Reflectolyte Co. v. Luminous Unit Co.

• Decision Date: 10 June 1927
• Docket Number: 7548.,No. 7445,7445
• Citation: 20 F.2d 607
• Parties: REFLECTOLYTE CO. v. LUMINOUS UNIT CO. LUMINOUS UNIT CO. v. REFLECTOLYTE CO.
• Court: U.S. Court of Appeals — Eighth Circuit

20 F.2d 607 (1927)

REFLECTOLYTE CO. v. LUMINOUS UNIT CO.^*

LUMINOUS UNIT CO. v. REFLECTOLYTE CO.

Nos. 7445, 7548.

Circuit Court of Appeals, Eighth Circuit.

June 10, 1927.

Dodson & Roe, Harry L. Dodson, and Zell G. Roe, all of Chicago, Ill., for plaintiff.

Paul Bakewell, of St. Louis, Mo., for defendant.

Before LEWIS and BOOTH, Circuit Judges, and PHILLIPS, District Judge.

LEWIS, Circuit Judge.

On a bill in equity brought by Luminous Unit Company (called plaintiff) against Reflectolyte Company (called defendant) the court, after final hearing found (1) Reissue Patent No. 14,680, for lighting fixture, to be good and valid; (2) that it was the property of plaintiff; (3) that defendant had infringed on claim 1 of said patent (the only claim involved in the suit) by manufacturing and selling its structure; and thereon defendant was perpetually enjoined from further making, selling and offering for sale its alleged infringing structure. From that decree defendant appealed.

The defendant in its answer denied both invention and infringement, and plead a large number of prior patents and publications as anticipations of plaintiff's structure.

The Reissue Patent on which suit was brought was to E. F. Guth, as was the original which he and his assignee, the plaintiff, surrendered for cancellation when the reissue was made July 1, 1919. Guth filed application for the original patent on October 18, 1912, and it was issued October 21, 1913, as No. 1,076,418. The drawings, specification and claims 1 and 2 are identical in the original and reissue, but the latter added a third claim which the original did not have. The specification of each calls for a lighting fixture for semi-indirect lighting; and, speaking now in general terms, the structures of both plaintiff and defendant consist of an electric light, a reflecting member over the light and a translucent light diffusing bowl under and near the light, the bowl being open toward the reflecting member, thus causing the light which does not pass through the bowl to be reflected from the inner surface of the bowl upward against the reflector and thence reflected downward and outward, as well as other rays which pass direct from the source of light to the reflector. In each there are means for suspending the bowl from the reflecting member by rods or other appliances, but there is no controversy about that. Guth had no patent on the parts, — the light, the bowl and the reflector. They were all old. His claimed conception was for a new combination of these parts in their relations to each other. This is demonstrated by the file wrapper and the claims themselves. When Guth entered the field in 1912 it swarmed with lighting fixtures called for by domestic and foreign patents, all having the three elements — a source of light within a bowl, the bowl opening upwardly toward a downward reflecting surface, the bowl acting as a shade to break the glare and diffuse the rays that pass through it, and casting upward the rays of light that did not pass through it on to the reflecting member, which diffused them and the rays direct from the source of light, and cast them all downward. Most of the reflectors in prior patents over the source of light were wider than the bowl opening, as is Guth's. Their reflecting surfaces were of many different shapes, concave, some cone-like, some flat throughout and parallel with the ceiling above, some divided into plane segments at different angles to the horizontal, and one at least was in corrugated circles. So confronted, Guth for his specification in his original application said:

"The lower surface of the canopy (his reflector) is preferably flat and parallel with the ceiling and serves as a reflecting surface to reflect the rays of light both downwardly and toward the walls of the room. * * * In the use of the fixture a portion of the rays of light will pass through the bowl, being diffused and softened thereby. Other rays will be reflected from the inner reflecting surface of the bowl to the outer surface of the canopy and there reflected outward and downward, and still another portion of the rays will be directly reflected by the canopy."

He presented nine claims. They called for a reflecting member "having a substantially flat reflecting surface." There were many hearings. All of the claims were rejected by the Examiner, or in part withdrawn, and new ones filed. This occurred several times. Finally the new claims called for a reflector with a flat reflecting surface. The Examiner cited Stieringer No. 253,955, issued February 21, 1882, which shows a flat reflector in the drawings, but Guth's counsel argued that Stieringer's specification called for a reflector that "should be flat, parabolic, or trumpet-mouthed," whereas Guth's reflector "must be flat." He further said: "Stieringer says nothing about the height of his reflector above the light and bowl." The Examiner made other citations and held more than once that a flat reflecting surface was old in the art and did not involve invention. Guth's counsel repeated his argument:

"It is, of course, true that flat reflectors and translucent bowls are old, but it by no means follows that there can be no invention in combining these features, or that there is no invention in combining a flat reflector, a translucent bowl, and a source of light in a particular way. It is elementary that old elements may be combined to form a patentable combination."

This argument was pressed in different forms. It was insisted that the claim set forth a relative position of the light, bowl, and reflector not present in the references and which were essential to Guth's invention; and that his reflector must be flat. The argument prevailed and the original patent issued with these two claims, which were repeated as claims 1 and 2 in the reissue, viz.:

"1. In a lighting fixture, the combination with a reflecting member having a horizontally disposed flat lower reflecting surface, of a translucent light diffusing bowl opening toward the central portion of the reflecting surface and positioned a short distance below said surface to provide free space for the passage of light between the reflecting surface and the upper edge of the bowl, the bowl opening being of smaller area than the reflecting surface, bowl suspending means attached to the upper part of the bowl, and a source of light within the bowl and near the reflecting surface, the relative position of the bowl, source of light and reflecting surface being such that all the rays of light not passing directly from the source to the inner surface of the bowl will strike the reflecting surface and be directed downward thereby.

"2. In a lighting fixture, the combination with suitable ceiling connections, of a lamp socket attached thereto, a canopy covering said ceiling connections and lamp socket, said canopy having a wholly flat lower surface adapted to reflect light, a translucent light diffusing bowl positioned below and opening toward the central portion of the flat reflecting surface, the area of the bowl opening being less than that of the said reflecting surface, a lamp in the lamp receptacle and extending into the bowl, means for suspending the bowl so that light passing downwardly through it will be unobstructed, the bowl, lamp and reflecting surface being positioned with relation to each other to cause substantially all the rays of light from a lamp to be directed downwardly and distributed in a diffused condition over the entire surface of a horizontal plane beneath the fixture of a greater area than the reflecting member."

This suit was brought July 9, 1920, on the reissue patent, and charged that defendant's structure infringed on claim 1. Defendant's lighting fixture, which it claims to have made in accordance with Letters Patent No. 1,121,577, granted December 15, 1914, to Harry C. Adam for semi-indirect lighting fixture (barring means for bowl suspension), does not have a reflector parallel with the ceiling, its reflecting surface is not flat, it is not horizontal. The reflecting surface of its reflecting member is divided into two oppositely inclined planes set at different angles to the horizontal, so that rays reflected from these surfaces were cast down at widely different angles and to different points below. But plaintiff claims, and its expert witness testified, that tests made of the two structures demonstrate that the lighting effect of the two is substantially the same in all respects and that defendant's reflector is thus shown to be an equivalent of plaintiff's. However, the depths of the bowls, the relation between the tops of the bowls and the sources of light, and the distances between the reflecting surface and the bowls and light were not given. This would seem important when plaintiff's claimed combination is borne in mind. Claim 1, if valid, indeed claim 2 also, must rest on "the relative position of the bowl, the source of light and reflecting surface." All else was admittedly old. It was by the inter-relation of bowl, source of light and reflecting surface that Guth sought to differentiate his structure from the prior art. We have seen from the file wrapper that it was not Guth's first intention to restrict his combination to a reflecting member having a flat reflecting surface. His original specification said: "The lower surface of the canopy is preferably flat and parallel with the ceiling." And although this was carried over into the specification issued with the patent, it cannot be doubted on an examination of the Patent Office record that Guth, on objection of the Examiner, narrowed his combination to one having a reflector with a flat reflecting surface. To meet the Examiner's objection Guth's counsel said an amendment had been made "to bring out the fact that the applicant's entire reflecting surface above the light is flat." In a later response he said: "Applicants' reflector must be flat," and to make...