General Electric Co. v. Minneapolis Electric Lamp Co.

• Decision Date: 09 October 1924
• Parties: GENERAL ELECTRIC CO. v. MINNEAPOLIS ELECTRIC LAMP CO.
• Court: U.S. District Court — District of Minnesota

10 F.2d 851 (1924)

GENERAL ELECTRIC CO. v. MINNEAPOLIS ELECTRIC LAMP CO.

District Court, D. Minnesota, Fourth Division.

October 9, 1924.

Paul, Paul & Moore, of Minneapolis, Minn., Frederick P. Fish, of Boston, Mass., Hubert Howson, of New York City, Albert G. Davis, of Schenectady, N. Y., and H. A. Couse, of Cleveland, Ohio, for plaintiff.

Stanley S. Gillam, Rome G. Brown, and Whiteley & Ruckman, all of Minneapolis, Minn., for defendant.

BOOTH, District Judge.

This is a suit for an injunction and for an accounting for damages and profits for infringement of two patents. The present hearing is upon a motion for a preliminary injunction, and has been heard upon bill and answer and a large number of affidavits and exhibits. The patents involved are United States patent No. 1,018,502, February 27, 1912 (application filed July 6, 1905), to General Electric Company for "incandescent bodies for electric lamps," known as the Just and Hanaman patent, and United States patent No. 1,180,159, April 18, 1916 (application filed April 19, 1913), to General Electric Company for "incandescent electric lamp," known as the Langmuir patent.

The claims of the Just and Hanaman patent are:

"1. A filament for incandescent lights, consisting of tungsten in a coherent metallic state and homogeneous throughout.

"2. A filament for incandescent lights, consisting throughout of substantially pure metallic tungsten of high fusing point and electrically conductive, the light-emitting properties of the filament being due to the coherent, homogeneous metallic nature of the tungsten.

"3. A filament for electric incandescent lights, comprising dense, coherent tungsten metal, having its fusing point approximately 3200° C. and capable of incandescent efficiency at the rate of less than one watt per candle power and substantially free from perceptible disintegration at that efficiency."

The relied upon claims of the Langmuir patent are:

"4. The combination of a lamp bulb, a filling therein of dry nitrogen at a pressure materially in excess of that corresponding to 50 millimeters of mercury and a filament of tungsten of large effective diameter, the filament being thereby adapted for operation at a temperature higher than that which it would have if operated in a vacuum at an efficiency of one watt per candle.

"5. An incandescent electric lamp having a filament of tungsten of large effective diameter and a bulb or globe therefor filled with dry nitrogen at a pressure as high or higher than that corresponding to 300 millimeters of mercury, the filament being thereby adapted for operation at a temperature higher than that which it would have if operated in a vacuum at an efficiency of one watt per candle."

"12. In an incandescent lamp, the combination of the lamp bulb, a tungsten filament therein, and a gaseous filling, the effective diameter of the filament being sufficiently large and the heat conductivity of the filling being sufficiently poor to permit the lamp to be operated with a filament temperature in excess of that of a vacuum tungsten lamp operating at an efficiency of one watt per candle and with a length of life not less than that of such a lamp.

"13. An incandescent electric lamp having a closely coiled tungsten filament, the coil giving the effect of a filament of large diameter, an inclosing bulb and a filling of gas having a materially poorer heat conductivity than hydrogen and at a pressure as high or higher than 300 millimeters of mercury, the filament being adapted for operation in said gaseous filling at a temperature higher than that which it would have if operated in a vacuum at an efficiency of one watt per candle."

Both patents have been repeatedly held valid — the Just and Hanaman patent in the Laco-Philips Case (C. C. A.) 233 F. 96; the Langmuir patent in the Nitro-Tungsten Case (D. C.) 261 F. 606, Continental Lamp Case (C. C. A.) 280 F. 846, the Incandescent Products Case (D. C.) 280 F. 856, the Brite-Lite Company Case (D. C.) 290 F. 967, the Nitrogen Electric Company Case (D. C.) 292 F. 384; and both patents, in the Alpha Case (D. C.) 277 F. 290, same case on appeal (C. C. A.) 280 F. 852, the Mallory-Save Cases (D. C.) 286 F. 175, Id. (D. C.) 294 F. 562, same cases on appeal (C. C. A.) 298 F. 579.

The rule to be applied in reference to the issuance of a preliminary injunction in cases of this character, has been laid down in this circuit in the case of Fireball Co. v. Commercial Co., 198 F. 650, 653, 117 C. C. A. 354, 357, as follows:

"It is an incontrovertible rule of equity jurisprudence that where there has been a prior adjudication sustaining a patent and an infringement thereof in the same or another circuit, where the validity of the patent has been contested on full proofs, the Circuit Court should, upon a motion for a preliminary injunction, sustain the patent and leave the question of its validity to be determined upon the final hearing."

The same rule was adhered to in Wayne Co. v. Coffield Co., 209 F. 614, 126 C. C. A. 608. The same rule prevails in other circuits.

It is contended, however, that there is an exception to the above rule, where in the later suit new matters are set up in defense. Conceding that such exception exists, yet it must be qualified by the condition that the new matter must be of such character as to lead the court in the later case to believe that, had the new matter been presented in the former suits, the patent would have been held invalid.

On the present hearing, most of the matters bearing on the question of validity of the patents, have been the same, in substance, as those which have been considered in prior suits. In the interest of economy of time, such matters will not be here discussed.

Turning to the alleged new defenses as outlined in the affidavit of counsel for defendant: One new matter to which attention is called is a decision by the French court, Civil Tribunal of the Seine, under date of June 1, 1923, holding invalid the French patent procured by Langmuir in France, December 20, 1913, No. 466,581, and covering, it is claimed, the same invention that is covered by the United States patent No. 1,180,159.

This decision of the French court was based upon prior patents: Sinding-Larsen, Kellner, Letang, and Henry.

In reference to this decision and its effect upon the case at bar, it is to be noted:

First. That the French Langmuir patent is not before this court, and it cannot be assumed that it is identical with the Langmuir patent here in suit.

Second. The Kellner patent, on which the French decision is to some extent based, is not here in evidence before this court. Under these circumstances, this court is not in a position to properly evaluate the French decision.

Third. All of the patents, Sinding-Larsen, Kellner, Letang, and Henry, have been before the courts in connection with litigation respecting the Langmuir United States patent. Sinding-Larsen was before the court in the Alpha Case (D. C.) 277 F. 290, and in the Nitro-Tungsten Case (C. C. A.) 266 F. 994; the Kellner patent was considered in the Patent Office interference on the Just and Hanaman, patent and was before the court in the Mallory and Save Cases (D. C.) 286 F. 175, 180; The Letang patent was before the court in the Incandescent Products Case (D. C.) 280 F. 856; the Henry patent was before the Circuit Court of Appeals in the Mallory and Save Cases, 298 F. 579 — yet in all of these cases the Langmuir patent was sustained.

Fourth. The conclusion which it is sought to have this court draw from the French court decision, is that the French court is the only court thus far which has actually understood the Langmuir patent, and that all of the other courts which have passed upon it have failed to understand it.

Fifth. It further appears from the record, in the case at bar, that the French court decision was before the Court of Appeals of the Second Circuit, in the Mallory and Save Cases, and it must be assumed that the decision received due consideration.

In view of the foregoing, I am unable to accord to the French court decision such decisive value, at this time, as defendant claims for it. At most, it can at present serve only to raise a doubt as to the validity of the Langmuir patent.

Some of the so-called new defenses are merely renewed and enlarged expositions of patents or other matters already considered by the courts in the prior suits. For example, the setting up of the German patent No. 154,262 to Just and Hanaman, which was considered in the Laco-Philips suit (C. C. A.) 233 F. 96, and in the Alpha suit (D. C.) 277 F. 290, and (C. C. A.) 280 F. 852; and the setting up of the British patent No. 20,277 to Siemens and Halske, which was considered in the Laco-Philips Case and in the Mallory and Save Cases (C. C. A.) 298 F. 579.

Another alleged new defense is that the construction placed upon the Just and Hanaman patent by the plaintiff makes it a patent for mere result. This contention was exploited in the Laco-Philips Case.

Another alleged new defense is based upon the Bottome patent, No. 408,286. This patent also was before the court in the Laco-Philips Case.

Another alleged new defense is that Just and Hanaman were not entitled to their French and British filing dates for priority purposes in this country, because they were citizens of Austria-Hungary, and that country was not a member of the "Convention" at that time. It appears from the record in this case, however, that this defense was presented to the Circuit Court of Appeals on petition for rehearing in the Alpha Case, and again on petition to the Supreme Court for a writ of certiorari in the same case.

Another alleged new defense is based upon evidence, said to be presented for the first time, "that the coiling of filaments in vacuum tungsten lamps was begun immediately upon the advent of drawn tungsten wire, and long before the filing of the Langmuir patent." This matter, however, was exploited in the...