Westinghouse Electric & Mfg. Co. v. Wagner Electric & Mfg. Co.

• Decision Date: 16 August 1909
• Docket Number: 2,857.
• Citation: 173 F. 361
• Court: U.S. Court of Appeals — Eighth Circuit
• Parties: WESTINGHOUSE ELECTRIC & MFG. CO. v. WAGNER ELECTRIC & MFG. CO.

173 F. 361

WESTINGHOUSE ELECTRIC & MFG. CO. v. WAGNER ELECTRIC & MFG. CO.

No. 2,857.

United States Court of Appeals, Eighth Circuit.

August 16, 1909

Rehearing Denied October 18, 1909.

Appeal from the Circuit Court of the United States for the Eastern District of Missouri.

Thomas B. Kerr and Paul Bakewell (Drury W. Cooper and Bakewell &amp Cornwall, on the brief), for appellant.

A. C Fowler and Chester H. Krum, for appellee.

Before SANBORN and VAN DEVANTER, Circuit Judges, and RINER, District judge.

RINER District Judge.

This was a bill in equity filed by the appellant, Westinghouse Electric & Manufacturing Company, in the Circuit Court of the United States for the Eastern District of Missouri. The bill charges the appellee, Wagner Electric &amp Manufacturing Company, with infringement of letters patent of the United States, No. 366,362, dated July 12, 1887, issued to George Westinghouse, Jr., and by him assigned to the appellant. The patent relates to improvements in electrical converters or transformers, and the bill prayed for an injunction and an accounting. The general nature and object of the invention is thus stated by the patentee 'The invention relates to the construction of a class of apparatus employed for transforming alternating or intermittent electric currents of any required character into currents differing therefrom in certain characteristics. Such apparatus are usually termed 'induction coils' or 'converters.' The object of this invention is to provide a simple and efficient converter, which will not become overheated when employed for a long time in transforming currents of high electric motive force, and which will be thoroughly ventilated.'

The following drawings, copied from the patent, show a cross-section and a longitudinal section of appellant's transformer:

(Image Omitted)

Having reference to the above drawings, the patentee, in describing the invention, says:

'Referring to the figures, A represents the core of the converter, and C1 and C2 the respective coils. The core is preferably composed of thin plates of soft iron, a, a, separated individually or in pairs from each other by thin sheets of paper or other insulating material. This insulating material is preferably applied to one surface of the plates by being glued or pasted thereto, and these surfaces may lie all in the same direction, thus separating the plates individually, or alternate plates may have their covered surfaces in one direction and the intervening plates have their covered faces in the opposite direction, thus magnetically separating the plates in pairs. The plates are preferably constructed with two rectangular openings, e1 and e2, through which the wires pass. For convenience in inserting the coils, or rather in applying the plates to the coils after the latter have been wound, a cut is made from each opening, as shown at b, b. By bending the ends, c, c, upward, the plates may then be thrust into position, and the ends, c, c, then close about the coils. The tongues, e3, of succeeding plates, are preferably inserted from opposite sides. I do not, however, herein broadly claim an induction coil having its core constructed of thin plates formed in the manner just described; but such invention is claimed in an application of even date herewith, filed by Albert Schmid. Each group of-- say five or six-- plates thus applied is preferably separated from the succeeding group by air-spaces. These may be produced by passing tubes, f1, f1, which may be of soft iron or other metal, or of vulcanized fiber, along the lengths of the plates. It may be sufficient in other instances to block the group of plates apart at intervals, instead of extending the tubes the entire length. Preferably, also, the primary and secondary coils, C1, C2, are separated from each other in a similar manner. In this instance blocks or tubes, f2, of nonconducting materials, are used. The tubes may be perforated, as shown at f3, f3. Where the converter is to be used in open air, the tubes, f1 and f2, would permit a free circulation of air, and thus aid in keeping the converter cool. It may be preferred in some instances to surround the converter with some oil or paraffine, or other suitable material, which will assist in preserving insulation and will not be injured by heating. This material, when in a liquid form, circulates through the tubes and the intervening spaces of the coils and plates, and preserves the insulation, excludes the moisture, and cools the converter. The entire converter may be sealed into an inclosing case, H, which may or may not contain a nonconducting fluid or a gas.'

The patent contains five claims, but the bill charges infringement of claim 4 only, which reads:

'The combination, substantially as described, of an electric converter constructed with open spaces in its core, an inclosing case, and a nonconducting fluid or gas in said case adapted to circulate through said spaces and about the converter.'

This claim was adjudged valid in Westinghouse Electric & Mfg. Co. v. Union Carbide Co. (C.C.) 112 F. 417, and 117 F. 495, 55 C.C.A. 230, hereafter referred to as the Carbide Case, and in Westinghouse Electric & Mfg. Co. v. American Transformer Co. (C.C.) 130 F. 550, and its validity was also recognized by the Circuit Court in this case. In the foregoing cases it was decided that most, if not all, of the elements of the combination of claim 4 were old in the art; but, the combination being new, it was held patentable, and in this view we concur. The appellee manufactured and sold two types of transformers-- the device involved in the carbide suit, which was there held to be an infringement of claim 4 of appellant's patent, and the device referred to in the record as 'Type M.' Both are claimed by appellant to be infringements of claim 4 of its patent.

The court below found that appellee's type M device did not infringe claim 4 of appellant's patent, and referred the cause to a master to take and state an account of the 'profits, gains, and advantages' received by the appellee, together with all damages suffered by the appellant by reason of the manufacture and sale by the appellee of the transformer held in the Carbide suit to be an infringement of claim 4 of the patent. Upon the incoming of the master's report, exceptions were filed thereto by the appellee, the exceptions sustained, and a decree awarding appellant nominal damages only was entered. Two questions are presented for decision: First. Did appellee's transformer, type M, infringe claim 4 of appellant's patent? Second, what is the proper measure of recovery upon the accounting? These questions will be considered in the order stated.

The appellee's transformer, decided in the Carbide suit to be an infringement of the appellant's patent, had open spaces, not only between the coils and between the coils and the core, but also open spaces in the core, and as to that device it is admitted in the answer that the decision in that case is res adjudicata and that a permanent injunction should be granted; but the answer denies that the other type of transformer involved in this suit, known as 'Type M,' is an infringement of claim 4 of plaintiff's patent, and the appellee insists that, while its transformer, type M, the only one manufactured by it since the decision in the Carbide suit, has open spaces between the coils, and between the coils and the core, it has no open spaces in the core, within the meaning of claim 4 of appellant's patent, and that the open spaces in the core are one of the principal elements of the combination of the claim in suit, and therefore its type M device is not an infringement. Thus the question is presented whether the open spaces between the coils, and between the coils and the core, found in appellee's device, type M, can be said to be open spaces in the core, within the meaning of claim 4 of appellant 's patent. It is not contended that the rectangular openings in the core for the purpose of admitting the coils come within the claim; but it is insisted by appellant that the open spaces between the coils, and between the coils and the core, are open spaces in the core, within the meaning of the claim we are now considering.

That claim is for a combination, and the rule by which we are to be governed in the determination of the question presented is clearly stated in Water Meter Co. v. Desper, 101 U.S. 332, 25 L.Ed. 1024, as follows:

'It is a well-known doctrine of patent law that the claim of a combination is not infringed if any of the material parts of the combination are omitted. It is equally well known that if any one of the parts is only formally omitted, and is supplied by a mechanical equivalent, performing the same office and producing the same result, the patent is infringed.'

And again, in the same case, the court said:

'Our law requires the patentee to specify particularly what he claims to be new, and, if he claims a combination of certain elements or parts, we cannot declare that any one of these elements is immaterial. The patentee makes them all material by the restricted form of his claim. We can only decide whether any part omitted by an alleged infringer is supplied by some other device or instrumentality, which is its equivalent.'

In Westinghouse Electric & Mfg. Co. v. American Transformer Co., supra, the Circuit Court for the District of New Jersey, in contrasting the several claims of the patent, one with another, for the purpose of more certainly ascertaining the meaning of claim 4, said:

' * * * The 'spaces' of claim 4 are 'open spaces in its core.' The 'open space' of claim 1 is that intervening between 'parallel primary and secondary coils.' The combination of claim 2 has as its elements,

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