Westinghouse Electric & Manufacturing Co. v. Catskill Illuminating & Power Co.

• Decision Date: 25 February 1903
• Docket Number: 8.
• Citation: 121 F. 831
• Parties: WESTINGHOUSE ELECTRIC & MFG. CO. v. CATSKILL ILLUMINATING & POWER CO.
• Court: U.S. Court of Appeals — Second Circuit

121 F. 831

WESTINGHOUSE ELECTRIC & MFG. CO. v. CATSKILL ILLUMINATING & POWER CO.

No. 8.

United States Court of Appeals, Second Circuit.

February 25, 1903

Appeal from the Circuit Court of the United States for the Southern District of New York.

Chas A. Brown and Wm. K. Kenyon, for appellant.

Thos B. Kerr and Parker W. Page, for appellee.

Before WALLACE, TOWNSEND, and COXE, Circuit Judges.

TOWNSEND Circuit Judge.

Appeal by defendant in the court below from its decree on bill alleging infringement of complainant's patents Nos 511,559 and 511,560, granted to Nikola Tesla on December 26 1893. The court below sustained both patents, and found infringement of both claims of patent No. 511,559 and of the first claim of patent No. 511,560. Inasmuch as we have reached a conclusion adverse to the complainant upon the question of priority of invention, the other issues will not be discussed.

The claims of patent 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 or self-induction of the motor circuits, and thereby producing in the currents differences of phase, as set forth.' The first claim of No. 511,560 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 claims of the former patent cover a certain method and of the latter certain means of operating electrical motors by means of alternating currents from a single original source. This system is known as the 'split phase' system. Nikola Tesla, the patentee herein, was the inventor of what is known as the 'polyphase system' of transmission of power, and had covered by his earlier patents, Nos. 381,968, 382,279, and 382,280, said system when operated by means of currents of varying phase from independent lines or circuits. The applications for these earlier patents were filed during the fall and winter of 1887 and the winter and spring of 1888, the final fees were mailed on April 8, 1888, and said patents issued May 1, 1888. Up to April 8th, Tesla had not intimated to his solicitor that his broad invention of the rotary field motor could be practiced by any means which did not involve the use of two independent circuits from the generator to the motor. The applications for the patents in suit were filed December 8, 1888. By the method and means therein described Tesla dispensed with one of the line circuits, and was able to run the motor by means of alternating currents from a single original source. This was accomplished, as appears from the foregoing claims, by means which so retarded the phases of the current in all circuits, or so varied the relative resistance of the motor circuits, as to maintain the necessary difference of phase in the currents. Such utilization of a single original source by thus splitting a single current into two currents was an improvement of great practical value. But on April 22, 1888, there had been published at Milan, in an Italian journal, a report of a lecture by Prof. Galileo Ferraris, in which the system covered by the patents in suit was fully described. This printed publication is such a disclosure of the subject-matter of the patents in suit that, if prior thereto, it would constitute an anticipation.

To support the burden thus cast upon it of proving to the satisfaction of the court that the supposed inventions in suit were made prior to April 22, 1888, complainant has introduced a photograph and the evidence of two witnesses, Messrs. Brown and Page. One of said witnesses has testified that said photograph represented a motor which was in Tesla's shop in the fall of 1887, and in which the difference in phase was secured by the introduction in one of the circuits of a coil having self-induction. There is nothing in the photograph, however, to indicate the means by which said motor was operated, nor whether it was adapted to receive a single or double current from the generator. Its construction is at least as suggestive of use in connection with the earlier polyphase as with the later split phase patents. We are therefore confined to a consideration of the testimony of said two witnesses.

Mr Brown furnished capital to Tesla to make his experiments at the date here in question, and afterwards sold his interest in the Tesla inventions to this complainant. On May 25, 1900, he testified that in 1887 Tesla disclosed to him certain inventions made by him relating to split phase alternating current motors, and showed him such motors in operation in his shop in Liberty street (in 1887), and that the shop was afterwards moved and destroyed by fire, and he thought all the motors were destroyed in said fire. He further stated that he had had no experience with alternating currents beyond that which he had had through his...