Opinion
May 3, 1935.
Leonard S. Lyon, of Los Angeles, Cal., and Charles Neave and Hubert Howson, both of New York City, for plaintiff.
J. Calvin Brown and Charles C. Montgomery, both of Los Angeles, Cal., for defendants.
In Equity. Suits in equity for infringement of a patent by the General Electric Company against T. Anraku, trading under the fictitious name and style of Tokyo Lamp Company, the International Lamp Company, Incorporated, and Pacific Importing Company and others.
Decree ordered to be entered in accordance with report of special master.
Report of Special Master follows:
To the Honorable Judges of the United States District Court, Southern District of California, Central Division:
The undersigned, David B. Head, who was appointed special master by an order entered in each of the above-entitled causes, directing him to try all issues of law and fact and to report to the court his findings of fact and conclusions of law, herewith submits his report:
All three actions are in equity for infringement of letters patent No. 1,410,499, issued March 21, 1922, to the plaintiff as assignee of Aladar Pacz. By stipulation the three cases were consolidated for trial. In this report all findings may be taken as applying to each case.
The causes were set down for the taking of testimony, and on November 14, 1933, the following appearances were made: Hubert Howson, Esq., of New York City, John H. Anderson, Esq., of Cleveland, Ohio, and Leonard S. Lyon, Esq., of Los Angeles, for the plaintiff; J. Calvin Brown, Esq., of Los Angeles, for the defendants. The testimony offered by the parties was taken from day to day until all had rested. Upon the filing of briefs the causes were submitted.
The plaintiff charges that the defendants infringed the letters patent in suit by the sale, within this district, of electric lamps embodying certain improvements described and claimed in the patent. The answers of the several defendants deny infringement and set up substantially the same defenses. The defenses attacking the validity of the patent are many. Defendants' counsel enumerates in his brief the defenses relied upon:
"(A) Invalidity in that —
"(a) The said inventions claimed were not inventions or discovered by the alleged inventor;
"(b) Prior publication and patenting;
"(c) Described in certain other printed publications;
"(d) Prior public use;
"(e) Lack of utility;
"(f) Non-invention;
"(g) Lack of novelty;
"(h) That for the purpose of deceiving the public, the description and specification filed in the Patent Office was made to cover less than the whole truth relevant to the invention or was made to cover more than was necessary to produce the desired effect;
"(i) Merely mechanical skill;
"(j) The claims do not define any invention;
"(k) That the matter covered by the letters patent was not a statutory subject of a patent;
"(l) That the invention claimed in the original patent is substantially different from any indicated, suggested, or described in the original application therefor;
"(m) That the invention claimed in the original patent is substantially identical with an invention claimed in a prior patent granted on the application of the same inventor;
"(n) That the claims of the patent are not distinct.
"(B) Noninfringement."
The subject-matter of the suit involves the filament of the well-known incandescent electric lamp. The pertinent history of the incandescent lamp began some fifty years ago when Edison brought out the first commercially successful lamp. The Edison lamp with a carbon filament remained the standard of the industry until the availability of tungsten as a filamentary material was disclosed by the invention of Just and Hannaman in 1906. The first tungsten filaments were of the squirted or pressed type. Tungsten powder was combined with a binding material in a plastic mass and then squirted under pressure through a die to a fine thread, after which it was dried and sintered to form a filament of substantially pure tungsten. These threads were formed in V-shaped segments, and each segment was separately welded to anchoring means which were a part of a framework within the lamp bulb. Exhibit 7 illustrates this construction. Inasmuch as tungsten offers less resistance to the passage of electric current than carbon, it was necessary to make the filaments of a smaller diameter and greater length than a carbon filament designed for the same use. Tungsten had an advantage over carbon as a filamentary material in that it made a much more efficient lamp, giving more light of superior spectral quality for the amount of current consumed.
The disadvantages involved in that use of tungsten came from the fact that the filaments were extremely brittle and failure from breakage was common. Squirted or pressed tungsten filaments were used until Dr. William D. Coolidge developed a process for the manufacture of ductile tungsten. The Coolidge filament was a drawn wire which could be made in any desired length and readily draped over the anchors within the lamp, in the manner shown in Exhibit 9. The Coolidge patent, No. 1,082,933, will be considered later.
One of the problems involved in the development of tungsten filament was caused by the phenomenon known as "offsetting." It was noted that if the grains of tungsten which made up the filament were so large in size as to entirely occupy a cross-section of the wire, grain boundaries would be formed which were substantially perpendicular to the axis of the filament. When heated to incandescence movement would occur at these boundaries. This is illustrated in the photomicrograph Exhibit 10. Coolidge in his patent, No. 1,082,933, offered a remedy for offsetting. During the preparation of the tungsten ingot from which the filament was to be drawn he introduced a small percentage of thoria. The presence of thoria had the effect of retarding grain growth so that the resulting filament was made up of very fine grains of tungsten, none of which were sufficiently large to extend across the diameter of the wire. Exhibit 12 is a photomicrograph of a thoriated tungsten filament. In such a filament offsetting is eliminated.
After the development of thoriated filament, the gas-filled lamp using a coiled filament was invented by Dr. Langmuir of the General Electric Company. The circulation of gas by convection in the Langmuir lamp caused an increased loss of heat, thereby lowering the efficiency of the lamp. To minimize this loss Langmuir used a tightly coiled filament so as to confine the heated portion of the lamp to as small an area as possible. At this point in the development of the art the phenomenon of sagging became a serious problem. The thoriated filament of Coolidge, when heated to incandescence, tended to elongate. In a coiled filament this resulted in opening up the coils with an increased loss of heat by convection. The only remedy was to provide a large number of supports which reduced but did not eliminate sagging of the filament. This was the state of the practical art at the time of Pacz's disclosure.
The Pacz Patent in Suit.
The patentee states that it is the object of his invention to produce a tungsten metal which when made into a filament will neither sag nor offset. He describes generally his method as follows: "In the preferred form of my invention I bring into intimate association with tungsten a material which will have the desired influence upon the grain growth of the metal. I precipitate, simultaneously, compounds from which the metal is to be directly reduced with the material or compound which is to accomplish the desired result. The material after precipitation will remain in intimate association with the metal even after the same has been reduced by the ordinary means, i.e., reducing gases. During the subsequent formation of the metal into ingots or bars, the material should be such that it will be removed as by volatilization. A material should be used which will have a fairly high volatilization point which is preferably somewhat lower than the sintering point of the metal." Further on he states: "The probable reason why filaments made according to my invention do not sag, is that the structure is comparatively coarse grained. The coarse grained filament produced by means of my invention does not `offset' so as to cut short the life of the lamp appreciably." The patentee describes in detail the method by which he produces an ingot of tungsten. A fusion of tungstic acid, sodium carbonate, potassium carbonate, and sodium nitrate are mixed with water to form a paste. This is dried and fused, then dissolved in water. This the patentee calls solution A. Another solution is made in the same manner with silicic acid, potassium carbonate, and sodium nitrate. Specified quantities of these two solutions are mixed and boiled. While the mixture is boiling diluted hydrochloric acid is added. The resulting precipitate is washed, dried and ignited, and reduced in hydrogen. The metal produced is called "metal A." This metal may be pressed and sintered into ingots, ready for working into filaments.
The patentee states that he prefers to continue the operation by mixing metal A with the oxide from which it was reduced and reducing this mixture. The resulting product is called "metal B."
Other modifications are suggested including a method for producing a metal termed "Z." B2O3 is added to the oxide from which metal A is reduced. The resulting metal has less density than metal A.
The patentee has given metal A the arbitrary name of "218." It is described as a fine grained metal containing less than two-tenths of one per cent. nonmetallic material.
The next step is to work the ingot into filaments. This is done in accordance with the method described in the Coolidge patent, No. 1,082,933. The ingot is worked in a swaging machine until its diameter is greatly reduced. Then the metal at a red heat is drawn through dies until it is reduced to desired size. The process is described at length by Coolidge, page 3, line 71, to page 4, line 99 of his patent.
If the filament is used in an incandescent lamp, the last step in the process is taken after the filament is in place in the completed lamp. The filament is heat treated by running the lamp at increasing voltage until normal voltage is reached and then continuing to burn the lamp at 115 per cent. of normal voltage for fifteen minutes. This is called "flash aging."
The filament produced by this process is identified by Dr. Jeffries, plaintiff's expert, as illustrated by the photomicrograph, Exhibit 20. One grain boundary is shown in the parts of the six coils of the photograph. The boundary is irregular. The occurrence of only one boundary indicates that the structure is coarse grained in comparison with the grain structure of the prior thoriated filament (Exhibit 12). Exhibits 14-A and 15 in comparison with Exhibit 11 illustrates the practical elimination of sagging in the Pacz filament.
Prior Art.
The defendants have cited a large number of patents and publications. Defendants' counsel has urged several of these patents and prior publications in support of the defense of invalidity by reason of anticipation. The before mentioned Coolidge patent, No. 1,082,933, is probably the most pertinent reference. Generally Coolidge produced a ductile tungsten by the addition of thoria. The addition of thoria offered a deterrent to the formation of large crystals. This prevented "offsetting," but increased the tendency of the filament to sag.
Other references of interest are the Pintsch patents. From a study of these patents it is evident that the problem with which Pacz dealt was one which had been well recognized in the art. It was Pintsch's idea to draw the filament in the form of a single crystal, thereby eliminating both offsetting and sagging. This would appear to be a solution to the problem, but it does not concern this cause inasmuch as neither the plaintiff nor the defendant have followed Pintsch's disclosure. Pintsch also suggests a filament composed of a "bundle" of grains. By this he means several grains, each of which extends the length of the filament. The defendants have called attention to the patent issued to Scoular, Exhibit A-18, and subsequent patents to the same applicant. The reason for this is that Scoular directs the use of silica in the mixture from which he evolves a filament. Scoular's filament is of the squirted type, and it is impossible to find any teaching in his patents which would lead to an avoidance of sagging. There is no suggestion of the large irregular grains produced by Pacz.
The Pacz patent, No. 1,299,017, describes a "finely granular" structure. It is produced by a different process than that of the patent. While Pacz describes the filament of this patent as retaining its shape to a high degree, he makes no claim of having invented a nonsag filament. The application for this patent was filed before the application for the patent in suit. The applications were copending and patent No. 1,299,017 was issued first. Consequently the first patent is not a patent or publication prior to the patent in suit. Claude Neon Lights v. E. Machlett Sons (C.C.A.) 27 F.2d 702. Even if it were, it does not anticipate.
The prior art may be summed up to this effect: That "offsetting" had been taken care of by Coolidge's teaching of a small grained structure; that sagging had been recognized as a problem by Pintsch for which he offered a solution by producing a filament of single grained structure. In all of the many patents and publications cited there is no suggestion that a large grained filament could be produced which would have the quality of resistance to both offsetting and sagging. A study of the prior art tends to strengthen the patent rather than weaken it.
The cited art helps to add definition to the Pacz structure. It is distinguished readily from the Coolidge filament, in that the grain size is infinitely greater to the extent that sagging is eliminated. The contour of the grain boundaries is irregular (Exhibit 20) in contrast to the boundaries of prior large grain filaments, such as illustrated by Exhibit 10. The multiple grain structure of Pacz is different from Pintsch's single grained structure and his "bundle" of grains.
Commercial Success.
The Pacz filament has been used in the manufacture of incandescent electric lamps by the plaintiff and its licensees for several years. It now accounts for about 90 per cent. of the lamps manufactured in the United States. Evidence was received which proved that the plaintiff's commercial product possessed to a high degree resistance to sagging and offsetting.Judged by the results, there is no doubt that the Pacz filament was a highly valuable contribution to the lamp art.
The Claims.
Plaintiff has limited the issue to three claims, 25, 26, and 27. All are structural claims and read as follows:
"25. A filament for electric incandescent lamps or other devices, composed substantially of tungsten and made up mainly of a number of comparatively large grains of such size and contour as to prevent substantial sagging and offsetting during a normal or commercially useful life for such a lamp or other device.
"26. A drawn filament for electric incandescent lamps or other devices, composed substantially of tungsten and made up mainly of a number of comparatively large grains of such size and contour as to prevent substantial sagging and offsetting during a normal or commercially useful life for such a lamp or other device.
"27. A filament for electric incandescent lamps or other devices, composed of tungsten containing less than three-fourths of one percent of non-metallic material and made up mainly of comparatively large grains of such size and contour as to prevent substantial sagging or offsetting during a normal or commercially useful life for such a lamp or other device."
Claim 26 differs from claim 25 in that it is limited to a drawn filament. In this case only drawn filaments are in issue.
Claim 27 differs from claim 25 in defining the maximum amount of nonmetallic material in the finished filament. This is directed to that feature of the Pacz filament which distinguishes it from filaments containing thoria or other material added to retard grain growth.
Validity.
The defenses offered which go to the validity of the patent will be considered under the classification given in defendants' brief, though not in the same order.
Utility (e). The demonstrated characteristic of resistance to sag and offset establishes the utility of the structure. The wide use of filaments of this type since Pacz's disclosure establishes utility beyond question.
Novelty (g). In the art prior to Pacz nothing is found in the field between the fine grained structure of the thoriated filament and the single grain structure of Pintsch other than the structures whose grain boundaries were at a right angle to the axis of the filament. The grain size of the Pacz filament distinguishes it from the Pintsch and the thoriated filaments; the grain contour distinguishes it from the prior coarse grained structures. It is concluded that the Pacz filament was a new product.
Anticipation by Prior Patents and Publications, Prior Public Uses (b, c and d). The discussion of the prior art covers all of the matters pertinent to these defenses. No evidence of prior uses was offered. The disclosures of the patent in suit were not anticipated by any of the prior art structures.
Double Patenting (m). The discussion of the Pacz patent, No. 1,299,017, under "Prior Art" relates to this defense. It is concluded that the invention claimed in the patent in suit was neither disclosed nor claimed in the earlier patent.
File Wrapper Defenses. This heading is intended to include the defenses designated by the letters h and 1. In view of the evidence, nothing is found that tends to prove that the applicant did not attempt to fully describe his invention or that he attempted to cover more than was necessary. The file wrapper shows that from the beginning an attempt was made to claim a new structure. Though many claims were offered, withdrawn, rejected, or allowed, there is nothing in the file wrapper which detracts from the force of the claims here in issue. No merit is found in these defenses.
Invention. Under this heading it may be understood that those defenses designated by the letters a, f, i, and k are considered. Regardless of the validity of the claims as such, the patent will be examined to determine whether or not an invention is disclosed.
The decision of the Circuit Court of Appeals for the Third Circuit in the case of General Electric Co. v. De Forest Radio Co. et al., 28 F.2d 641, held that the product claims of the Coolidge patent were invalid in that the tungsten and tungsten wire claimed were products of nature. In a previous case, General Electric Co. v. Independent Lamp Wire Co. (D.C.) 267 F. 824, the Coolidge patent and the product claims thereof were held valid by the same District Court which later held the same claims invalid in the De Forest Case, 17 F.2d 90. In the last case the evidence established that ductility was a natural characteristic of substantially pure tungsten. The instant case deals with a filament of substantially pure tungsten which has certain characteristics; that is, resistance to sag and offset. If these functions result from inherent characteristics of tungsten, the claimed invention falls under the condemnation of the De Forest Case.
The record in this case establishes that the filament produced by Pacz has a grain size which distinguishes it from the prior art structures. The breadth of that distinction is seen by comparing the Pacz filament with the thoriated filament. The contour of the grain boundaries is entirely different from any disclosure or suggestion of the prior art. It follows that these particular features of the Pacz filament are due to unusual and radical changes in the grain pattern of substantially pure tungsten. It does not appear that the grain structure of Pacz is naturally inherent in tungsten. Therefore the rule of the De Forest Case does not apply.
Coolidge and many others in the art worked toward small grained filaments, willing to sacrifice resistance to sag to avoid the greater evil of offsetting. Consequently the development of a filament of comparatively large grain size which neither sagged nor offset was an unexpected departure. It was new, useful, and the result of inventive thought.
Validity of the Claims. The defendants further contend that the claims are not distinct (n) and that they do not define an invention (j).
The claims are drawn to a filament made up of comparatively large grains of such a size and contour as to prevent offsetting and sagging. It is necessary to examine the specifications to determine, if possible, the definite meaning of these terms. The most helpful statement by the patentee is found on page 1, beginning line 60. Here it is said that probably the coarse grains resist sagging and offsetting. But this, together with the whole of the specifications, does not give the reader a complete conception of the Pacz structure. To obtain such a concept it is necessary for the worker in the art to follow out the Pacz process to its ultimate conclusion. Then he will find that the resulting filament is composed of grains each of which is large enough to fill the whole cross-section of the filament and that the grain boundaries are uneven with the absence of cleavage planes. The question arises as to whether or not the claims are indefinite and the disclosure insufficient. The authorities lay down the rule that an article of manufacture may be described by a description of the mode of manufacture. The method must be clearly described in such terms as to enable a skilled person to produce the article. Undoubtedly the patent in suit meets these requirements.
The recent case of Holland Furniture Company v. Perkins Glue Company, 277 U.S. 245, 48 S. Ct. 474, 476, 72 L. Ed. 868, lays down the rules by which product claims are to be judged. The rules of the Glue Case are briefly summarized by the Third Circuit Court of Appeals, in the case of George K. Hale Mfg. Co. v. Hafleigh Co., 52 F.2d 714, 715, as follows:
"That case [the Glue Case] decided:
"First. That a product claim, to be valid, must contain a description of the ingredients entering into the composition, sufficient to define the invention and carry it beyond the previous development of the art.
"Second. That the description of the ingredients must be in terms of their physical characteristics or chemical properties, and that a description in terms of the use or function either of the ingredients or of the product itself is not sufficient.
"Third. If the claim indicates a characteristic ingredient without sufficient particularity to carry it beyond the previous development of the art, the claim will be read in connection with the specification and limited thereby."
To meet the first two requirements the claims in issue describe a filament of tungsten of comparatively large grains. This description distinguishes the structure from the fine grained filaments common in the art at the time of disclosure. The further descriptive matter comes under the partial condemnation of the second rule, that description in terms of function is not sufficient. However, the addition of functional description reflects back to the description of grain structure. It gives the idea that the large grains are of such a contour that slippage between boundaries is prevented. Knowledge of the art teaches that a straight boundary in a single plane tends to offset. Consequently the large grain of the claim is defined as not having the contour of prior art filaments. The description in the claims carries the invention beyond the previous developments in the art. The claims describe the physical characteristics of the grains, though imperfectly, yet sufficiently to define the invention. The inclusion of functional matter in the description aids in defining the exact invention, though standing alone it would have the effect of limiting the invention in accordance with the third rule. In view of the above the third rule does not apply to the claims in issue.
The similarity between the claims in issue and the claims passed upon by the Supreme Court in the Glue Case justifies some further consideration. The reports of all known cases involving the same problem have been read. Of these other cases none has been found which has a more direct bearing than the Glue Case. That case concerned product claims of which the following is typical: "28. A glue comprising cassava carbohydrate rendered semi fluid by digestion and having substantially the properties of animal glue."
The properties of animal glue here referred to concerned principally low water absorptivity. The patentee's process lowered the water absorptivity of a starched base to a critical degree, which gave the product the properties of animal glue. Upon the pertinent phase of the case the court observed that the ingredient claimed was described, "wholly in terms of the manner of use of the product." The same cannot be said of the claims in this suit. The product is described by its grain size and the functional matter does not relate the product as such but defines the nature of the grain structure. While the reference to prevention of offsetting and sagging is in terms of function, it is not "in terms of the manner of use of the product." In the Glue Case the court condemns "the attempt to broaden product claims by describing the product exclusively in terms of its use or function." The reference to sagging and offsetting in the Pacz claims does not have the effect of broadening the claims, but narrows them to a grain structure having such size and contour that sagging and offsetting is prevented. These claims are so limited that the art may develop a nonsagging and nonoffsetting filament within the field of small grained or single grained structures. The art may also develop large grained filaments as long as the grain structure does not follow the nonoffsetting contour of the Pacz filament. To allow the claims in issue to stand does not involve the danger, recognized in the Glue Case, of extending the monopoly beyond the invention.
No purpose would be served by a discussion of the other reported cases which have been examined, except to observe that the attitude of the courts toward product claims tends to sustain the view that the Supreme Court did not intend to carry the rule of the Glue Case further than its application to the particular type of claim then under consideration.
It is concluded that the claims in issue are valid, and not limited except as their scope is defined by the prior art and the terms of the patent.
Infringement.
A great deal of testimony was taken concerning the alleged infringing structures. The defendants admitted the sale in this district of lamps illustrated by the exhibits attached to the interrogatories. The plaintiff offered satisfactory proof that lamps were purchased from the defendants for experimental use. Certain of these lamps and evidence of the experiments conducted with them were received in connection with the examination of Dr. Samuel S. MacKeown. Dr. Thomas S. Curtis testified as to experiments made for the defendants. Certain lamps of the type used in these experiments and other evidence relating thereto was received. Both Dr. MacKeown and Dr. Curtis prepared photomicrographs of sections of the filaments of the several lamps. They also determined the amount of sag in defendants' filaments after burning for a period of time. There is little disagreement between them as to the facts developed by their experiments.
As to grain size and contour the photomicrographs are relied upon. There is some validity to Dr. Curtis' criticism of the accuracy of such photographs in that they show only one plane in cross section. However, it is reasonable to assume that the grain contour shown as irregular in several cross-sections of the same wire would show the same lack of pattern in its other aspects. In absence of any showing to the contrary, this presumption will be considered as establishing the fact.
All of the alleged infringing filaments were shown to be composed of substantially pure tungsten, in no instance containing more than three-fourths of one per cent. of nonmetallic material.
The grain structure as shown by the photomicrographs is distinguished by large grains of at least sufficient size to extend across the diameter of the wire. The grain boundaries are uneven and in no instance are perpendicular planes of cleavage so disposed as to encourage offsetting.
The experiments of MacKeown and Curtis, which consisted of observing the behavior of the filaments of defendants' lamps under conditions of use, established their functional characteristics. No offsetting was observed. A study of the shadowgraphs taken before and after burning develops that in almost every filament a measurable degree of sagging occurs. The degree of sag is extremely small when compared with sag which develops in the thoriated filament of the prior art. The patentee claims the prevention of "substantial" sagging. The defendants' filaments function within the intended and legal scope of the patent.
All of the alleged infringing filaments are of the drawn type. They function within the intendments of the patent through a normal or commercially useful life. It does not appear that the phrase, "commercially useful life," needs further definition. The use of the Pacz filament does not shorten the life of the lamp in comparison with lamps made of other filaments of the same wattage. No other known qualities have been sacrificed to obtain the results of the patent. The defendants have obtained such good practical results that they have found ready markets for their products.
The conclusion is reached that the defendants, and each of them, have infringed the letters patent in suit by selling lamps containing filaments of the type here in issue.
Conclusions.
(1) That these actions arise under the patent laws of the United States and that this court has jurisdiction thereof.
(2) That title to the letters patent, No. 1,410,499, is vested in the plaintiff.
(3) That said letters patent and claims 25, 26, and 27 thereof are good and valid in law.
(4) That the defendant T. Anraku has infringed the letters patent and claims 25, 26, and 27 thereof by selling within this district incandescent electric lamps herein found to embody the invention of the patent.
(5) That the defendant International Lamp Company has infringed the said letters patent and claims 25, 26, and 27 thereof, by selling within this district incandescent electric lamps herein found to embody the invention of the patent.
(6) That the defendants Pacific Importing Company, T. Yokota, T.S. Saito, and M. Takebayashi have infringed the said letters patent and claims 25, 26, and 27 thereof, by selling within this district incandescent electric lamps herein found to embody the invention of the patent.
Recommendation.
That decrees be entered in conformity with this report directing accountings of profits and damages and that injunctions issue restraining the defendants from further infringing acts.
This report in the form of a draft was submitted to counsel. Defendants excepted to unfavorable findings and conclusions in the draft report. The master has overruled these exceptions and is filing the report as drafted except for minor corrections and additions.
Plaintiff has requested that the conclusions on the issues of infringement be amended to identify the lamps by the trademarks which appear upon many of the lamps in evidence. The markings do not correspond to any distinct variations in the filamentary elements. The issues on infringement are concerned only with the filaments of the lamps. It would add nothing to include the markings as descriptive matter in the conclusions nor aid in settling the terms of the decree or injunction.
Respectfully submitted, David B. Head.
Upon consideration of the special master's report and exceptions and objections thereto, as well as briefs of solicitors, no sufficient reason is shown to justify rejection of the findings, conclusions, and recommendations of the special master. Accordingly, all exceptions are disallowed and overruled, and the report of Special Master Head filed herein on November 22, 1934, is adopted, approved, and confirmed, and a decree as recommended by said special master is ordered to be entered herein. Exceptions allowed all defendants to the aforesaid order, and to the decree hereby directed, when said decree is entered herein.