to use of copies, dates of publications, etc., the following facts were conceded: The incorporation of plaintiff and defendant, plaintiff's title to the Tizley patent, sale by the defendant at its store in Brooklyn of the alleged infringing device, the notification of defendant by plaintiff that the sale of such device violated the rights of plaintiff, and the continued sale of same by defendant.

It was also stipulated that the alleged infringing device is manufactured by a corporation, the McGill Manufacturing Company, having a place of business in the state of Indiana, which corporation has undertaken the defense of this suit; that said corporation issued a catalogue, No. 20, illustrating therein the alleged infringing device sold by defendant.

The defendant relies on two defenses:

First, that the alleged invention of Tizley is invalid by reason of the state of the art at the time Tizley claimed he discovered something; in other words that Tizley, in spite of the granting to him of the letters patent, and the importance to be given such act of the government, did not in fact discover anything that could be patented, and hence was and is not entitled to prevent the defendant or anybody else from making, using, and selling that which was already well known in the art, or which an ordinary skilled mechanic could accomplish.

Second, that, even if Tizley did discover something, his claims, as finally appearing in the letters patent granted to him, giving thereto the ordinary construction and meaning, show that defendant's device does not infringe.

We will take up these defenses in the above order. Tizley states at page 1, line 10, of his patent (Tizley patent, No. 1,181,046, Plaintiff's Exhibit 1):

"My invention has for its object to provide an electric lamp switch which may be disposed within a porcelain candle fixture of the ordinary construction, and which may be operated from an end of the said porcelain candle fixture."

And in the description of the drawings the Tizley specification says (lines 27-29):

"Figure 1 is a sectional view of a porcelain candle fixture, the switch being disposed within the porcelain candle."

Again, the opening sentences of the detail description refer to the same thought in this language (lines 38-45):

"By referring to the drawings, it will be seen that the lamp wires 10 and 11 are disposed in a tube 12, and that to this tube 12 there is secured by a set screw 13 a disk 14 on which is disposed the porcelain candle 15, this porcelain candle 15 being of the usual construction. Within this porcelain candle the lamp switch 16 is disposed."

Then follows a description of the details of construction of the switch with its associated lamp terminals within the candle tube. The features of this construction are clearly illustrated in Figures 1 and 2 of the drawing of this Tizley patent. The details do not here need to be gone into. It will suffice to point out the general features, which comprise the two horizontal insulating buttons, marked 18 and 26, united to each other by the two conducting standards 19 and a third standard 25, and having mounted between these buttons and standards the switch. This switch structure is mounted upon the upper end of the tubular conduit 12, which is cut away at the side near its top, as shown at the left of Fig. 1, for the emergence of the insulated electrical conductors 10 and 11. The bared ends of these conductors are connected to the binding terminals 20 on the standards 19. On the top of this switch structure are mounted the lamp terminals, consisting of the usual Edison screw shell 30 and insulated center contact 28, these terminals being connected to the conducting wires 10 and 11, one directly and the other through the switch in the circuits, which it is unnecessary to trace in detail.

The switch includes a vibrating segment 37, pivoted on a horizontal axis 33, and moved to and held in its position of rest by a coiled spring 40 (Fig. 2), and pulled in the opposite direction by the flexible chain 43. Through an intermediate ratchet, successive pulls on this chain 43 will give to the switch member 21 a quarter turn at a time, to make or break the electric circuit. This pull chain 43 passes down through the space between the interior wall of the candle casing (which is in the form of a porcelain tube 15) and the upper end of the tubular conduit 12.

The patentee describes a means for imparting pulls to the chain by turning the collar 52 on its vertical axis, or, if preferred, the lower end of the pull chain may be passed out through an opening 55 at the lower end of the base, as shown in Fig. 6 and provided there with an enlarged ball which may be grasped by the fingers to operate the switch." (Plaintiff's brief.)

The file wrapper (Defendant's Exhibit A) shows certain rejections, etc., and the claims finally allowed, and which plaintiff now claims defendant's device infringes, are as follows:

Claim 1: "A candelabra switch, comprising a tubular wire conduit, an insulating switch body mounted at one end of said conduit, a hollow candelabra body incasing said switch and wire conduit, a rotary switch member mounted on an axis extending transversely of the candelabra body and means for operating the rotary switch, said means extending between the wire conduit and the candelabra body to one end of the latter."

Claim 2: "A candelabra switch, comprising a tubular conduit, an insulating switch body mounted at one end of said conduit, a hollow candelabra body incasing said switch and wire conduit, a rotary switch member mounted on an axis extending transversely of the candelabra body and means for operating the rotary switch, said means extending between the wire conduit and candelabra body to one end of the latter, in combination with a lamp socket mounted on said insulating switch body substantially in line with the wire conduit, but at the opposite end of the switch body therefrom."

Claim 11: "A candelabra socket, comprising a tubular wire conduit, an insulating switch body mounted at one end thereof, socket terminals mounted on said switch body in extention of the wire conduit, a candelabra casing inclosing said switch and wire conduit and a flexible switch-operating member arranged within said candelabra casing and concealed thereby, substantially as described."

It is on these claims, 1, 2, and 11, that plaintiff solely relies in this suit. The defendant's combination device (Plaintiff's Exhibit 2) would appear to be substantially the same as that manufactured by plaintiff and described in the Tizley patent in question. I say substantially, for there are differences in construction. These differences appear to me to be equivalents of those used by the plaintiff, although defendant claims that, if the Tizley patent is declared valid, these differences would be sufficient to avoid infringement by it.

This statement would seem to be justified if the changes made by Tizley in his combination over that shown by the prior art shown in the Stirn patent, No. 515,485 (1894), Paiste patent, No. 965,734, and others, to be hereafter briefly referred to, should be considered sufficient to protect Tizley. Such changes, among others, are an attached, instead of a detached, "neck," "base," "pipe," or "conduit," or in their form, or the change in the operation of the chain pull switch. To me, however, both and all such changes would seem to be equivalents. This, of course, is aside from the alleged invention or discovery of Tizley, in the insertion by him of his combined switch and socket inside the candle barrel, a point that will also be hereafter mentioned.

Bearing in mind, therefore, the general resemblance of defendant's combination to that disclosed by Tizley's patent in suit, the following differences in defendant's device are also claimed by defendant:

Defendant's structure is said to be standard size, while the Tizley structure is confined to the "candle" size, which is somewhat smaller in the art. In the defendant's structure, "the idea seems to be more one of building up from the terminal of the fixture pipe. At the top of the fixture pipe there is an attachment nipple, and that nipple has a bracket, on the upper part of which the switch is supported. The insulating parts are not really part of the supporting body. They are supported upon the bracket, but the operating part of the switch is on the bracket, and the insulating shell is rather inclosed around the operating part of the switch. In the Tizley patent there is a tubular wire conduit, which extends up from the bottom from the connection with the fixture pipe and carries at its top the insulating body, consisting of the two insulating discs that are spaced apart by means of...