Edison Electric Light Co. v. Bloomingdale

• Decision Date: 10 November 1894
• Citation: 65 F. 212
• Parties: EDISON ELECTRIC LIGHT CO. et al. v. BLOOMINGDALE et al.
• Court: U.S. District Court — Southern District of New York

65 F. 212

EDISON ELECTRIC LIGHT CO. et al. v. BLOOMINGDALE et al.

United States Circuit Court, S.D. New York.

November 10, 1894

Eaton &amp Lewis, for complainants.

Cravath & Houston, for defendants.

LACOMBE Circuit Judge.

This is an application for a preliminary injunction to restrain infringement of patent 223,898, issued to Thomas A. Edison January 27, 1880, for the well-known incandescent carbon filament vacuum lamp, which has been repeatedly sustained in this circuit. The defendants are using on their premises, at the corner of Fifty-ninth street and Third avenue, in this city, incandescent lamps of three kinds, known, respectively as the 'Khotinsky,' the 'Novak,' and the 'Buckeye.' The first two of these are concededly infringements, and no opposition is made to the granting of a preliminary injunction restraining their further use. As to them complainants may take an order.

Defendants however, insist upon their right to use the Buckeye lamps relying mainly upon a decision of Judge Ricks, rendered in the circuit court for the Northern district of Ohio in January of this year. 59 F. 691. That court refused to continue a preliminary injunction on the suit of the Edison Electric Light Company and the Edison General Electric Company against the manufacturers of the Buckeye lamps; and it is insisted that comity requires this court, in the Southern district of New York, to follow Judge Rick's opinion, and refuse an injunction to restrain their use here. This would, no doubt, be so were the question one of infringement only, where the court in Ohio had been the first to examine into and determine questions as to the structure of some particular lamp not heretofore judicially examined into and determined in this circuit. But the situation here presented is a peculiar one. That the lamps made by the Buckeye Company are infringements of the Edison patent, as construed by the courts, is not disputed here, nor does it seem to have been disputed in Ohio. Judge Ricks himself held that the Buckeye structure infringed. He refused relief to the complainants in the Ohio suit on the following grounds: After the patent to Edison had been regularly issued, the patentee and his assignee petitioned the commissioner of patents to 'correct' the letters patent as to the statement of the term for which they were to run. And, accordingly, on December 8, 1883, the commissioner, in compliance with such petition, issued a so-called 'certificate,' stating that the said patent 'is hereby limited so as to expire at the same time with the patent of the following named having the shortest time to run. ' Then follows an enumeration, including a British patent, which expired November 10, 1893. That the attempted 'correction' by the commissioner of patents was without jurisdiction, and wholly void, as held in Edison Electric Light Co. v. United States Electric Lighting Co., 3 C.C.A. 83, 52 F. 300, is not disputed. But the circuit court in Ohio reached the conclusion that the action of the patentee and assignee in petitioning for the correction, and accepting the same when made, operated as a public and solemn limitation of the duration of their own patent, and as a record of their intention to abandon it to the public from and after ...