Wabash Corp. v. Ross Electric Corp., 21

Decision Date21 February 1951
Docket NumberDocket 21714.,No. 21,21
Citation187 F.2d 577
PartiesWABASH CORP. et al. v. ROSS ELECTRIC CORP. et al.
CourtU.S. Court of Appeals — Second Circuit

Kenyon & Kenyon, New York City, for plaintiff, Wabash Corporation.

Arthur G. Connolly, Wilmington, Del., (Theodore S. Kenyon, New York City, Arthur G. Connolly, Wilmington, Del. and Edward A. Ruestow, New York City, of counsel), for plaintiff, Hartford National Bank & Trust Co. (Trustee).

Alexander C. Neave, New York City, (Charles H. Walker, Harry R. Pugh, Jr., New York City, Vernet C. Kauffman and James J. Lazna, Cleveland, Ohio, of counsel), for defendants.

Before AUGUSTUS N. HAND, CHASE and FRANK, Circuit Judges.

AUGUSTUS N. HAND, Circuit Judge.

The facts in this case have been fully set forth in the opinion of Judge CHASE. I differ with him only in so far as he would hold the product patent valid. Judge Frank and I have been unable to discover any patentable invention in the plaintiffs' product. The Ostermeier, van Liempt and Crowley Patents taught the art enough to defeat the claims of the product patent relied on. In the first, a metallic foil was used; in the second, a metallic wire; and in the third, metallic wool. The only thing that remained was to fill the entire bulb with the wire for, given that, the filling would normally be undulating, serpentine, and elastic. If there was any invention in either of the patents in suit, it was in the mode of blowing the wire into the bulb with a stream of controlled air. The defendants failed to adopt the precise mode called for in the process patent and thus did not literally infringe. But the plaintiffs argue that they, as the first to use air for filling flash bulbs, should be entitled to a broad range of equivalents. Nevertheless, we all agree that these differences between the plaintiffs' process and the defendants' are sufficient to prevent a decree for infringement in what seems to be a narrow field of invention. Accordingly the process patent is held not infringed, and the decree of the District Court dismissing the action as to it is affirmed; the product patent is held void for lack of invention and the decree sustaining it, and holding it infringed, is reversed.

CHASE, Circuit Judge, dissenting in part.

This appeal is from a decree in a suit for the infringement of two patents, one, No. 2,115,423, issued to C. Korver on April 26, 1938, for a "Method and Device for Transporting Wires," and the other, No. 2,162,847, issued to the same patentee for a "Flash Lamp." The first patent is for a process used in the manufacture of the flash lamp which is the product covered by the second patent, and they will hereafter be called respectively the process patent and the product patent. Some of the claims of the process patent were held invalid. Those have all since been disclaimed and are not now involved. Others were held not infringed. All the claims of the product patent were held valid and infringed; an injunction was granted and an accounting ordered. The plaintiffs are the Wabash Corporation, exclusive licensee under both patents, and the Hartford National Bank and Trust Company, which holds the legal title to both patents in trust. They have appealed from so much of the decree as holds the process patent claims not infringed. The defendant Ross Electric Corporation which sells the accused lamps in the Eastern District and the defendant General Electric Company, which manufactures and distributes those lamps for sale, have appealed from that part of the decree which holds the product patent valid and infringed.

The flash lamps are the kind known as photo-flash lamps. The development of such lamps began with a type made by the General Electric Company under the Ostermeier patent, No. 1,776,637, about twenty years ago, and has marked a decided advance in the art of flash photography. Before then, the necessary intense light of short duration was provided by igniting fast-burning powders in open containers, creating smoke that was more or less disagreeable to the senses and somewhat of an interference with taking a succession of pictures. Ostermeier did away with all that by providing a glass bulb filled with oxygen and aluminum foil in such a way that an electric current, entering the bulb, would ignite the filling. An intense light of sufficiently controlled duration but with a sharp peak, i. e., a comparatively short period of highest intensity, could be obtained from his lamp. Yet his great advance over what had been done before left much to be desired. The shortness of the period of maximum light output made synchronization with the camera shutter difficult, his bulbs had to be so large that a photographer could readily carry but a few at once and they had to be handled with much care to prevent breaking. Their manufacture was made slow and costly by the necessity of filling the bulbs with the right amount of the right size of foil by hand, by pushing it in with a rubber-tipped rod such as a pencil with its eraser, to insure its uniform distribution in a crumpled condition throughout the bulb. Still this lamp was such an improvement over the old open flash method that it was in great demand and in 1938 nearly 4,000,000 were sold.

In 1936 the predecessor of Wabash Corporation, having obtained an exclusive license under the patents in suit, began making the patented lamps. They were so much cheaper to make, so much more efficient in operation, and in other respects so much better than the Ostermeier lamps that the latter were superseded in a few years. In 1942 over 17,000,000 of the patented lamps were sold and in 1948, over 60,000,000. In 1942 General Electric began to make and to market the accused lamps, and their sale has nearly equalled that of the patented ones. Though some of this marked commercial success may be justly attributable to factors independent of the disclosures of either of the patents in suit, it is apparent that those disclosures were in large measure responsible for it.

The Process Patent

While the process patent originally covered more, the elimination of the claims as above noted narrowed it to a method usable only in filling containers shaped in general like the bulbs of photo-flash lamps. Claims 2, 5 and 6 were held valid. Claim 2 is typical and reads as follows: "A method of uniformly filling a hollow body closed except for a single aperture, with an internally-strained wire of small mechanical strength, comprising the steps of carrying the wire through the aperture and into the hollow by a stream of gas leaving through another portion of the aperture, and distributing the wire in a curled condition and as uniformly as possible within the hollow by the recurrent flow of the gas therein."

I will confine my description of the process to one, as disclosed by the specifications, which is usable for filling photoflash lamps, since the accused process is of that kind and the patentee called his "particularly well adapted" for that.

Whenever a metal wire1 is bent the stretching which occurs on the outer side of the bend and the compression on the inner side so distort the metal that internal strains are set up. These strains have a tendency to make the wire curl when it is not under tension, the amount of curling varying directly with the intensity of such strains. Most metal wires of small absolute strength are inherently so strained that they have some tendency to wave or curl when loose, and winding on a spool serves to increase this tendency. Korver sought to fill a photo-flash bulb with such wire mechanically so that it would be evenly distributed throughout the bulb and would be so curled and waved that it would be held in place during handling and use by its resiliency against the walls of the bulb and between curls throughout its own mass. He did that by assembling a machine which first unwound from a spool the fragile wire when it was to be used for filling. If it was not already sufficiently internally strained to curl as desired in the bulb, the wire was pulled over a sharp edge to impart such strains. Then it was carried to, and through, a guide tube of small diameter which extended into the aperture of the bulb which was of much greater diameter; there the guide tube was greatly enlarged in diameter but still kept much smaller than the neck of the aperture. A supply of compressed air was fed into the guide tube near the end where the wire entered, this being done in such a way that the air would flow toward the bulb. This air stream carried the fragile wire along the small part of the guide tube under sufficient tension to keep it from curling or kinking during that transit but when this stream reached the enlarged or "belled" portion of the guide tube, within the neck of the bulb, the air expanded and was thus slowed in speed enough to let the wire curl. From there the air stream, slowing even more after it entered the larger portion of the bulb to be filled, distributed curled wires throughout the receptacle by flowing to and against the closed end of the bulb and then reversing and passing out of the bulb through the aperture between its inner sides and the outside of the guide tube. This reversal of the direction of the air flow and its passage to, and out of, the aperture of the bulb is what is designated in Claim 2 as "the recurrent flow of the gas" which distributes "the wire in a curled condition and as uniformly as possible within the limited space."

In the accused process the material from which the filler is made is not at the beginning a fragile wire wound on a spool. It is, instead, a roll of aluminum foil of the desired thickness and width. It usually is about eight inches wide and .001 of an inch thick. This sheet of foil is unwound from its roll by feed rolls between which it passes. These feed rolls first draw it through a lubricating tank, where it is treated to make it shear more readily, and...

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