Manhattan General Const Co. v. Helios-Upton Co.

• Decision Date: 06 February 1905
• Parties: MANHATTAN GENERAL CONST. CO. v. HELIOS-UPTON CO.
• Court: U.S. District Court — Eastern District of Pennsylvania

135 F. 785

MANHATTAN GENERAL CONST. CO. v. HELIOS-UPTON CO.

United States Circuit Court, E.D. Pennsylvania.

February 6, 1905

Thomas B. Kerr and Richard N. Dyer, for complainant.

Joseph C. Fraley, for defendant.

ARCHBALD District Judge. ^[1]

The difficulty in the use of the alternating current for electric lighting, in a circuit with arc lamps in series, lies in the fact that the potential of the current having necessarily to be kept constant, at the maximum required for the full number of lamps, as these are severally turned off one by one there is an accumulation of pressure, due to the varying decrease of resistance, which is destructive to the apparatus employed. The means proposed to meet and obviate this in the patents in suit is the insertion in the circuit in series with the lamps of a reactance device, consisting of an induction coil and core, which are drawn together by the varying magnetic pull, as the energy of the current is increased by the cutting out of lamps, this being counterbalanced by an opposing mechanical force, consisting, as portrayed in the patents, of a lever and weight, the whole being co-ordinated and arranged by means of a critical angle given to the lever (empirically determined according to the number of lamps and the amperage of current employed) that the core is always in position to successfully choke off or release the current to the extent required. The defendants make use of a similar core and coil, but the latter is hung vertically on a rigid arm like a pendulum, and operates as a counterbalance by its own weight, an equilibrium between the magnetic pull and the force of gravitation being found in the increasing effect of the latter as the coil is drawn upwards away from the perpendicular in the arc of a circle. It is denied that this infringes either of the complainants' patents, except as they are given an unwarranted breadth of construction; and the novelty of the invention which they cover is also contested, outside at least of the special and peculiar features which are there described. These, then, are the issues presented for determination.

(Image Omitted)

(Image Omitted)

The patents relied upon were both granted to the complainants, as assignees of Malcolm H. Baker, the inventor, October 8, 1901 one being for the method of regulation, and the other for the mechanical apparatus or means by which it is accomplished the specifications of the two being substantially the same the result of a divided application. The method patent has four claims, differing somewhat in phraseology and breadth, but with no practical distinction between them, of which the first may be taken as sufficiently representative:

'(1) The method of maintaining a constant current in an alternating current circuit including translating devices in series and also including a reactance-coil in series with the translating devices, which consists in opposing to the magnetic pull of the coil a mechanical force, and so correlating the said mechanical force and the magnetic pull that the choking effect of the coil will vary automatically to compensate for changes in the resistance of the circuit.'

If this is valid, the defendants clearly infringe, the device which they put out making use of the exact method so described. As just stated, they have a reactance-coil in series with the lamps, in an alternating current circuit, the coil being hung like a pendulum, and the magnetic pull between it and the core, which is set above and in juxtaposition to it, being opposed by the weight of the coil and its inclination to swing back under the force of gravity to an approximately vertical position; the two opposing forces being so adjusted by previous experiment, as to the proper weight of the coil and the distance and angle at which the core is to be set, that the choking effect of the two will compensate automatically for the changes in the resistance of the circuit in which the device is to be employed. This is not to be disposed of by the suggestion that the specifications describe a particular form of apparatus of an essentially different kind from that of the defendants', in which the opposing mechanical force consists of a counterbalancing lever and weight not found, as it is said, in the defendants' device, to which in consequence the complainants are confined. What is shown in the patent must be taken simply as illustrative, and not as imposing a limitation, this being a method patent, and not, therefore, tied down to any concrete form. If it is good at all, it covers every means for the maintenance in the manner described of a constant current in an alternating current circuit in which there are translating devices in series. Neither can it be limited by the prior art, no such method being anywhere there found, the regulating reactance devices which do appear-- as we shall more fully see in connection with the apparatus patent-- differing materially in principle and mode of operation from anything we have here. Some which have been referred to have not the same purpose or scope, while in those which approach the nearest either a transformer is employed, or magnetic repulsion is the force relied on instead of magnetic attraction; this being not simply a matter of different polarity, but of strength and consequent action and treatment as well as results.

These observations, however, develop the weakness and inherent vice of the patent. It is not limited to any particular mechanical construction, because it monopolizes every form of regulation of the character specified, in which there is a correlation between the magnetic and mechanical forces employed, and that, too, without indicating, except by the broadest generalities, upon what basis that correlation is to proceed. We have practically nothing more than the forces made use of, the fact that they are to be correlated, and the result to be produced. This carries it beyond anything which it was the design of the patent law to secure and protect. But, more than this, to support a method or process patent there must be a tangible product or a change in character or quality brought about, and not simply a principle or result underlying or involved in certain mechanical, or, as here, electrical, means or steps. O'Reilly v. Morse, 15 How. 62, 14 L.Ed. 601; Corning v. Burden, 15 How. 252, 14 L.Ed. 683; Fuller v. Yentzer, 94 U.S. 288, 24 L.Ed. 103; Cochrane v. Deener, 94 U.S. 780, 24 L.Ed. 139; Tilghman v. Proctor, 102 U.S. 707, 26 L.Ed. 279; Wicke v. Ostrum, 103 U.S. 461, 26 L.Ed. 409; New Process Fermentation Co. v. Maus, 122 U.S. 413, 7 Sup.Ct. 1304, 30 L.Ed. 1103; Risdon Locomotive Co. v. Medart, 158 U.S. 68, 15 Sup.Ct. 745, 39 L.Ed. 899.

As said by Mr. Justice Brown in Westinghouse v. Boyden Power Brake Co., 170 U.S. 537, 18 Sup.Ct. 707, 42 L.Ed. 1136:

'These cases assumed, although they do not expressly decide, that a process, to be patentable, must involve a chemical or other similar elemental action, and it may be still regarded as an open question whether the patentability of processes extends beyond this class of inventions. Where the process is simply the function or operative effect of a machine the above cases are conclusive against its patentability.'

Even in the Telephone Cases, 126 U.S. 1, 534, 8 Sup.Ct. 778, 782, 31 L.Ed. 863, in which the court went to the extreme, it was pointed out by Chief Justice Waite that the claim was--

'Not for the use of a current of electricity in its natural state, as it comes from the battery, but for putting a continuous current in a closed circuit into a certain specified condition suited to the transmission of vocal and other sounds, and using it in that condition for that purpose. So far as at present known, without this peculiar change in its condition it will not serve as a medium for the transmission of speech, but with the change it will. Bell was the first to discover this fact, and how to put such a current in such a condition, and what he claims is its use in that condition for that purpose.'

This decision lends no countenance, therefore, to the idea that the operation of an electric force stands any different before the law from that of a mechanical force, or that a method devised for utilizing its peculiar properties and action can be patented any more than a method for utilizing those of any other element. In the present instance it is clear that the so-called method which is sought to be patented is merely the operative theory which is the basis of the apparatus patent. The one is the idea or principle of which the other is the concrete embodiment, the identity of the two being established by the specifications common to both. And if the method patent is sustainable the apparatus patent is redundant and superfluous, as are also all the others applied for by the same inventor and simultaneously taken out, the method covering the whole ground. It is thus virtually an attempt to monopolize the common underlying principle or mode of operation of them all, and of all others in which it might be employed, and as such cannot be sustained.

The apparatus patent as originally issued had five claims; but the third and fifth have ben eliminated by a disclaimer, and the second has been withdrawn, leaving the first and fourth as the ones relied upon, as follows:

'(1) In an electric circuit, a regulating reactance device having operating parts whose relative position determines the choking effect of the device, magnetic means for causing relative movements of the parts, and mechanical means for controlling such movements, these mechanical means being adapted to so control the movements as to produce definite predetermined choking effects.'

'(4) In an alternating circuit a series of

...