Harvey Hubbell, Inc. v. General Electric Co.

• Decision Date: 26 May 1920
• Docket Number: 220,221.
• Citation: 267 F. 564
• Parties: HARVEY HUBBELL, Inc., v. GENERAL ELECTRIC CO. SAME v. BRYANT ELECTRIC CO.
• Court: U.S. Court of Appeals — Second Circuit

267 F. 564

HARVEY HUBBELL, Inc., v. GENERAL ELECTRIC CO.

SAME v. BRYANT ELECTRIC CO.

Nos. 220, 221.

United States Court of Appeals, Second Circuit.

May 26, 1920

Frederick P. Fish, Hubert Howson, and Samuel Owen Edmonds, all of New York City, for appellants.

Clifton V. Edwards, of New York City, and W. Clyde Jones, of Chicago Ill., for appellee.

Separate suits for infringement of two patents by Harvey Hubbell Incorporated, against the General Electric Company and against the Bryant Electric Company, respectively. From decrees for plaintiff, defendants appeal. Reversed and remanded, with directions to dismiss the bills.

The General Electric Company appeals from a decree entered in the District Court for the Southern District of New York and the Bryant Electric Company from a similar decree entered in the District Court for the District of Connecticut. Both actions are on the same claims of the same patents viz. Hubbell patent No. 774,250, granted November 8, 1904 (claim 1), and No. 774,251, granted the same day to the same patentee (claims 2, 3, 4, and 6).

These patents (copending in the Office both relate to 'separable attachment plugs.' The patent earlier in number (hereafter spoken of as the senior patent) declares as the object of invention to provide a plug 'in which the cost of construction shall be reduced to the minimum, and which shall do away with the possibility of arcing or sparking in making connection, so that electrical power in buildings may be utilized by persons having no electrical knowledge or skill. ' The specification is almost wholly devoted to describing the parts of the pictured means of producing this desirable result.

Again, invention resides entirely in the mechanical arrangement and coordination of parts, and the patentee dwells in his specification on a depression in the base (recess 30), which, when the parts are assembled, serves 'to anchor the parts firmly in place and prevents their movement relative to each other,' and also upon a single screw, which fastens together the block and base when out of the mass of interchangeable parts a plug has been assembled. These various advantages are sufficiently defined in the following claims in suit: The original bill against General Electric Company charged infringement of the senior patent and of the screw and recess claims of the junior in respect of one style of plug (Exhibit 10B), which style had long been abandoned and of which very few specimens had been sold. By supplemental pleadings, however, these cases came to present questions at least of commercial importance to the leading manufacturers and distributors in this country of what are generically known as 'electrical appliances,' because such appliances increasingly consist of a great variety of heating, cooking, and lighting devices electrically and mechanically connected by the union of a cap attached to the device and a plug or body attached more or less permanently to the house or other structure in or through which the circuit current flows. It is matter of common knowledge that such devices of domestic convenience have enormously increased in number and variety during the life of the patents in suit.

We are persuaded that plaintiff has contributed to this business development by its clever business management, economics in manufacture, and skillful, persistent, and widely extended advertisements. We also find that there is no confessed or admitted superiority between the cylindrical or pin contact post and the 'knife blade' construction. The latter is certainly cheaper; the former is probably stronger and more enduring. Large manufacturers (such as all the parties to this suit) may make both styles, and by the multiplicity of advertised forms seek to cater to the whims of taste quite as much as to secure mechanical and/or electrical perfection.

The result of the supplemental pleading is that the General Electric Company is charged with infringement of the senior patent and one of the locking spring claims in respect of an article known here as Plaintiff's Exhibit 10C, with infringement of all the claims in suit in respect of Plaintiff's Exhibits 10D and 10F, and with infringement of the senior patent and the locking spring and recess claims by Plaintiff's Exhibit 10E.

The Bryant Company is accused of putting forth 16 different appliances (Plaintiff's Exhibits 4-19), all infringing the senior patent, and all infringing one or the other of the 'locking spring' claims. Bryant Company is also charged with contributory infringement by selling certain caps of their own manufacture capable of use with Hubbell plugs. The charge of contributory infringement rests on the following transaction: In 1916, a few weeks before this suit was begun, two concerns at the request of plaintiff sent direct to the manufactory of Bryant Company small orders for what had been advertised as 'Spartan plug caps,' which orders described the caps as to be 'interchangeable' with some Hubbell appliance or appliances. One order was filled with caps having parallel knife blade contacts; the other was for 'tandem' contacts, and these Bryant Company did not ordinarily make, but manufactured for this order, and it never made any more.

No Bryant cap carries contacts with recesses suitable for engagement with the Hubbell locking spring. Therefore such caps could be used so as to provide electrical connection when joined to a Hubbell plug, but the only mechanical connection was frictional. For obvious reasons the sale of caps was smaller than that of plugs or bases, and caps and bases severally are articles of commerce. There is no evidence apart from the filling of these two decoy orders; and it is found as a fact that Bryant Company has manufactured caps, not with the intent of having them used with Hubbell plugs, but with the hope that the public would buy the Bryant plug for use with the Bryant cap. When so used a locking contact occurs; that a poor mechanical connection did not prevent electrical use with the Hubbell plug or base was, however, a matter of indifference to Bryant.

These cases were heard by the same trial judge, although in different districts, and were held under consideration for a long time, and until the court became engaged in a jury trial of almost unprecedented length. Finding and announcing that other engagements made it impossible to write a review of the facts, the court in a brief memorandum stated its conclusions on every point involved in either case, and entered decrees accordingly, but (for reasons not appearing of record) inserted the words 'pro forma' after the words 'Ordered, adjudged, and decreed' in each document.

Both defendants appealed, assigning for error failure to find both invalidity and noninfringement, and on those appeals raise the question as to the effect of the phrase 'pro forma' in the decrees as entered.

The problem in the patentee's mind was to attain safety and strength, accompanied by sufficient accuracy of fitting parts, notwithstanding the fact that all attachment plugs of this general kind must have a porcelain body--something made cheaply and in great quantities, and impossible of procurement 'of exactly the same size.' The plug of this patent shows (inter alia) comparatively deep recesses in the porcelain body, in the lower part of which are affixed 'contact springs,' which are U-springs of current carrying metal, which engage with contact posts having reduced necks, which necks snap into the springs, producing electrical connection-- an action which takes place some distance below the entrance of the recess containing the spring. The part of the recess not occupied by the contact springs the patentee calls a 'guide hole.' Electrically there was nothing new about this plug, but the mechanical arrangement thought to be novel is thus defined in the only claim in suit as follows:

'1. A separable attachment plug comprising an insulating body having independent recesses, locking contact springs in said recesses and independent guide holes leading into said recesses, and a cap having contact posts adapted to pass through the guide holes and engage the locking contact springs, the walls of said recesses and guide holes closely surrounding the said contact springs and extending beyond the ends thereof, whereby a connection can be established only upon the passage of the contact posts through the guide holes and into the inner spaces constituting said recesses.'

The contact posts of the senior patent as pictured, and not varied by the specification, are cylindrical. The junior patent (774,251) displays what in the main is the same mechanical conception of arrangement, but exhibits the cap as 'provided with knife blade contacts which engage the contact plates after they have been passed through the contracted insulating passages. ' As in the senior patent the knife blade, in making electrical contact, must go through a passage in the porcelain body of the plug before it arrives at the chamber or recess containing the contact springs. As such springs cannot engage a knife blade as they can a post with a reduced neck, a locking spring is provided, engaging with a recess in the blade, which locking spring, however, does not ordinarily carry current.

'2. A separable attachment plug comprising a base provided with insulating chambers and insulating passages leading into said chambers, contact plates and locking springs in said chambers, an end block secured to the base and covering the chambers, and a cap provided with contacts adapted to pass through the insulating passages and engage the contact plates and locking springs in the insulating chambers.'

'4. A separable attachment plug comprising a base provided with recesses, 30, insulating chambers...