Maitland v. Archer & Pancoast Co.

72 F. 660, 1896 U.S. App. LEXIS 2581

Opinion

COXE., District Judge

(after stating the facts as above). The court cannot consider this controversy de novo. Many of the questions which are now debated were decided in the Pennsylvania case. 63 Fed. 126; Id., 11 C. C. A. 446, 63 Fed. 840. As to these the doctrine of stare decisis is applicable. »

Claims 4 and 5 of the reissue need not be considered anew. As to them the discussion is closed, certainly so far as this court is concerned. No one can read what is said regarding claims 7, 8 and 9 of the original without being convinced that the claims now under consideration would have shared the same fate had they been before the court. As to these claims nothing was reserved. They were held invalid because they were mere aggregations and contained nothing which would not have occurred to any one familiar with the art of electric lighting. I am inclined to think, too, that this reasoning applies to the second claim of the reissue which is the same as the first except that the insulating joint is provided with lateral openings to permit the wires to pass out of the stem and connect with the wires in the- ceiling. It will very much simplify this discussion if it be confined to the first claim of the reissue which contains the essence of Stieringer’s invention. The fact that the patent has been reissued, that the original patent has been construed by the court, that in the various proceedings in the courts and the patent office arguments have been advanced on both sides not wholly consistent with present contentions; all this, in connection with the voluminous record and multitude of exhibits, makes the case a most bewildering and perplexing one at best. If the paramount and fundamental issue can be rescued from this maze of disputed propositions it will be a long step towards arriving at the ultimate rights of the parties. The discussion of subordinate; questions may then become unnecessary, at least at the present time.

It may fairly be said that the questions relating to the combination of the insulating joint, the house piping and the metal gas fixture are left open by the decisions in the Pennsylvania circuit. Even this is disputed, but the language of the court is susceptible of an interpretation in consonance with complainant’s view', which, it would seem, is more consistent than the one contended for by the defendant, which limits the patent to a Chinese reproduction of the joints shown. It is impossible to limit the patent to one form of joint because the drawings show three forms differing from each other as widely as the defendant’s joint differs from some of them. If the joint shown at Fig. 8 is (he equivalent of the one at Fig. 4 it is not easy to see why the defendant’s joint is not also an equivalent. To restrict the patent to the precise form of joint covered by the third claim of the reissue is to defeat it for all useful purposes, because a mere tyro in electric lighting would know enough to change the joint in some minute particular and thus escape infringement. No patent should be strangled by such a harsh construction unless the prior art compels it. Nothing in the present; record requires such a construction. If Stieringer did nothing more than improve an old joint and put it back in its well-known environment he is wholly out of place in this court; but to assert this is, according to my understanding of the record, to proceed upon an entire misapprehension of Stieringer’s achievement. Tin; Pennsylvania court liad before it a claim broad enough to cover any form of insulating joint and any form of fixture, and it decided, in view of what had been done before, that this claim was invalid. It does not follow that a claim limited to cover what Stieringer a (dually did is invalid or would have been held invalid in the Gibson (’ase. Such a claim ivas not before the court and was not passed upon.

Proceeding, then, upon the hypothesis that the first claim, assuming (he reissue to be properly granted, is still open to discussion, the questions to be answered are: Did the conception of an insulating joint for the purpose indicated originate with Stieringer? Did this involve invention? Does the defendant infringe? A study of this record has convinced me that Stieringer was the first to make the use of gas chandeliers a practical success in. the art of electric lighting. The prior structures were not only dangerous, but awkward and ungainly. Stieringer’s is absolutely safe, and, at the same time, the symmetry and graceful contour of the fixture is preserved. When the conditions surrounding the genesis of electric lighting are remembered it can hardly be denied that the man who yoked the new art to the old, and fully developed the art of electric lighting was something more than a mechanic. It, is plain that he who utilized for electric lighting the expensive and intricate gas-pipe systems then existing and the fixtures which embodied a multitude of graceful designs .took a long forward step. He made electric lighting cheap, convenient, simple and safe. Of course it is not pretended that Stieringer was the first to use gas piping and fixtures in this art, but it is thought that he was the first to make the use of an internally wired metal fixture absolutely safe. If any one did this before Stieringer the record does not disclose his name. The defendant hardly does justice to Stieringer’s achievement when it is asserted that it involved merely the use of an insulating joint. Grant that with the idea of putting insulation at the ceiling joint of an internally wired fixture clearly before him, it required nothing but ordinary skill for the workman to carry out the idea, can it be said that it required no exercise of the inventive faculties to conceive and carry out the idea? A number of accomplished inventors were at work on this very problem. They accomplished nothing. Stieringer succeeded. His combination is in use to-day precisely as he embodied it. There have been some incidental mechanical changes, but the substance is the same. It is not an unreasonable presumption that one who succeeds in doing what so accomplished an inventor as Edison failed to do, is on a distinctly higher plane than a mechanic. Not only did Edison fail himself, but he was among the first to recognize the merits of the invention practically as well as theoretically, for his firm took a license under Stieringer’s patent. So did the defendant in the Pennsylvania case, the defendant in this case and afterwards, substantially, the entire art. The importance of the patent was conceded and acquiescence was well-nigh universal. All this is wholly inconsistent with the theory that the patentee’s contribution was perfectly obvious and without patentable merit. The history of the art from 1882 is a refutation of this proposition. 'Stieringer’s joint located at the ceiling seems'to be regarded as one of the absolutely essential features where an internally wired metal fixture is used. If not essential why should the defendant and all other manufacturers be so strenuous about its use? They can omit it, or locate it elsewhere in the system, with perfect impunity. It is not pretended that any of the prior patents anticipates; many of them, though relating generally to electric lighting, do not deal with the heavy and dangerous currents from the dynamo, but with feeble currents in branches of the art entirely distinct from the one now under consideration. Aggregated they would not show a skilled workman how to utilize the existing gas fixture. The ferryboat exhibit is unquestionably the best of defendant’s references. Irrespective of the question whether it was prior to the conception of Stieringer’s invention, and of this there is grave doubt, it is thought that it can only be regarded in the light of an experiment that was tried, proved to be an utter failure and was abandoned. If this had been the only contribution to the art, electric lighting, in the particulars mentioned, would not have advanced a step. It was dangerous and inefficient. It accomplished nothing. After a trial of two or three months it was abandoned. During this time the joints leaked gas and broke in two. The chandelier was held by the wires aloné and was in danger of dropping on the heads of the passengers. Some of the very dangers which Stieringer sought to avoid were inherent in this structure. Perhaps its principal vice was the employment of the metal of the chandelier as part of the conducting circuit. It was a one-wire system. The witness who wired the fixture, who was then a machinist and is now a butcher, describes it fully and accurately. He says, among other things, that it was wired “partly inside and partly out. One wire was inside from the ball joint at the top, the ground wire was soldered onto the pipe; it came through the upper deck overhead and was soldered just below the insulating joint, and that ended it. The other wire ran alongside; the pipe and inside the casing from the wooden canopy down to 1 his other wooden bell and then out through and around the wooden bell and then the branch wires were soldered onto the main wire down to the lamp.” It is not surprising that such a structure was a complete illustration of “how not to do it.” It was an embodiment of irredeemable inefficiency. Short circuits were formed, a wire would ground on the gas pipe and the lights would go out. The pipe was burned, a hole was burned through the brass canopy, the wires were burned off in the tubing and the joints were wholly inadequate. The structure proved an utter failure, the joints were discarded and the wires placed on the outside. A meritorious invention should not be defeated upon such proof. In fact, the ferryboat fix-l ure is an indirect tribute' to the value of Stieringer’s invention. It exhibits the kind of work to be; expected of a skilled mechanic even after the insulating joints were placed in his hands. The mechanic failed.. The inventor succeeded. In short, I cannot resist the conclusion that Stieringer made an invention of considerable merit, and, this being so, the court, of course, is anxious to give him protection commensurate with his achievement. , To confine the invention to sonu' specific form of joint is, as before stated, tantamount to saying 1hat the inventor has done nothing at all. He was not working to improve an insulating joint. He was working to improve the art of electric lighting by cutting off electrically the piping of the ceiling from the metal of the chandelier. To do this he required an insulating joint to he sure, but it was only one of the elements, which, when inserted at the ceiling made the combination successful. It was this conception which made the valuable contribution to the art. Theshops might have been filled for years with joints of this character and the art would not have progressed a step. What did advance the art was placing a joint having these characteristics at the ceiling in the manner described. When that was done a combination was created where every element acts upon every other and all are necessary to produce the desired result; in short, a combination having the per my et per tout characteristics. The combination is a limited one, it is true; much more so than the claim of the original patent, but it is properly covered by the first claim of the reissue. That claim is for a combination Imving the following elements: First. A metallic fixture for electric lights containing insulated conducting wires. Second. An insulated joint located at the upper or inner end of the fixture and having metallic coupling portions and an intermediate section of insulating material. Third. The grounded piping of a house by which the chandelier is thus supported. The elements, broadly speaking, are the fixture, the joint and the piping, but the limitations are important and clearly distinguish this claim from the first claim of the original. The fixture must be metallic in whole or in part, it must contain the conducting wires, which are to be covered with insulation and hidden from view. The joint must be of three parts; two metal coupling portions and an intervening washer of insulation. It must be located at the upper or inner end of the fixture. The piping must be grounded. The claim so limited is no broader than the invention. That the claim so construed is infringed by the defendant’s fixtures is not disputed. Noninfringement is only based upon a construction which limits the complainant to a joint like that covered by claim 3, and, as already stated, such a construction cannot be given without manifest injustice to the complainant.

The only other question relates to the reissue. Still confining the discussion to the first claim it seems too plain for argument that it is much narrower than the first claim of the original. None of the limitations above referred to is in the latter. The claim of the reissue is fully sustained by the original specification and drawings. As soon as the complainant was informed by the final decision of the court that his claim was too broad he applied for a reissue limiting it to what he thought the court had left in his possession. Of course no structure would infringe the claim under consideration that would not infringe the broad claim of the original, and no intervening equities have arisen. In such circumstances I know of no authority compelling a ruling that the reissue is void. It follows that as to the first claim of the reissue the complainant is entitled to the usual decree.