Westinghouse Electric & Mfg. Co. v. Mutual Life Ins. Co. of New York

• Decision Date: 09 February 1904
• Docket Number: 188.
• Citation: 129 F. 213
• Parties: WESTINGHOUSE ELECTRIC & MFG. CO. v. MUTUAL LIFE INS. CO. OF NEW YORK et al.
• Court: U.S. District Court — Western District of New York

129 F. 213

WESTINGHOUSE ELECTRIC & MFG. CO. v. MUTUAL LIFE INS. CO. OF NEW YORK et al.

No. 188.

United States Circuit Court, W.D. New York.

February 9, 1904

Kerr Page & Cooper, for complainant.

Martin Carey and Seward Davis (Charles A. Brown, of counsel), for defendants.

HAZEL District Judge.

This suit in equity is brought to establish infringement by the defendants of two United States letters patent granted to Nikola Tesla, of which complainant is the owner by assignment. The applications for both patents were filed December 8, 1888, but, on account of interference proceedings in the Patent Office, they were not granted until December 26, 1893. Their numbers are 511,559 and 511,560 respectively. The infringements consist in the use by the defendants of an alternating split-phase motor in an instrument for measuring the amount of electric energy supplied to a consumer. The instrument containing the motor is technically known as a 'recording watt meter.' The infringing apparatus used by the defendants in a building at Elmira, N.Y., is the Gutmann meter. The defense is want of patentability, noninfringement, and anticipation. Patent No 511,559 has two claims, both of which are said to be infringed. They read 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 relates broadly to the method and extent of retardation of the phase of the current. The second claim refers specifically to the method of accomplishing in the electric currents a difference of phase. Infringement is also charged of claims 1 and 2 of the patent No. 511,560, which read 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.

'(2) The combination, with a source of alternating currents and a circuit from the same of a motor having independent energizing circuits connected in derivation or multiple arc with the said circuit, the motor or energizing circuits being of different electrical character, whereby the alternating currents therein will have a difference of phase, as set forth.'

These claims with particularity refer to an apparatus for effecting the object of process patent No. 511,559, and specifying the devices constituting the split-phase motor with a single line or circuit. It is practically conceded that infringement of either of the claims involves the complete use of the entire system described in the specifications. The patents in suit are improvements on a series of five earlier patents which are the basic inventions for a class of motors called the polyphase motors for power transmission, or rotating field alternating motors. They are operated by alternating currents of electricity. The improvement patents here considered relate to the split-phase motor. It is not intended to discuss the scope of these patents in detail, for the reason that the claims involved have been uniformly construed in one form or another in a variety of litigations which have followed the Telsa polyphase and the split-phase patents from the time of their issuance. The patents in suit especially have been attacked with well-directed, vigorous, and resolute pertinacity. The fundamental principles upon which a difference of phase in circuits is based have been set forth with elaborate detail in prior opinions by Circuit Courts and Circuit Courts of Appeals, notably by Judge Townsend in the case of Westinghouse v. New England Granite Co. et al. (C.C.) 103 F. 951, which was a suit upon the broad Tesla patents of May 1, 1888, Nos. 381,968, 382,279, and 382,280; by Judge Shipman in the same case for the Circuit Court of Appeals, 110 F. 753, 49 C.C.A. 151; by Judge Brown in Westinghouse Co. v. Royal Weaving Co. (C.C.) 115 F. 733; by Judge McPherson in Tesla Electric Co. v. Scott & Janney et al. (C.C.) 97 F. 558; by Judge Thompson in Westinghouse Co. v. Dayton Fan & Motor Co. (C.C.) 106 F. 724, and in the same case by Judge Severens, who wrote the opinion for the Circuit Court of Appeals for the Sixth Circuit, 118 F. 562, 55 C.C.A. 390;

by Judge Lacombe in Westinghouse Co. v. The Catskill Illuminating Co. (C.C.) 110 F. 377, and in the same case by Judge Townsend for the Circuit Court of Appeals, reversing the decision of the Circuit Court, 121 F. 831, 58 C.C.A. 167; and recently by Judge Colt in Westinghouse Co. v. Stanley Electric Co., and by Judge Archbald in Westinghouse Co. v. Hiram C. Roberts (C.C.) 126 F. 6. It would, indeed, be a work of supererogation to here attempt an analysis of the involved claims and their scope, specially in view of the extremely technical character of the abstruse questions involved, and their previous exhaustive and comprehensive consideration by the courts. In the Catskill case the Circuit Court, considering the Tesla patents in suit and the defenses there raised, sustained their validity, and unqualifiedly concurred in the decisions of Tesla Electric Co. v. Scott & Janney et al. and Westinghouse Co. v. Dayton Fan & Motor Co., supra. The Circuit Court of Appeals, however, reversed the decision upon the ground that the publication of a magazine article on April 22, 1888, by Prof. Galileo Ferraris, fully described and disclosed the system covered by the patents in suit. This publication upon the evidence in that case was found to be prior to the date of the inventions in suit, and constituted an anticipation. It is quite apparent that the Circuit Court of Appeals did not intend to disaffirm or disapprove the conclusion of the Circuit Court upon any other ground, although no other issues were expressly discussed. By implication, at least, the novelty and validity of the patents Nos. 511,559 and 511,560, as found by the Circuit Court, were concurred in and sustained. Upon that point the opinion of the Circuit Court of Appeals states:

'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 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 in 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.'

This construction will be adopted by this court. The conclusions in patent cases by courts of concurrent jurisdiction, though the parties are different, are in themselves strongly persuasive of their soundness; but, when these questions have been reviewed on appeal and sustained, the doctrine of res adjudicata, provided no new evidence upon the subject is shown, has undoubted application.

I am now brought to the question of anticipation. Are patents Nos 511,559 and 511,560 invalid because anticipated by the admitted publication of Prof. Galileo Ferraris on April 22, 1888, in Turin, Italy? It is not controverted that this publication completely described the process and method of operating motors, as set out in the specifications and claims in suit. The Tesla split-phase patents, as has been stated, were granted December 23, 1893, upon applications filed December 8, 1888, eight months after the Ferraris publication. Upon careful consideration of the proofs, I have arrived at the conclusion that the actual date of the Tesla inventions is prior to this publication, and that the patents were not void for anticipation. According to the evidence, Tesla conceived his invention in his laboratory, No. 89 Liberty street, New York City, and completed the same in the month of September, 1887. He made disclosure thereof to others during the fall of 1887, especially to Mr. Brown and Mr. Nellis, witnesses for complainant, and subsequently in the month of April, prior to the Ferraris publication, to his solicitor, Mr. Page. The defense of anticipation raises a question of much importance. Evidence in support of the claim of earlier conception than the date of the application, disclosure of the invention, and its actual reduction to practice must be received with great caution. Unless such inventions were actually made and perfected before the date of the Ferraris publication, the patents cannot be sustained. The burden is upon the complainant, under the circumstances, to establish by clear, unequivocal, and convincing proof that the anticipation has been anticipated. Westinghouse Co. v. Saranac Lake Electric Light Co. (C.C.) 108 F. 221; Thayer v. Hart (C.C.) 20 F. 693; St. Paul Plow Works v. Starling, 140 U.S. 184, 11 Sup.Ct. 803, 35 L.Ed. 404. Has the complainant complied with the rule? Tesla, to sustain an earlier date of invention than the date of the application, and as a part of the complainant's prima facie case, gives testimony tending to establish the following facts: In the autumn of 1887, assisted by Mr. Szigeti, he was...