Philadelphia Trust, Safe-Deposit & Insurance Co. v. Edison Electric Light Co. of New York

• Decision Date: 11 January 1895
• Docket Number: 21.
• Citation: 65 F. 551
• Parties: Philadelphia TRUST, SAFE-DEPOSIT & INSURANCE CO. et al. v. EDISON ELECTRIC LIGHT CO. OF NEW YORK et al.
• Court: U.S. Court of Appeals — Third Circuit

65 F. 551

Philadelphia TRUST, SAFE-DEPOSIT & INSURANCE CO. et al. v. EDISON ELECTRIC LIGHT CO. OF NEW YORK et al.

No. 21.

United States Court of Appeals, Third Circuit.

January 11, 1895

Paul D Cravath, for appellants.

Samuel B. Huey and C. E. Mitchell, for appellees.

Before DALLAS, Circuit Judge, and BUTLER and WALES, District Judges.

WALES District Judge.

This is an appeal from the order of the circuit court of the United States for the Eastern district of Pennsylvania granting a preliminary injunction against the defendants and enjoining them from using certain electric lamps, which are alleged to infringe the second claim of letters patent No. 223,898, dated January 27, 1880, issued to Thomas A Edison, and generally known as the 'Edison Filament Patent.' The second claim reads as follows:

'The combination of carbon filaments with a receiver made entirely of glass, and conductors passing through the glass, from which receiver the air is exhausted, for the purposes set forth.'

The validity of the patent had already been sustained in the circuit courts of the United States in other districts. Edison Electric Light Co. v. United States Electric Light Co., 47 F. 454; affirmed by the United States circuit court of appeals for the Second circuit, 3 C.C.A. 83, 52 F. 300; Edison Electric Light Co. v. Sawyer-Man Electric Co., 3 C.C.A. 605, 53 F. 592; Edison Electric Light Co. v. Beacon Vacuum Pump & Electrical Co., 54 F. 678. In the present suit the validity of the patent was not directly assailed. It was admitted that the lamps used by the defendants infringed the second claim and that the complainants were entitled to the injunction, provided that certain lamps should be exempted from the operation of the writ, namely, the lamps which were manufactured by the Columbia Incandescent Lamp Company, of Missouri. The ground on which this exemption was demanded was that in the suit of the Edison Electric Light Co. v. Columbia Incandescent Lamp Co. (in the United States circuit court for the Eastern district of Missouri) 56 F. 496, a motion for a preliminary injunction had been refused, for the reason that the court entertained a doubt of the novelty of the Edison invention, notwithstanding the prior adjudications in its favor. The defense in that case was that Henry Goebel had, long before the date of the Edison patent, made an incandescent lamp, different in form, but in all essential features the same as that now in general use; and it was on the strength of this claim, which the court said was supported by 'a fair preponderance of testimony,' that the motion was denied, on the defendants giving a bond in $20,000, with approved surety, conditioned for the payment of such sum, if any, which might be decreed against them on final hearing. The same identical defense had been made before in the suit by the same complainants against Beacon Vacuum Pump & Electrical Co., supra, and, after a protracted trial and investigation, had been discredited and overruled. The Goebel defense was also set up in the subsequent case of Edison Electric Light Co. v. Electric Manuf'g. Co., 57 F. 616, and was again overruled, and the decree in that case has been in all respects affirmed by the United States circuit court of appeals for the Seventh circuit. Electric Manuf'g Co. v. Edison Electric Light Co., 10 C.C.A. 106, 61 F. 834.

In the proceedings now under review, no evidence relative to the Goebel claim of anticipation was submitted to the court consequently we have nothing to do with the merits of that defense here. We cannot, however, fail to observe that such a defense comes at a late day, after the patent had been repeatedly sustained by the courts, and when its term is about expiring, and should therefore be received with the utmost caution. Our present inquiry is to ascertain the rule of practice which has been generally followed in disposing of motions for preliminary injunctions against persons who are charged with the infringements of patents. In the Missouri case the court held that 'complainants must show a clear right in support of a preliminary writ, and a defense which puts a case in doubt is sufficient to defeat the application. ' That is the rule which governs all applications where the patent has not undergone prior judicial investigation and been sustained; but in cases similar to the one before us 'the general rule is that where the validity of the patent has been sustained by prior adjudication, and especially after a long, arduous, and expensive litigation, the only question open, on motion for a preliminary injunction, in a subsequent suit against another defendant, is the question of infringement, the consideration of the other defenses being postponed until final hearing. * * * The only exception to this general...