General Electric Co. v. P.R. Mallory & Co., Inc.

• Decision Date: 07 April 1924
• Docket Number: 294.,293
• Citation: 298 F. 579
• Parties: GENERAL ELECTRIC CO. v. P. R. MALLORY & CO., Inc. SAME v. SAVE ELECTRIC CORPORATION.
• Court: U.S. Court of Appeals — Second Circuit

298 F. 579

GENERAL ELECTRIC CO. v. P. R. MALLORY & CO., Inc.

SAME v. SAVE ELECTRIC CORPORATION.

Nos. 293, 294.

United States Court of Appeals, Second Circuit.

April 7, 1924

Duell Warfield & Duell, of New York City (Frederick P. Warfield and L. A. watson, both of New York City, of counsel), for appellants.

Frederick P. Fish and Hubert Howson, of New York City, and Albert G Davis and Alexander D. Lunt, both of Schenectady, N.Y., for appellee.

Appeals from decrees in equity, entered in the suit against Mallory in the Southern, and against Save in the Eastern, District of New York. Both suits are upon Just and Hanaman (hereinafter called Just) patent, 1,018,502, and Langmuir, 1,180,159 throughout the record constant reference is made to Coolidge 1,082,933. The decrees below are alike in tenor, and declare infringement of Just as to all claims, and of Langmuir as to 4, 5, 12, and 13.

The proven infringement on the part of Mallory was making and selling filament wire, knowing and intending that it should be used in both vacuum and gas-filled lamps. This wire, of tungsten and drawn apparently by the Coolidge method, contained thoria, and showed by analysis about '.0047 per cent.' of iron. As to Save, infringement proven was the manufacture and sale of lamps substantially like the Alpha product declared to infringe in General Electric v. Alexander (D.C.) 277 F. 290.

The litigation over these patents, in addition to the case just cited, is found in the Laco-Phillips decision, 233 F. 96, 147 C.C.A. 166, broadly upholding Just, and quoting the claims of that patent; the Nitro-Tungsten decision (D.C.) 261 F. 606, affirmed 266 F. 994, broadly sustaining claims 4, 5, 12, and 13 of Langmuir, and quoting them; the Independent Lamp Case (D.C.) 267 F. 824, declaring valid every claim in suit of Coolidge, and the Continental Case (C.C.A.) 280 F. 846, denying the defense of implied license as to Langmuir. The patents, or some of them, have also been sustained in New Jersey (suit versus the Incandescent Company (D.C.) 280 F. 856, and suit versus Nitrogon Company (D.C.) 292 F. 384) and Rhode Island (suit versus Brite-Lite Company (D.C.) 290 F. 967). The corresponding Langmuir patent in Great Britain has there been upheld by the House of Lords. British Thomson-Houston Co. v. Corona, Limited, judgment filed December 19, 1921.

Opinions below in the cases now at bar will be found in 286 F. 175-180, on motion for injunction pendente lite, and on final hearing in 294 F. 562, and 567.

Before ROGERS, HOUGH, and MANTON, Circuit Judges.

HOUGH Circuit Judge (after stating the facts as above).

The bills herein allege in common form adjudications favorable to the patents in suit and rendered before these bills were filed. The answer to these allegations suggests the scope and purpose of a defense trailing through eight octavo volumes. That answer--

'admits that (the patents of Just and Langmuir) were respectively held valid (by the courts of this circuit), but alleges that such findings were influenced by tacit as well as direct representations and statements as to the nature and characteristics of the subject-matter of the patents, and as to analagous subject-matter, and as to the state of the art, and as to proceedings on behalf of plaintiff before the United States Patent Office, made on behalf of plaintiff, which were untrue and/or misleading.'

We are thus advised that defendants believe previous decisions, if not wrong in reasoning, wrong in result, because plaintiff has succeeded in putting before us untruthful and misleading evidential material. This is a serious charge; it has moved us to consider at length a record more bulky than that of any previous suit on the same patents or either of them.

We find that plaintiff has introduced substantially the same evidence that gave it victory in earlier cases. Defendants have treated it as 'an axiom that this case must as to the facts stand on its own feet, irrespective of the prior litigation. ' Standing 'on its own feet' means, as we find, putting in every defense heretofore overruled when advanced by other defendants, and adding such new or newly named matter as could be found. This we grant is a legal enough method of 'making a record' for ultimate appeal purposes; it would be legal if there were nothing but old matter.

We have, then, considered this record to ascertain (1) whether there is any new evidence tending to invalidate any material finding of fact hitherto made; and (2) whether anything now shown justifies the charge of suppressio veri or suggestio falsi on the part of plaintiff, made by the above quotation from answer.

We first consider the record in respect of the Just patent. Our previous holding as to Just may be thus summarized: It was a new and useful invention of high order to offer to the world, with directions how to make it, an incandescent light filament of substantially pure, dense, and coherent tungsten. We are now told that 'fact evidence wholly new' should induce the following findings; i.e., when Just disclosed his alleged invention it was (a) old to select tungsten as filament material, and (b) obvious and, indeed, known that tungsten could be made into filaments. There is a certain boldness of assertion about this that rouses to investigation. Dissection of argument following assertion shows that defendant--

(1) Discards, as based on evidence insufficient, if not worse, all the fact findings of this or other courts in other cases. That every man is entitled to have his own case decided on the facts proven in that case is true; but it is not true that triers of fact must lay aside opinions previously gained on the same facts, because new counsel appear to argue them. The whole system of case law depends upon the presumed correctness of previous decisions, though that presumption may admittedly be overset by new facts or by new argument. We may summarily say now that we find no argument leading us to depart from 233 F. 96, 147 C.C.A. 166, assuming only the evidence there before us, and we have that evidence repeated in substance, except the deposition (taken in Germany in 1914) of Hanaman.

(2) Searching now for new facts, we find it said that Welsbach (British 1,535 of 1898 and American 976,526), plus the disclosures of Regnault (Annales de Chemie et Physique, vol. 62), of Guichard (Comptes Rendu, vol. 131), and of Blau (contained in an application for United States patent filed in October, 1905), either left Just no room for invention, or actually informed the world of the novelty hitherto found by the courts to have been first proclaimed by Just.

(3) The concept of using tungsten for a filament was in Whitney and Beckwith, when they were employed by plaintiff, and before Just's effective date.

(4) Just's patent is open to the charge of double patenting, as well as

(5) To that of being supported by a fraudulent oath.

(6) Defendants' filaments do not infringe because they are not substantially pure tungsten.

Defendants' position under the second of the above headings is most elaborately worked out by Dr. Lamb, their expert witness, whose opinions and assertions constitute the major portion of the new matter laid before us. Questions of the development and application of many sciences come before courts, especially in patent causes, and it seems necessary from time to time to point out that we sit, not as scientists, but as weighers of evidence; even when experts differ, we must apply to their conflicting statements, not any knowledge of our own on the subject of contradiction, but the knowledge of human frailties and virtues obtained by previous consideration of evidence on less recondite matters. Human nature does not vary much, whether the subject in hand be science or scandal, veracity or volts.

Counsel drew out Dr. Lamb's conclusion by the following questions (quoted in substance):

'Considering the disclosure of Welsbach (British 1,535 of 1898), in your opinion would the chemical knowledge of the art prior to 1904 have been sufficient to teach an ordinarily skilled operator familiar with that art the chemical and practical possibility of fabricating a filament of the metal tungsten, following the general method and steps of the method proposed by Welsbach, in the production of filaments of the metal osmium, as you have defined such Welsbach method and steps? A. Yes.'

On cross-examination Dr. Lamb was asked whether, down to the year 1905, he could name an 'article of use to mankind fashioned out of tungsten metal, pure or impure. ' He said in answer:

'If I am asked to name an object of use to mankind, I must cite filaments of tungsten manufactured by the De Lodyguine patents. If the question, however, implies that the object mentioned shall actually have so functioned, and shall have been widely used, and hence of great value to mankind, my answer will be that I know of no such object of tungsten.'

In other words, any reasonably skilled man of the time could practically have made tungsten filaments, after reading Welsbach, as far back as 1898; yet men kept trying osmium at about 400 times the price of tungsten, and particularly Welsbach, one of the great inventors of his time, did so; so that until 1905, while any ordinarily skilled man could have used tungsten for filaments, no one put it to any useful purpose in its substantially pure state. This, by all the rules derived from the study of human nature, is too great a strain upon credulity. It discredits the giver of such evidence.

The defenses urged under this branch of argument are really not new. Our opinion in 233 F. disposed of the Welsbach defense by pointing out what that eminently competent man had done in a factory apparently controlled or managed by him. ...