Century Electric Co. v. Westinghouse Electric & Mfg. Co.

• Decision Date: 03 November 1911
• Docket Number: 3,324.
• Citation: 191 F. 350
• Parties: CENTURY ELECTRIC CO. v. WESTINGHOUSE ELECTRIC & MFG. CO. [1]
• Court: U.S. Court of Appeals — Eighth Circuit

191 F. 350

CENTURY ELECTRIC CO. v. WESTINGHOUSE ELECTRIC & MFG. CO. ^[1]

No. 3,324.

United States Court of Appeals, Eighth Circuit.

November 3, 1911

(Syllabus by the Court.)

Where each of several applications, which subsequently ripen into patents to the same inventor, describes the same machine and process and the inventions claimed in all the applications but no one of the applications claims any invention claimed in any of the others, and they are all pending at the same time, the respective dates of the applications and of the patents and the respective dates when the applications were filed are immaterial, and the applications and patents cannot be used to anticipate or avoid each other.

While an earlier patent avoids a later patent to the same patentee for the invention claimed and secured by the former, it does not invalidate a later patent to him for a distinct different invention not claimed and secured by the earlier patent whether that invention is general or specific, is of a process or of a machine, or of both, and whether it is of an original machine or process, or of an improvement thereon.

One who makes several patentable inventions that produce a new and useful process or machine, or both, pertaining to the same subject-matter, has the option to take one patent therefor or as many separate patents therefor as he makes patentable inventions.

A patent is a contract, and it must be interpreted by the same rules of construction as other contracts.

The intention of the parties should be deduced from the entire contract, not from any part of it, or without any part of it.

The specification which is a part of the same application and specification as are the claims must be read and interpreted with them, not for the purpose of contracting or of expanding the latter, but to ascertain from the entire agreement the actual intention of the parties, and that intention when ascertained should prevail.

Separate patents for a new and useful process and for a new and useful apparatus to practice it may be sustained, although no other apparatus to practice it is known.

Patent No. 555,190 to Tesla, for a combination or apparatus to practice the process secured to Tesla by patent No. 511,915 is not anticipated or avoided by the latter.

Patents Nos. 555,190 and 511,915 are not for the same invention as patent No. 445,207 to Tesla, and neither of them is anticipated or avoided thereby.

It is a general rule that there is a legal presumption that a process or apparatus of a later patent does not infringe upon that of an earlier patent relating to the same subject.

It is a general rule that a process or apparatus of a later patent does not infringe the process or apparatus of an earlier patent where the Commissioner has decided there was no interference between them.

There is an exception to this rule to the effect that where a patentee has made a primary invention of a new or useful process or apparatus which accomplishes a result never before produced by such a process or machine, the presumption that a process or apparatus of a later patent on the same subject is for a subordinate improvement or modification of the primary invention and hence subject to an infringement of the patent which secures it, is at least as strong as the presumption of the general rules, because there are many more patents for subordinate improvements and modifications of primary inventions than there are for such inventions, and hence more probability that a given process or apparatus is of the former than that it is of the latter class.

It is no defense to a charge of infringement of a process, an apparatus or a combination clearly described and claimed in a patent that it, or some part of it, was misnamed therein by the patentee, or that the infringer has called it by a different name. Patents protect processes, apparatus, and combinations, whatever their names.

Claim 1 of patent No. 511,559, claim 1 of patent No. 511,915, and claims 1, 2, and 6 of patent No. 555,190 to Nikola Tesla regarding electrical transmission of power, are valid, and the defendant's device which it claims follows the combinations secured by patent No. 399,801 to Thomson & Wightman and patent No. 428,650 to Thomson, is an infringement thereof.

Thomas F. Sheridan (Roy M. Eilers, on the brief), for appellant.

Parker W. Page and Thomas B. Kerr (Paul Bakewell, on the brief), for appellee.

Before SANBORN and VAN DEVANTER, Circuit Judges, and REED, District judge.

SANBORN Circuit Judge.

This is an appeal from a decree for an injunction against the infringement by the Century Electric Company, a corporation, the defendant below, of claim 1 of letters patent No. 511,559 to Nikola Tesla, issued December 26, 1893, on an application filed December 8, 1888, claim 1 of letters patent No. 511,915 to Nikola Tesla issued January 2, 1894, on an application filed December 3, 1888, on a division of an application filed May 15, 1888, and claims 1, 2, and 6 of letters patent No. 555,190 to Nikola Tesla issued February 25, 1896, on an application filed May 15, 1888. The contentions on which counsel for the defendant below rely for a reversal of this decree are (1) that patents Nos. 511,915 and 555,190 are void because they secure the same inventions as patent No. 445,207, issued to Nikola Tesla January 27, 1891, on an application filed May 20, 1889, (2) that patent No. 555,190 is void because it is for the same invention as patent No. 511,915, and (3) that the defendant did not infringe any of the claims specified in the decree.

1. Where each of several applications which subsequently ripen into patents to the same inventor describes the same machine and process and the inventions claimed in all the applications, but no one of the applications claims any invention claimed in any of the others and they are all pending at the same time, the respective dates of the applications and of the patents and the respective dates when the applications were filed are immaterial, and the applications and patents cannot be used to anticipate or avoid each other. Ide v. Trorlicht, Duncker & Renard Carpet Co., 115 F. 137, 145, 53 C.C.A. 341, 349; Walker on Patents, Sec. 180; Suffolk Mfg. Co. v. Hayden, 3 Wall. 315, 318, 18 L.Ed. 76; Westinghouse Elec. & Mfg. Co. v. Dayton Fan & Motor Co. (C.C.) 106 F. 724, 726; Graham v. McCormick (C.C.) 11 F. 859; Graham v. Manufacturing Co. (C.C.) 11 F. 138, 141. The applications for patents Nos. 511,915 and 555,190 were filed more than a year before the application for patent No. 445,207 was filed. They were pending during all the time that application was pending, but on account of delays from interference did not ripen into patents until long after the patent upon that application had issued. This fact, however, in no way countervails the validity of these patents unless Tesla in his application for patent No. 445,207 claimed the same invention which he claimed in his applications for patents Nos. 511,915 and 555,190.

An inventor, it is true, may not sustain a subsequent patent for an invention actually claimed and secured in a former patent. Miller v. Eagle Co., 151 U.S. 186, 197, 14 Sup.Ct. 310, 38 L.Ed. 121; Mosler Safe Co. v. Mosler, 127 U.S. 355, 361, 362, 8 Sup.Ct. 1148, 32 L.Ed. 182; Otis Elevator Co. v. Portland Co., 127 F. 557, 561, 562, 62 C.C.A. 339, 343, 344; Western Electric Co. v. Williams-Abbott Elec. Co., 108 F. 952, 955, 48 C.C.A. 159, 162; Thomson-Houston Elec. Co. v. Hoosick Ry. Co., 82 F. 461, 467, 468, 27 C.C.A. 419, 425, 426. Nor may he sustain a subsequent patent for an essential element of an invention secured by a former patent without which that invention would not have been patentable. Palmer Pneumatic Tire Co. v. Lozier, 90 F. 732, 740, 742, 744, 745, 33 C.C.A. 255, 263, 265, 267;

Industrial Mfg. Co. v. Wilcox & Gibbs Sewing Machine Co., 112 F. 535, 537, 50 C.C.A. 387, 389.

But one who makes several patentable inventions that result in a new and useful machine or process, or both, may have as many separate valid patents as he makes patentable inventions. His is the option to secure all these inventions by a single patent, or by many patents, and the fact that he describes all of them in his application or specification for an earlier patent to secure one or more of them, does not invalidate a subsequent patent to him for those inventions there described but not claimed. Robinson on Patents, Sec. 465; Expanded Metal Co. v. Bradford, 214 U.S. 366, 383, 385, 29 Sup.Ct. 652, 53 L.Ed. 1034; Badische Anilin & Soda Fabrik v. A. Klipstein & Co. (C.C.) 125 F. 543, 544; Westinghouse Elec. Co. v. Dayton Fan & Motor Co. (C.C.) 106 F. 724, 726; Westinghouse Elec. & Mfg. Co. v. Electric Appliance Co. (C.C.) 142 F. 545, 551.

And a patent for an invention does not avoid a later patent for an improvement thereon nor does a patent for an improvement avoid a later patent for the invention on which the improvement is made. Thomson-Houston Elec. Co. v. Ohio Brass Co., 80 F. 712, 724, 725, 726, 26 C.C.A. 107, 119, 120, 121. The sum of the whole matter is that while an earlier patent avoids a later patent to the same patentee for the invention claimed and secured by the former it does not invalidate a later patent to him for a distinct, different and separable invention whether generic or specific, whether an original machine or process, or both, or an improvement thereon which is not actually claimed or secured by the earlier patent. Thomson-Houston Elec. Co. v. Elmira & H. Ry. Co., 71 F. 396, 405, 18 C.C.A. 145, 154; Electrical Accumulator Co. v. Brush Electric Co., 52 F. 130, 138, 139, 2 C.C.A. 682, 690, 691.

The first question in this case therefore is, Did Tesla in his application for patent No. 445,207, which was filed...