Westinghouse Elec. & Mfg. Co. v. Stanley Instrument Co.

• Decision Date: 09 September 1904
• Docket Number: 504.
• Citation: 133 F. 167
• Parties: WESTINGHOUSE ELECTRIC & MFG. CO. v. STANLEY INSTRUMENT CO.
• Court: U.S. Court of Appeals — First Circuit

133 F. 167

WESTINGHOUSE ELECTRIC & MFG. CO. v. STANLEY INSTRUMENT CO.

No. 504.

United States Court of Appeals, First Circuit.

September 9, 1904

William K. Richardson and Thomas B. Kerr (Kerr, Page & Cooper, on the brief), for appellant.

Charles E. Mitchell and William Houston Kenyon (Mitchell, Bartlett &amp Brownell, on the brief), for appellee.

Before PUTNAM, Circuit Judge, and ALDRICH and BROWN, District Judges.

PUTNAM Circuit Judge.

There is so much judicial literature hearing on this case that only a brief preliminary statement is required. The bill alleges an infringement of the two claims of letters patent for an invention, No. 511,559, issued to Nikola Tesla, on December 26, 1893, on an application filed on December 8, 1888, and of the first claim of No. 511,560, issued to Tesla on the same December 26, on an application filed on the same December 8. No. 511,559 is captioned 'Electrical Transmission of Power,' and opens with the statement that Tesla had invented 'certain new and useful improvements in electrical transmission of power. ' No. 511,560 is captioned 'Systems of Electrical Power Transmission,' and opens with the claim that Tesla had invented 'certain new and useful improvements in systems of electrical power transmission. ' The claims of No. 511,559 are as follows:

'(1) The method of operating motors having independent energizing circuits, as herein set forth, which consists in passing alternating currents through both of the said circuits and retarding the phases of the current in one circuit to a greater or less extent than in the other.

'(2) The method of operating motors having independent energizing circuits, as herein set forth, which consists in directing an alternating current from a single source through both circuits of the motor and varying or modifying the relative resistance of self-induction of the motor circuits and thereby producing in the currents differences of phase, as set forth.'

The claim on No. 511,560 in issue is as follows:

'(1) The combination with a source of alternating currents, and a circuit from the same, of a motor having independent energizing circuits connected with the said circuit, and means for rendering the magnetic effects due to said energizing circuits of different phase and an armature within the influence of said energizing circuits.'

The bill was dismissed by the Circuit Court by an opinion passed down on March 11, 1903, 129 F. 140. The only reason for dismissal given was that the complainant had failed to establish by sufficient proofs a conception of the invention by Tesla prior to April 22, 1888, the date of a certain publication in Italy known as the Ferraris publication. The opinion refers to one of the Circuit Court of Appeals for the Second Circuit (Westinghouse Co. v. Catskill Co., 121 F. 831, 58 C.C.A. 167), passed down on February 25, 1903, wherein it was held that the proofs were insufficient to establish invention by Tesla prior to April 22, as rendering unnecessary an extended statement by himself. Thereupon the complainant appealed to us.

The patents in suit relate to the conversion of alternating currents of electricity into a continuous current. The latest condition of the prior art is shown by patents issued to Tesla under date of May 1, 1888, referred to over and over again in the judicial literature on this topic. These describe a system 'of electrical power transmission in which the motor contains two or more independent energizing circuits through which were caused to pass alternating currents,' 'conveyed directly from the generator to the corresponding motor coils by independent lines or circuits. ' The improvement of the patents in suit dispenses with one of the lines, or circuits.

The fundamental nature of Tesla's invention in issue we thing was clearly and correctly put by Prof. Main, an expert called by the complainant. He testified that in the patents in suit it was pointed out that, without the use of a commutator, an alternating current could be received from a single circuit, by subdivided, and then caused to react in such manner as to produce continuous and sufficient energy for practical power purposes. But he also testifies, and we accept this testimony as correct, as follows:

'I do not understand that in the patents in suit Tesla claims to be the first to discover that the phase could be split, either by induction or by the use of electrically dissymmetrical circuits. It is my understanding that Mr. Tesla, in his search for a method of driving a polyphase motor from a single circuit, availed himself of an item of merely philosophical knowledge, never before applied in driving motors, and that, for reasons explained, this application was not obvious, even in the light of his own prior patents.'

We find nothing in the complainant's case, or in the patents themselves, which indicates that Tesla's application of principles scientifically known, as explained by Prof. Main, was found to involve any special difficulties requiring the exercise of the inventive faculty. Therefore the invention consisted in merely applying to practical uses of facts that were known scientifically, but never before thus applied. Indeed, both parties have taken this view of Tesla's invention in issue here. The complainant says that the invention, 'stated in its simplest form, was based upon the conception that, instead of employing two independent sources of current and two transmission circuits between the source and the motor, he'-- that is, Tesla-- 'might employ but a single source, and a single circuit leading to the motor; at the latter, divide the circuit into two paths, and by artificial means retard the current in one of these paths to a greater extent than in the other. ' Also, at another place, it says that the invention did not in the slightest reside in any of the mechanism employed, and that, therefore, it might be described in a few words. The respondent took the same view until a different one seemed necessary in order to cover the issue of anticipating the Ferraris publication. In opening the case the respondent maintained as follows: The alleged invention of the patents in suit is not addressed to the utilization of two-phased currents in a motor, but to an alleged new way of producing the necessary two out-of-phase currents; this specific way of producing two out-of-phase currents was old and well known in the art, and was old and well known as an equivalent of the method set out in the May 1, 1888, patents; all the methods of producing two or more out-of-phase alternating currents set out in the Tesla patents were, in and of themselves, old and well known and set out in a way not even approximated in accuracy or fulness maintained that Dr. Kennelly, on pages 207 and 209 of this record, explained the fact that the alleged invention in the patents in suit involved merely the substitution of one means of obtaining two-phase currents for another means, and that on pages 234 and 249, inclusive, he shows that these two means were old and well-known equivalents. Of course, all this was with the purpose of maintaining that there was no invention in any view of the patents now in issue. It unavoidably concedes, however, that, if there were invention, it was of the fundamental and simple nature which we have described. It is true, as already said, that subsequently the respondent took a different position; but, as the one we have just explained was the one into which it naturally fell, we are safe in affirming, as we do, that the experts on each side, and the parties themselves, have accepted the invention in issue as we have stated it.

When, under special circumstances like those referred to by Prof. Main, a particular practical application of a known principle proves to be of advantage in the arts, and yet the thought of making it had not occurred to those expert therein, such application, at times, involves invention. This, within a somewhat narrow range, was shown by us in Watson v. Stevens, 51 F. 757, 2 C.C.A. 500, in Heap v. Tremont & Suffolk Mills, 82 F. 449, 27 C.C.A. 316, and in some other cases. More striking illustrations are found in Western Electric Company v. Larue, 139 U.S. 601, 11 Sup.Ct. 670, 35 L.Ed. 294; National Cash-Register Company v. Boston Company, 156 U.S. 502, 15 Sup.Ct. 434, 39 L.Ed. 511; DuBois v. Kirk, 158 U.S. 58, 15 Sup.Ct. 729, 39 L.Ed. 895; and many other decisions of the Supreme Court. Neither of these strikes the imagination, or demands a verdict in favor of inventive genius, to such an extent as does the application in the case at bar of electrical principles already philosophically known.

The corollary of this proposition, which we will apply later, is that in cases of this character, where the originator had boldly struck out into a practical application, and stated it, though only in general terms, he has, for the most part, made his conception clear, even though the mechanical details have not been expressed or thought out. The Telephone Cases, 126 U.S. 1, 8 Sup.Ct. 778, 31 L.Ed. 863. Therefore, Prof. Main was right in testifying to the effect that, if Tesla made clear his conception in a general way, he made clear his invention, leaving the artisan skilled in electrical science to work out the practical details required in applying what was previously within the bounds of philosophical knowledge. The importance of this last proposition will become more clear when we take up the testimony offered by the complainant to show that Tesla anticipated Ferraris.

It must be admitted that Ferraris, in the publication of April 22 1888, disclosed alternating currents transformed by derivation, so called, and also by induction. Tesla's conception was in this respect at least as broad as...