General Electric Co. v. Yost Electric Mfg. Co.

• Decision Date: 11 June 1913
• Docket Number: 16.
• Citation: 208 F. 719
• Parties: GENERAL ELECTRIC CO. v. YOST ELECTRIC MFG. CO.
• Court: U.S. District Court — Northern District of Ohio

208 F. 719

GENERAL ELECTRIC CO. v. YOST ELECTRIC MFG. CO.

No. 16.

United States District Court, N.D. Ohio, Western Division.

June 11, 1913

Samuel O. Edmonds, of New York City, and Julian H. Tyler, of Toledo Ohio, for complainant.

Wilber A. Owen, of Toledo, Ohio, and Robert H. Parkinson, of Chicago, Ill., for defendant.

KILLITS District Judge.

The bill in this case was filed August 16, 1909. It alleges that the complainant, a corporation, is the assignee of letters patent for improvements in electric lamp sockets, granted to one Sargent in January, 1901, and that the defendant, a corporation, is infringing the claims of this grant.

The Sargent patent has been adjudicated in the Third Circuit in the case of General Electric Co. v. E. H. Freeman Electric Co., 190 F. 34, affirmed 191 F. 169, 111 C.C.A 646. The defense in that case was not as extensive as in the case before us; the additions here being of such character as to require the court, were it necessary to a decision here to re-examine the question of the validity of the Sargent patent. As we consider the record before us, however, we need not pass upon the defense that the Sargent patent is invalid.

It is alleged that the defendant infringes three claims, which read as follows:

'(1) In an article of substantially the character described, the combination with a cap provided with interior retaining means, of an insulating-lining made yieldable so that it can be forced over the retaining means, which lining is held thereby in the interior of the cap.'

'(11) In an article of substantially the character described, the combination with a cap, of projections extending in the interior thereof, and an insulating-lining adapted to be sprung over said projections, said lining being held by said projections within the cap.'

'(15) In an article of substantially the character described, the combination with a cap, having a hole in its crown for the passage of the wires leading to the lamp, of projections extending in the interior of the cap, and an insulating-lining having a hole registering with the hole in the cap, said lining being held by said projections within the cap.'

We find little difficulty in deciding that there is no infringement, in defendant's construction, of claims 11 and 15. The alleged invention protected by the Sargent patent consists of supporting in the cap of a lamp socket a thin wall of insulating fiber by means of 'projections extending in the interior' of the cap, to quote from claims 11 and 15. The defendant uses a similar thin sheet of insulating fiber in its cap and supports it by pressing it into the cap so that its circumference engages the hollow of an annular bead extending outwardly from the cap. No portion of this bead extends within the cap itself; both the upper and lower continuations of the bead with the walls of the cap having no less diameter than the cap itself at its greatest circumference. We are decidedly not able to say, upon the consideration so far given, that the complainant has removed the burden of proof and has, by a preponderance of the evidence, established that the defendant is, in its construction, infringing claim 1, although, broadly considering such claim, it may be plausibly argued that defendant is within the terms thereof.

However, the Sargent specification uses language tending to compel the court to construe the claims somewhat narrowly and almost requiring that they be applied to constructions which are mechanically similar to that employed by the patentee, for these specifications say:

'For the purpose of this invention the arms C are provided with shoulders S near their lower ends, and * * * the insulating lining A is cut away at T, so as to fit the arms above these shoulders.' Nothing of this sort, nor anything nearly like it, appears in defendant's construction. We leave open, however, the determination of the scope of claim 1, because in our judgment, the question of its application, so far as this defendant is concerned, must be disposed of on another proposition.

Defendant amended its answer by adding the following defense:

'(16) Defendant, further answering, says that it is the successor of the Yost Electric Manufacturing Company, a corporation of West Virginia; that said company was the successor to the Yost-Miller Company, a corporation of Ohio, and that the business of manufacturing and selling electric lamp sockets has been carried on continuously in Toledo, Ohio, by defendant and its predecessors since prior to the year 1902; that the device now complained of was, without objection from complainant, adopted in 1902 by defendant's predecessors as a substitute for a prior device which complainant had charged to be an infringement of said Sargent patent and has been manufactured and sold continuously and extensively by defendant and its predecessors since its said adoption and down to the filing of this suit, and in the belief that they had the right so to do, and without objection by complaint until shortly prior to the commencement of this suit; that defendant and its predecessors have with the full knowledge of complainant been manufacturing the device against which the charge of infringement is made continuously since the latter part of 1902 down to the filing of this suit and have during said entire period sold the same openly and notoriously and have built up an extensive business throughout the United States in the sockets containing the same; that complainant asserted no adverse right under the patent here in suit with respect to said manufacture of defendant and its predecessors until shortly prior to the filing of this suit; and that complainant is now estopped by its long acquiescence in said manufacture from asserting that the same is an infringement of the patent in suit, and has been guilty of such laches as concludes it against any right of relief in equity.'

We take it as fundamental that one enjoying a monopoly involved in the grant of a patent must be reasonably diligent in protecting that monopoly and must not pursue that course with reference to it which may mislead others into positions of disadvantage when he would choose to conceive broader rights in his grant with a resultant change of conduct on his part.

That a patentee may sleep upon his rights and may lose his right to insist on his monopoly is well settled by the cases hereinafter cited, and it remains for the court to consider whether the facts in this case bring it within that principle of estoppel.

For a period of more than six years, possibly more than seven years, complainant and defendant and defendant's predecessors had been engaged in litigation directly or indirectly touching defendant's manufacture of lamp sockets and the insulation thereof by means of insulating fiber, before the beginning of this suit.

In 1902 the Perkins Electric Switch Manufacturing Company, an associate of complainant in the Manufacturers' Association, sued Buchanan & Co., a customer of defendant's predecessor, for infringing on the Perkins patent for insulating lamp sockets, in the Eastern District of Pennsylvania, where that patent was adjudicated. 129 F 134. In the same year com...