Westinghouse Electric & Mfg. Co. v. Saranac Lake Electric Light Co.

• Decision Date: 27 April 1901
• Docket Number: 6,500.
• Citation: Westinghouse Electric & Mfg. Co. v. Saranac Lake Electric Light Co., 108 F. 221 (N.D. N.Y. 1901)
• Parties: WESTINGHOUSE ELECTRIC & MFG. CO. v. SARANAC LAKE ELECTRIC LIGHT CO.
• Court: U.S. District Court — Northern District of New York

108 F. 221

WESTINGHOUSE ELECTRIC & MFG. CO. v. SARANAC LAKE ELECTRIC LIGHT CO.

No. 6,500.

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

April 27, 1901

Frederick P. Fish and J. Edgar Bull, for complainant.

M. B Philipp, C. E. Mitchell, and H. B. Brownell, for defendant.

COXE District Judge.

This is an equity suit charging the defendant with infringement of two patents owned by the complainant. The first of these is reissued letters patent No. 11,031, granted September 24 1889, to Rankin Kennedy, of Glasgow, Scotland, for an improvement in the method of distributing and regulating alternating electric currents by secondary generators. The second patent is No. 469,809, granted March 1, 1892, to William Stanley, of Great Barrington, Mass., for an improvement in systems of electrical distribution.

The Kennedy Patent.

The view which the court feels compelled to take of this patent renders extended discussion and analysis unnecessary. It can be sufficiently understood from the claim, which is as follows:

'The method of distributing and regulating alternating electric currents by secondary generators, which consists in producing in two or more derived circuits constituting the primaries of two or more secondary generators a counter electro-motive force which, when any secondary is open, is practically equal to the applied electro-motive force in its primary and in controlling said electro-motive force by the current flowing in the corresponding secondary when the secondary is closed in such manner that the current in the primary shall vary with and be approximately inversely proportional to the resistance in the secondary, substantially as described.'

The application for the original patent was filed November 13, 1888. The original patent was dated July 16, 1889. The application for the reissue was filed August 28, 1889. It is conceded that the invention is anticipated unless the complainant has succeeded in showing that it was made in June 1883--over five years prior to the time when Kennedy swore to the application and filed it in the United States patent office.

The patent being anticipated, if the date of the application be taken as the date of invention, the burden rests upon the complainant to satisfy the court that the invention was made at an earlier date. There is no presumption in favor of such a patent. The burden which rested upon the defendant in the first instance has been transferred to the complainant and it must furnish the court with convincing proof that the anticipation has been anticipated.

In Loom Co. v. Higgins, 4 Ban.& A. 88, Fed. Cas. No. 17,342, the court says, at page 98:

'The burden of proof rests upon the defendants to show, beyond a fair doubt, the prior knowledge and use set up; but, where they have sustained that burden by showing such knowledge and use prior to the patent, the burden of showing the still prior invention claimed, by at least a fair balance of proof, must rest upon the plaintiff.'

Plow Works v. Starling, 140 U.S. 184, 198, 11 Sup.Ct. 803, 35 L.Ed. 404; Thayer v. Hart (C.C.) 20 F. 695.

The complainant assumes this burden and has attempted to discharge it by the introduction of three articles written by Kennedy and published in the Electrical Review of London in June, 1883, in which he describes some 'interesting experiments.' It is in the last sentence of the first of these articles that the invention of 1888 is said to be found, as follows:

'In parallel arc, however, the secondary generator is beautiful self-governing system of distribution; but what about the size of conductors for such a system? Prodigious.'

This is the only time secondary generators in parallel arc are mentioned in any of the articles.

It seems to be conceded that the following are essential to the successful working of the method of the patent: First: A constant potential generator. Second: Closed magnetic circuit transformers. Third: Lamps in parallel. Fourth: Plurality of transformers.

It is also conceded that none of these is mentioned in any of the Kennedy articles, but it is said that they are inferred, and that a skilled electrician would be able to construct the full-grown system from the emaciated skeleton thus exhibited. The court is compelled to think otherwise.

The impression produced upon the lay mind, at least, is that Kennedy had no clear conception of a practical system in 1883 and thought the obstacles so prodigious that he did not attempt to surmount them. If he had answered his question with the exclamation 'impossible,' it is not probable that it would be now asserted that he had solved the problem. And yet though his answer did not go to the extent of saying that the thing could not be done it was one of discouragement and surrender. He offered no solution and intimated that a practical solution could not be found. What he did can hardly be called an abandoned experiment for there was no experiment to abandon; it was only a tentative suggestion, an ingenious theory, a clever idea which is altogether too nebulous a foundation upon which to rest a patent which seeks to levy an immense tribute from the art and which was not thought of until five years afterwards. If the articles had been written by some one else and had been set up as an anticipation by the defendant it is easy to imagine with what contempt their indeterminate, incomplete and infeasible statements would be brushed aside by the complainant. In contemplation of law an invention does not exist until the inventor's theories and ideas have been reduced to practical form. It cannot be predicated of mere speculation and conjecture; it must be based upon something ascertained, something definite and certain. Rob. Pat. Secs. 125, 127, 132. 'The mere existence of an intellectual notion that a certain thing could be done, and, if done, might be of practical utility, does not furnish a basis for a patent, or estop others from developing practically the same idea. ' Standard Cartridge Co. v. Peters Cartridge Co., 23 C.C.A. 367, 77 F. 630, 645.

But suppose that the articles contain the full statement for which the complainant contends; how then stands the case? In 1883 the inventor published to the world a full description of his invention. This act of itself seems inconsistent with the theory that he intended to secure a patent. If his purpose was to give the public the benefit of his experiments his course was entirely natural, but it was most extraordinary if he intended to secure a monopoly. On the 19th of November, 1886, Kennedy published a letter in the Electrical Review in which he takes issue with Zipernowski and Deri that they were the first to make 'the simple connection of secondary generators in parallel arc. ' He maintains that he was the first to do this and says:

'I then thought of and tried parallel arc connection and perfectly succeeded in obtaining self-regulation. There certainly is not much visionary about that; the visions of a monopoly I am afraid are all on the other side, and my experiments and published results are likely to somewhat mar the beauty of monopoly visions. * * * I do not know anything about 'rational methods of connection of transformers,' I know only two methods of connecting to the mains-- series and parallel-- both of which methods it is open for anybody to apply to any form of transformer.'

Kennedy was not ignorant of the modus operandi of securing patents and received several in this country and in Europe prior to the patent in suit and after the letter of November, 1886, in which he expressly abandoned the right to the 1883 method to 'anybody' who saw fit to use it. These patents were for transformation and distribution of electric energy, several of which would have supported the claim in issue, but no such claim was made.

The language of Mr. Justice Bradley in Loom Co. v. Higgins, 105 U.S. 580, 595, 26 L.Ed. 1177, 1183, seems appropriate:

'If Davis was the inventor of the wire motion applied to these looms, why did he never apply for a patent for it? He was already a patentee for a different and inferior apparatus. He knew all about the method of going about to get a patent. He belonged to a profession which is generally alive to the advantages of a patent right. On the hypothesis of his being the real inventor his conduct is inexplicable.'

Between 1883, and 1888 other electricians had reduced the system of the patent to practice and they and the public had acquired rights of great value relying upon Kennedy's inaction and affirmative declaration that he had no monopoly and that what he had described was open and free to all. It is not necessary to hold that each of these acts and omissions considered separately worked an abandonment and dedication to the public; it is enough that taken together they lead to that result. In other words, there seems no escape from the conclusion that Kennedy intended that the public should have whatever he had contributed to the art in the 1883 articles referred to. His words are in harmony with his acts. He told the public that it was free to do all that he had done and knowing that the public had taken him at his word he made no effort to secure a monopoly until years afterwards.

The complainant practically concedes that the 1886 letter was an abandonment, but it argues that Kennedy's letter was addressed to the British public, that the gift was made only to Englishmen, and that the American public had no part or lot in the matter. There are many answers to this proposition, but a sufficient one is that the major premise is incorrect. Kennedy was not addressing the British public but the skilled electricians of the world. His letter was not printed in a Glasgow paper, but in the Telegraphic Journal and...