Edison Elec. Light Co. v. Beacon Vacuum Pump & Elec. Co.

• Decision Date: 18 February 1893
• Docket Number: 3,096.
• Citation: 54 F. 678
• Parties: EDISON ELECTRIC LIGHT CO. v. BEACON VACUUM PUMP & ELECTRICAL CO. et al.
• Court: U.S. District Court — District of Massachusetts

54 F. 678

EDISON ELECTRIC LIGHT CO. v. BEACON VACUUM PUMP & ELECTRICAL CO. et al.

No. 3,096.

United States Circuit Court, D. Massachusetts.

February 18, 1893

Fish Richardson & Storrow, C. A. Seward, and Richard N. Dyer, for complainant.

Witter & Kenyon and Louis D. Brandeis, for defendants.

COLT Circuit Judge.

In May 1885, the plaintiff brought suit in the United States circuit court for the southern district of New York against the United States Electric Lighting Company for infringement of the patent now in controversy, which was granted to Thomas A Edison, January 27, 1880, for an improvement in electric lamps; and on July 23, 1891, a decree was entered, adjudging the validity of the patent, and ordering an injunction and account. 47 F. 454. Upon appeal to the circuit court of appeals for the second circuit the decree was affirmed in October, 1892. 3 C.C.A. 83, 52 F. 300. Another suit was then brought in the same court against the Sawyer-Man Electric Company, and a preliminary injunction was granted pro forma until a decision could be had by the circuit court of appeals, which, on December 19, 1892, affirmed the order, and directed an injunction. Suits were then immediately brought against the Westinghouse Electric Company in Pennsylvania, the Perkins Electric Lamp Company, and the Mather Electric Company in Connecticut, and preliminary injunctions obtained. The present bill was filed January 10, 1893, and the plaintiff now moves for a preliminary injunction against the defendants, based upon the foregoing prior adjudications. This motion is resisted on the ground of newly-discovered evidence bearing on the question of novelty of the Edison invention, which was not before the courts in the other cases. As to these other cases, it is said that there has been but one final adjudication upon the merits, which was in the suit against the United States Electric Lighting Company; that the defendants in the other prior suits were so connected with that company that they were in privity with it, and that therefore injunctions were granted as a matter of course.

The suit against the United States Company was thoroughly and obstinately contested, as is shown by the record which covers about 6,000 printed pages. The general rule is that where the validity of a patent has been sustained by prior adjudication, and especially after a long, arduous, and expensive litigation, the only question open on motion for a preliminary injunction in a subsequent suit against another defendant is the question of infringement, the consideration of other defenses being postponed until final hearing. Brush Electric Co. v. Accumulator Co., 50 F. 833; Robertson v. Hill, 6 Fish.Pat.Cas. 465; Cary v. Domestic Co., 27 F. 299; Coburn v. Clark, 15 F. 804; Mallory Manufacturing Co. v. Hickok, 20 F. 116; Green v. French, 4 Ban.& A. 169; Blanchard v. Reeves, 1 Fish.Pat.Cas. 103; Goodyear v. Rust, 6 Blatchf. 229; Cary v. Manufacturing Co., 24 F. 141; Sargent Manufacturing Co. v. Woodruff, 5 Biss. 444; Kirby Bung Manufacturing Co. v. White, 1 McCrary, 155, 1 F. 604; Putnam v. Bottle Stopper Co. 38 F. 234; Consolidated Bunging Apparatus Co. v. Peter Schoenhofen Brewing Co., 28 F. 428; Newall v. Wilson, 2 De Gex, M. & G. 282; Davenport v. Jepson, 4 De Gex, F. & J. 440; Bovill v. Goodier, 35 Beav. 427.

The only exception to this general rule seems to be where the new evidence in the former case, it probably would have led to a different conclusion. The burden is on the defendant to establish this, and every reasonable doubt must be resolved against him. Ladd v. Cameron, 25 F. 37; Cantrell v. Wallick, 117 U.S. 689, 6 S.Ct. 970; Winans v. Eaton, 1 Fish. Pat.Cas. 181; Machine Co. v. Adams, 3 Ban.& A. 96; Spring Co. v. Hall, 37 F. 691; Lockwood v. Faber, 27 F. 63; Glaenzer v. Wiederer, 33 F. 583; Cary v. Spring Bed. Co., 26 F. 38.

There is no denial of infringement in the present case under the construction given to the patent in prior adjudications. The contention of the defendants is that this motion should be denied on the ground that they have recently discovered that Henry Goebel, a German watchmaker, living in New York, invented the Edison incandescent lamp as early as 1854, and that, therefore, the Edison patent is void for want of novelty, or at least must be limited to the coiled form of filament. This is the same line of attack upon the patent which was unsuccessfully made in the case against the United States Company. It was there urged that the Starr lamp of 1845, the Roberts lamp of 1852, the Lodyguine, Konn, and other lamps which appeared between 1872 and 1876, the Bouliguine lamp of 1877, the Sawyer and Man lamp of 1878, and the Edison platinum lamp of 1879, limited the Edison patent to narrow inventions, or rendered it void for want of patentable novelty. But the court, with a most exhaustive review of the prior art before it, refused to take this view, and held that the second claim of the patent, read with the specification, covered a broad and fundamental invention, namely, an incandescent lamp, composed of a carbon filament, hermetically sealed in an all glass chamber exhausted to a practically perfect vacuum, and having leading-in wires of platinum. Judge Wallace, in his opinion in the circuit court, says:

'Read by those having this knowledge, the radically new discovery disclosed by the specification is that a carbon as attenuated before carbonization as a linen or cotton thread, or a wire seven one thousandths of an inch in diameter, and still more attenuated after carbonization, can be made which will have extremely high resistance, and be absolutely stable when maintained in a practically perfect vacuum. It informs them of everything necessary to utilize this discovery, and to incorporate it into a practical lamp. It describes, with the assistance of the recital in the second claim, as the vacuum in which the burner is to be maintained, a bulb made wholly of glass, exhausted of air, sealed at all points by the fusion of the glass, and in which platinum leading wires are sealed by the fusion of the glass. It describes the materials of which the burner is to be made, and instructs them that the materials are to be shaped into their ultimate form before carbonization. It describes the use of platinum for the leading wires, and a method of securing the leading wires and filaments, intended to dispense with clamping, which consists in moulding tar putty about the joints, and carbonizing the whole in a closed chamber.'

By this invention Edison disclosed to the world for the first time a practical, commercial incandescent lamp, adapted for domestic uses. The problem was by no means easy of solution.

To subdivide the electric light, and embody it in a cheap and durable domestic lamp, capable of successfully competing with gas, had for years baffled the science and skill of the most eminent electricians in this country and in Europe. The difficulty lay in the practical construction of a durable incandescent lamp, rather than in a knowledge of the elements which should compose such a structure. Carbon burners, platinum wires, exhausted glass receivers, were old and well known. As early as 1845, Starr suggested in the King patent a lamp composed of a thin pencil of carbon, inclosed in a Torricellian vacuum; and Roberts, in 1852, proposed to cement the neck of the glass globe into a metallic cup, and to provide it with a tube for exhaustion by means of a hand pump. Later Lodyguine and others provided their lamps with several short carbon pencils which were successively brought into circuit as the pencils were consumed, also various devices for perfecting the joints between the metal base and the glass globe, while Sawyer and Man, in 1878, made the bottom plate of glass instead of metal, and charged the lamp with an atmosphere of nitrogen gas, to avoid destruction of the burner from oxidation. In his 1879 lamp Edison used a platinum burner, which proved a failure, because the platinum melted near the point of incandescence. Mr. Schwendler, a noted English electrician, said in 1879:

'Unless we shall be fortunate enough to discover a conductor of electricity with a much higher melting point than platinum, and which at the same time does not combine at high temperature with oxygen, we can scarcely expect that the principle of incandescence will be made use of for practical illumination.'

The arc lamp was known as early as 1844, but its great light made it unfit for use in dwellings. The question was how to divide the electric light for domestic purposes. Many scientists considered the problem as hardly within the range of possibility. From the results of the experiments of Fontaine, the French scientist, published in 1877, it would seem that almost insurmountable obstacles, founded on the operation of natural laws, stood in the way of the successful division of the electric light. Mr. Preece, the electrician for the British general post office, pronounced early in 1879 that 'the division of the electric light is an absolute ignis fatuus.'

Those who dissented from this view were Mr. Edison in this country and Mr. Lane-Fox in England, who both reached the conclusion that the subdivision of the electric light could be accomplished, provided the radiating surface of the burner of the lamp was reduced in extent, so that only a moderate volume of light would be emitted, while at the same time the resistance o f the burner was increased so as to enable the employment of relatively small conductors for leading the electric current to the lamps; or, shortly stated, the burner should have a high ratio of resistance to radiating surface. Edison first embodied this discovery in his platinum lamp in 1879, but this lamp was unsatisfactory, and the...