Cutler-Hammer Mfg. Co. v. General Electric Co.

• Decision Date: 26 May 1925
• Docket Number: No. 3386.,3386.
• Citation: 6 F.2d 376
• Parties: CUTLER-HAMMER MFG. CO. v. GENERAL ELECTRIC CO. et al.
• Court: U.S. Court of Appeals — Seventh Circuit

6 F.2d 376 (1924)

CUTLER-HAMMER MFG. CO. v. GENERAL ELECTRIC CO. et al.

No. 3386.

Circuit Court of Appeals, Seventh Circuit.

September 19, 1924.

Rehearing Denied May 26, 1925.

W. Clyde Jones, of Chicago, Ill., for appellant.

Edward Rector, of Chicago, Ill., for appellees.

Before EVANS and PAGE, Circuit Judges, and FITZHENRY, District Judge.

PER CURIAM.

Upon the trial of this suit in the District Court, the District Judge filed a written opinion, which is printed below. Our study of the same questions upon appeal has led us to the same conclusion. We have concluded to adopt the opinion. The decree is affirmed.

The complaint avers that the plaintiff General Electric Company is the owner of the Abbott patent, No. 1,367,341, issued February 1, 1921; that the coplaintiff Edison Electric Appliance Company is its exclusive licensee; and that defendant infringes such patent. The plaintiffs also aver that the defendant holds the patent issued to Lightfoot, No. 1,359,400, November 16, 1920; that the latter is an interfering patent; and plaintiffs pray for relief as upon infringement of the patent, and also for an adjudication under section 4918 of the Revised Statutes (Comp. St. § 9463) for the avoidance of said Lightfoot interfering patent.

The defendant by answer put in issue the allegations of the complaint, viz. the validity and alleged infringement of plaintiff's patent, and denied the interfering character of the Lightfoot patent and the jurisdiction of the court to determine such issue. By counterclaim it further set up the Lightfoot patent and charged the plaintiff with infringement thereof; set up the Schneider patent, No. 1,263,351, April 16, 1918, and charged plaintiff with infringement thereof. The plaintiff, in reply, took issue upon each of the counterclaims. After the commencement of the suit the defendant filed in the Patent Office a disclaimer of much in the Lightfoot patent, upon the trial withdrew its counterclaim thereof, and the case was tried upon the complaint, the answer, the counterclaim, and reply thereto, upon the Schneider patent.

GEIGER, District Judge.

Certain preliminary observations respecting the parties and their relationship to the art involved may be made. Plaintiff General Electric Company and defendant are prominent in the electrical appliance art, large manufacturers (I assume they rank as or with the largest); each devotes itself extensively and aggressively to keeping abreast with the scientific side of electrical development, and to that end seeks to maintain, and doubtless maintains, a staff committed, not to mere artisanship, but to high explorative and inventive endeavor. Abbott and Lightfoot, in their labors, in their representations, which led up to and are embodied as claims in the patents issued to them, were and are the parties hereto, General Electric Company and the Cutler-Hammer Manufacturing Company. These observations, though not based upon evidence directed to their establishment, are yet founded upon the record and upon concessions made in the trial of the case.

When this much is premised, then, in the absence of a countervailing record, courts should certainly ascribe to each of these representatives of the parties, not only the high professional skill and abilities which his labors prima facie exhibit, but also good faith and good conscience back of his assertions that in fact he exerted skill and endeavor of the dignity of invention in an art wherein he professes to be a master. In other words, courts should recognize that each of the parties here in good faith represented upon the applications for patents that something had been invented — something useful, theretofore unknown, and which, upon the promptings of superlative effort, became known as contributions to the art. In this situation, the plaintiff, averring its patent as embodying the inventive accomplishment of Abbott, charges in its bill that defendant has a patent covering identical subject-matter, granted by the government to Lightfoot, but without right, because of Abbott's priority, and section 4918 of the United States Statutes grants the remedy sought by plaintiff as upon "interfering" patents. Upon this fundamental aspect of the plaintiff's case, it was observed by the court at the close of the testimony:

"Broadly speaking * * * dealing with the evidence of the prior art, I have gained the impression that, regardless of what must be held, the plaintiff and defendant here, speaking though Abbott and Lightfoot, as late as 1918 and in 1920, certainly thought there was an inventive field wherein endeavors might be exerted as both Abbott and Lightfoot exhibited them in the claims of their patents. Speaking offhand, these two patents, Lightfoot's and Abbott's, had the question been raised in the Patent Office, would unhesitatingly have been held to be interfering patents. That being true, it would hardly be probable that each side, conceding the interference, would none the less claim that the other's patent was void for want of novelty."

Counsel for the respective parties doubtless recognized the predominance of view entertained by courts respecting the more liberal interpretation to be given to section 4918; that, though conceived by some courts to afford a remedy wherein the narrow issue of priority alone is to be determined, it has been later and more generally held to open the door for consideration of any issue tendered by either party respecting the validity of either or both of the patents. The difficulties attending either interpretation are well pointed out in the cases dealing therewith. Dittgen v. Racine Paper Goods Co. (C. C.) 181 F. 394; Palmer Pneumatic Tire Co. v. Lozier, 90 F. 733, 33 C. C. A. 255; Contra: Pentlarge v. Pentlarge (C. C.) 19 F. 817; Lockwood v. Cleveland (C. C.) 20 F. 164. And counsel probably have proceeded upon the later view found in General Chemical Co. v. Blackmore (C. C.) 156 F. 968, and Nikola Tesla Co. v. Marconi (D. C.) 227 F. 903, rejecting the earlier doctrine of the Pentlarge Case in the same court.

Conceding, as suggested in the Lozier Case, that courts should not be compelled to pursue an "unprofitable inquest" to determine priority between two patents, neither of which may be valid, there is yet good ground for treating the adversaries, each of whom has received a grant from the government, as estopped by the reception of the grant from avowing want of patentable novelty. So, when from November, 1918, to November, 1923, the parties hereto and their respective "inventors," Lightfoot and Abbott, solemnly and persistently asserted that patentable subject-matter resulted from their efforts, and when in court, almost to the day of trial, like insistence is made, there are persuasive reasons why the jurisdiction should be limited, to the end that the parties be bound by their previous attitude in the issue of patentable novelty. Neither should be heard to gainsay his original purpose, and in lieu thereof seek merely to protect his subsequently developed pecuniary interest which has been founded, so he insists, upon his monopoly; nor should he be permitted to assume too great solicitude for the rights of the "public." I feel that there is much in support of a limitation of the jurisdiction to the single issue, thereby estopping the holders of interfering grants from asserting that both were "pretenders." Pentlarge v. Pentlarge, supra. The considerations for such estoppel are no less cogent or less wholesome than those which in other situations preclude denial of patentable novelty or validity of a patent.

But, accepting the case as properly tendering the issues which the parties have litigated upon the evidence, the observations just made must, in any event, recur to the court in considering what evidence bears pertinently and persuasively upon resolving the issue of Abbott's invention now tendered by the defendant's answer, and by its counterclaim on the Schneider patent. But this is meant: That if Abbott and Lightfoot be credited, as noted, with great ability, with a masterful knowledge and appreciation of their art, and with good-faith assertions respecting the recognition which their labors justly entitled them to receive, with the bestowal of their exertions on behalf of the respective parties hereto, then each, and each of the parties, at the threshold, has furnished to the other, and to the world, testimony bearing pertinently upon the issue of inventive novelty — testimony which is clearly the equivalent in its probative effectiveness, of admissions or declarations solemnly and deliberately made by an adversary.

Thus the herein defendant by answer put in issue every matter of fact tendered by the complaint upon the issues of interference, validity, and infringement (as between Abbott and Lightfoot). It further by counterclaim set up Lightfoot as a valid patent infringed by plaintiff, then upon the trial conceded priority to Abbott. Certainly it cannot complain if plaintiff resort to the attitude assumed and the course pursued by Lightfoot and the defendant, both in prosecuting his application and in this case, as strong evidentiary support for, and indorsement of, the claims made by plaintiff respecting the quality and dignity of Abbott's identical though prior endeavors; nor complain if the presumptive validity of the government's grant be claimed to be thereby fortified, or that the burden of overthrowing such grant be thereby augmented. And the fact that defendant upon the trial withdrew the Lightfoot counterclaim need not disparage the plaintiff's right to so resort to such attitude and course.

Therefore the case necessitates a consideration of the prima facie showing found in both the Abbott and Lightfoot patents; their representations and claims; the prior art references; the position of the defendant in its answer, in its counterclaims upon Lightfoot and Schneider; and particularly its present position (1) respecting both...