Home/Second Circuit/Benjamin Electric Mfg. Co. v. Dale Co.

Benjamin Electric Mfg. Co. v. Dale Co.

158 F. 617, 85 C.C.A. 439, 1907 U.S. App. LEXIS 4016
CourtCourt of Appeals for the Second Circuit
DecidedNovember 13, 1907
DocketNo. 10
StatusPublished
Cited by15 cases

This text of 158 F. 617 (Benjamin Electric Mfg. Co. v. Dale Co.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Second Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Benjamin Electric Mfg. Co. v. Dale Co., 158 F. 617, 85 C.C.A. 439, 1907 U.S. App. LEXIS 4016 (2d Cir. 1907).

Opinion

PER CURIAM.

The patents sued upon were both issued to Reuben B. Benjamin on the same day (March 3, 1903) upon an application filed May 30, 1898, and renewed August 10, 1901. Complainants here rely on three claims of patent No. 731,774, viz.:

“5. An electric-lamp cluster, comprising a plurality of metal receivers for the lamps, a metallic truncated portion carrying the receivers and attached to the base, an electric connection with the receivers, an additional contact for each receiver and an electric connection with said contacts, as set forth.”
“7. In a plural lamp-socket the combination with an insulating base and a metallic contact-plate mounted thereon, of a plurality of metallic threaded shells for the lamp-bases, supported thereon and in electrical contact therewith, and contacts for the central-lamp terminals arranged opposite the respective shells, substantially as described.”
“32. A cluster-lamp fixture comprising an insulating base, a number of threaded shells and center contacts constituting the lamp-sockets mounted upon the insulating-base and a cover having an opening opposite each socket, substantially as described.”

The claims of the second patent No. 731,777 which are relied upon are:

“5. A cluster-lamp fixture comprising an insulating-base, a plurality of threaded shells suitably associated therewith, a easing having an opening opposite each shell, and insulating-rings fitting in said openings and secured to said shells.”
“13. An electric-light clamp cluster consisting of an insulating-base, a plurality of lamp-receivers supported by said base, center contacts associated therewith, and a finishing or protecting cap or cover separated from the receivers by insulating material.” "

[619]*619It is not necessary to discuss the patents or the prior art in detail. Sufficient is set forth in Judge Holt’s opinion to indicate what it was that Benjamin accomplished; and we concur in his finding that, although the Benjamin device did not involve any electrical invention, it “had mechanical improvements which at once made a cluster light constructed in accordance with those patents commercially successful,” and that “the clusters manufactured under the patents immediately entered into extensive commercial use.” We concur, also, in the conclusion that “there is sufficient mechanical invention shown in the Benjamin patents to make the patents valid.” They disclose a novel, ingenious, and meritorious invention. Examination of the claims above quoted will show that there is but little difference between the structures shown in the two patents. Claims 5 and 7 of the first patent cover the combination which has been called in argument the cluster unit, without any cover. Claim 32 brings in the cover with an opening opposite each socket, the sockets being separated electrically from the cover by air spaces. The second patent shows the same cluster unit, the same cover, and the same openings; insulating bushing having taken the place of air spaces. In view of this the Circuit Court held that:

“It is very doubtful whether the second patent is not to be regarded as invalid because anticipated by the first patent. * * * As I understand the rule the patent numbered first takes precedence of the other.”

This is a correct statement of the general rule, defendants citing Underwood v. Gerber, 149 U. S. 224, 13 Sup. Ct. 854, 37 L. Ed. 710; Writing Machine Co. v. Elliott & Hatch Book-Typewriter (C. C.) 106 Fed. 507; Willcox & Gibbs S. M. Co. v. Machine Co., 93 Fed. 206, 35 C. C. A. 269; and Crown Cork & Seal Co. v. Standard S. Co., 136 Fed. 841, 69 C. C. A. 200. But where the patentee has had an application pending for the állowance of the later numbered patent at the time when the earlier numbered patent was issued, and especially when it was through no fault of his that his original application for a single patent was split up and a plurality of patents issued, an exception is made to the enforcement of this rule. Electrical Co. v. Brush Co., 52 Fed. 137, 2 C. C. A. 682; Thomson-Houston El. Co. v. Elmira & H. R. Co., 71 Fed. 404, 18 C. C. A. 145; Independent Electric Co. v. Jeffery Mfg. Co. (C. C.) 76 Fed. 989. As was stated in Badische Anilin Co. v. Klipstein (C. C.) 125 Fed. 554:

“It would be a failure of justice if the patentee of á meritorious invention should be deprived of the fruit of his labors because an arbitrary rule of the Patent Office has brought about complications not contemplated.”

This case is a striking example of the unfortunate result of too close adherence to rule. Benjamin came to the Patent Office with a meritorious invention — a simple one which was quite sufficiently described in a brief specification. The specification and the drawings showed his cluster-unit, by itself and also made practically a commercial article by the use of a cover and a switch; varieties of cover with and without bushing being shown. He asked for seven claims. The logical way would have been to include the genus and its varieties in the same pat[620]*620ent, and half a dozen claims would have covered every possible combination which he was entitled to hold. But by the time the Patent Office got through with- him Benjamin was the holder of four separate patents granted upon divisional applications split off from his original one; the four patents containing together 98 claims. It does not seem just that the patentee, who was powerless to obtain any modification of the rule for dividing applications, should be made to suffer from such misdirected energy. There seems sufficient authority to warrant a construction, which will hold that these two patents, based on a single original application and issued on the same day are to be treated as a single one, containing the five claims above, quoted.

Of these claims, however, it is conceded by complainant’s expert that claim 32 of the first patent and claims 5 and 13 of the second patent are broad enough in their terms to include forms of the plural or cluster lamp sockets other than the wireless form. We have been able to concur with the Circuit Court as to the validity of Benjamin’s invention only because by his combination of parts he was able to dispense with the individual lamp wires and made the so-called “wireless' cluster” a commercial success. Therefore these three claims, which may fairly be construed to cover clusters, which are not “wireless” cannot be sustained.

The question of infringement, the only one left in the case, will be best understood by reference to the following diagrams:

[621]

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Bluebook (online)
158 F. 617, 85 C.C.A. 439, 1907 U.S. App. LEXIS 4016, Counsel Stack Legal Research, https://law.counselstack.com/opinion/benjamin-electric-mfg-co-v-dale-co-ca2-1907.