Edison Electric Light Co. v. Sawyer-Man Electric Co.

• Decision Date: 15 December 1892
• Citation: 53 F. 592
• Parties: EDISON ELECTRIC LIGHT CO. et al. v. SAWYER-MAN ELECTRIC CO.
• Court: U.S. Court of Appeals — Second Circuit

53 F. 592

EDISON ELECTRIC LIGHT CO. et al. v. SAWYER-MAN ELECTRIC CO.

United States Court of Appeals, Second Circuit.

December 15, 1892

Kerr &amp Curtis, (Edmund Wetmore, Elihu Root, and Leonard E. Curtis of counsel,) for appellant.

Dyer &amp Seely, (Clarence A. Seward, Grosvenor P. Lowrey, and Richard N. Dyer, of counsel,) for appellees.

Before WALLACE, LACOMBE, and SHIPMAN, Circuit Judges.

PER CURIAM.

This is an appeal from an order of the circuit court granting an injunction pendente lite restraining the defendant from making, using, or vending the incandescent electric lamps of the patent granted to Thomas A. Edison, January 27, 1880, No 223,898, of which the complainants are the owners. The order was granted pro forma, in the view that a final disposition of the questions involved might be promptly made by the decision of this court. The validity of the patent, and the infringement of its second claim by such lamps as the defendant makes, were adjudged by the circuit court for the southern district of New York, July 14, 1891, in a decree at final hearing. That suit was brought against the United States Electric Lighting Company, and was defended by the Westinghouse Electric Company, a corporation which since October 10, 1888, has been the owner of the business carried on in the name of the present defendant. The business of the defendant consists exclusively in the manufacture of the infringing lamps. The decree of the circuit court adjudging the validity of the second claim of the patent, and its infringement by lamps such as are made by the defendant, was upon an appeal affirmed by this court October 4, 1892. See 52 F. 300. That decree, among other things, awarded the complainants a perpetual injunction. The present suit was brought subsequently to that affirmance.

It is apparent that the order for the present injunction is, in effect, one to extend the terms of an injunction already granted in a suit determined by the court of last resort between the same parties, or their privies, so as to include a new infringement. For an understanding of the grounds upon which the defendant contends the injunction ought not to have been granted, the following narrative is necessary: For several years subsequent to 1880, the Edison Company and the United States Electric Lighting Company were the only manufacturers of incandescent lighting apparatus in this country doing any Considerable business. The United States Electric Lighting Company began manufacturing incandescent lighting apparatus, including the lamps which have been held to be an infringement of the Edison patent, in the summer of 1880, and continued in such business until a recent period. In May, 1885, a suit was brought against it upon the present patent. Another corporation, the Consolidated Electric Lighting Company, was organized in September, 1882, and began the manufacture of incandescent lighting apparatus. This company was the owner of and operated under what are known as the 'Sawyer-Man Patents' for electric lighting apparatus; and under these patents it assumed that it had the exclusive right to make and sell the lamp claimed in the patent in suit. In May, 1885, suit was brought against it by the Edison Electric Light Company upon the patent in suit and about the same time it brought suit against the Edison Company for infringement of its own patent. In 1883 a corporation known as the 'Thomson-Houston Company' began the manufacture and sale of electric apparatus for lighting and power. As the result of negotiations between the Consolidated Electric Lighting Company and the Thomson-Houston Company, the Sawyer-Man Company, the present defendant, was organized in September, 1886. Nine tenths of its stock was owned by the Thomson-Houston Company. It received from the Consolidated Company a license to manufacture lamps under the Sawyer-Man patents, and thereupon began the business of manufacturing the infringing lamp, and has continued in this business to the present time. In August, 1887, all the stock of the defendant, including that owned by the Thomson-houston Company, was sold to the Consolidated Company for $120,000 in bonds, and the same amount at par of its stock. In December, 1888, the Thomson-houston Company sold its stock in the Consolidated Company to the Westinghouse Electric Company. At the same time, by an agreement between the Consolidated Company and the Thomson-Houston Company, the fulfillment of which on the part of the Consolidated Company was guarantied by the Westinghouse Company, the Thomson-Houston Company was licensed under the patents of the Consolidated Company to make incandescent lamps for export and use with generating apparatus of its own manufacture in this country; and the Westinghouse Company was prohibited from selling incandescent lamps for use with the Thomson-Houston generating apparatus for a period which might, at the option of the Thomson-Houston Company, extend to 1902. This agreement recognized the fact that the Thomson-Houston Company could, during the continuance of the agreement, make and sell lamps not covered by the Consolidated Company's patent; and, in the event of such manufacture and sale, the latter company was released from its obligation not to sell lamps for use in connection with the Thomson-Houston generating apparatus. Pending the suit against the United States Electric Lighting Company, the Westinghouse Company succeeded to the business of the United States Company, the Consolidated Company, and the defendant; and since September, 1888, the defendant has been the manufacturer of lamps for the Westinghouse system. Each of the various companies engaged in the manufacture and sale of electric lighting apparatus has, as a rule, manufactured all the different pieces of apparatus which are necessary for making up a complete 'plant,' the different parts being constructed with reference to use with each other, and not so as to be adapted for use in the systems of apparatus made by other manufacturers. For the purpose of public lighting from central stations, local companies, known as 'illuminating companies,' have been organized in various cities and towns, which have purchased plants from one or the other of the manufacturing companies, and the central stations of such illuminating companies have, as a rule, been equipped wholly with the electrical apparatus made by some one manufacturing company. In many cities and towns there are competing illuminating companies using the system of different manufacturers, some being equipped with the Edison system, some with the Westinghouse system, and some with the Thomson-Houston system. The United States Company has installed about 1,050 plants, with a lamp capacity of about 350,000 lamps. About 300 of these plants were installed before the suit upon the patent was brought against it. The Consolidated...