Bellows-Claude Neon Co. v. Sun Ray Gas

Full title: BELLOWS-CLAUDE NEON CO. et al. v. SUN RAY GAS CORPORATION et al

Court: United States District Court, N.D. Ohio, E.D

Date published: Sep 26, 1929

39 F.2d 907 (N.D. Ohio 1929)

Opinion

No. 2382.

September 26, 1929.

Smith Freeman, of Cleveland, Ohio (William Bohleber, of New York City, Harold Elno Smith and William L. Day, both of Cleveland, Ohio, and Edwin J. Prindle, of New York City, of counsel), for plaintiffs.

Kwis, Hudson Kent, of Cleveland, Ohio (Lloyd L. Evans and A.J. Hudson, both of Cleveland, Ohio, and George F. Scull, of New York City, of counsel), for defendants.

In Equity. Action by the Bellows-Claude Neon Company and another against the Sun Ray Gas Corporation and others. Judgment for plaintiffs.

The report of Ben H. Davis, special master, follows:

To the Honorable Judges of the District Court of the United States for the Northern District of Ohio, Eastern Division:

Pursuant to an order of this court this cause was referred to the undersigned, special master in chancery (1) To take and hear the evidence offered by the respective parties; (2) to make his conclusions as to the facts in issue; (3) to recommend the judgment to be entered thereon.

The special master herewith submits his report.

At the time this case was commenced, the original plaintiff was the Bellows Corporation. Its name has been changed according to law to the Bellows Claude Neon Company, and it is one of twenty-three licensees of Claude Neon Lights, Inc., the license agreement covering the states of Ohio, Indiana, and Michigan.

By an amended bill filed March 2, 1929, Claude Neon Lights, Inc., became a coplaintiff in this action.

By stipulation of counsel, the case went to trial on the amended bill and the answer theretofore filed; same being treated as filed in answer to the amended bill. A pending motion by the defendant was dismissed, and the defendants reserved the right to file an amended answer.

The testimony was taken in shorthand by Henry Gabriel and John Krause, and by them transcribed into one volume.

Counsel for plaintiffs were Bohleber and Ledbetter, of New York, Smith Freeman, of Cleveland, and Hon. William L. Day, of Cleveland.

Counsel for defendants were George Francis Scull, of New York, Kwis, Hudson Kent, of Cleveland, and Evans McCoy, of Cleveland.

This action is on the equity side of the court for the infringement of letters patent No. 1,125,476, together with a prayer for injunction and accounting of profits and damages.

Plaintiffs rely on claim 1 of patent No. 1,125,476, which is as follows:

"1. A luminescent tube containing previously purified neon and provided with internal electrodes for illuminating said gas, said electrodes being deprived of occluded gasses and having an area exceeding 1.5 square decimeters per ampere, to decrease the vaporization of the electrodes and prevent the consequent formation upon the wall of the tube, in proximity to said electrodes, of deposits containing said gas, whereby the luminosity of the tube is maintained constant for a very considerable period of time without a fresh introduction of gas."

All the defendants rely on two defenses: (a) Non-infringement; (b) invalidity of patent No. 1,125,476.

CHRONOLOGY.

1915-1/19 Original patent No. 1,125,476 issued to Georges Claude, a French inventor. 1924-3/21 Claude Neon Lights, Inc., was formed as a New York corporation. 1924-4/1 Georges Claude assigned patent No. 1,125,476 to Claude Neon Lights, Inc., which assignment was duly recorded in the United States Patent Office. 1924 During this year, starting about the month of May, Claude Neon Lights, Inc., went into production. The first year's business was about $190,000. The business had a phenomenal increase from that time on, more than doubling each year, with approximately $19,000,000 of business done in 1928. This was done on a stock structure of $50,000 preferred stock, $100,000 no par common stock. The stock has recently been increased, and the company has issued about twenty licenses under patent No. 1,125,476 covering most of the United States. 926-6/28 The Bellows Corporation, as the plaintiff was then known, acquired a license from Claude Neon Lights, Inc., for the states of Michigan, Ohio, and Indiana to use the patent referred to and others. 1927-1/24 Sun Ray Gas Corporation was formed under the laws of the state of Nevada. 1927-June Sun Ray Gas Corporation acquired space at 2021-25 Prospect Avenue, Cleveland, Ohio, and commenced business. 1927-9/12 Suit was filed in the United States District Court at Cleveland, Ohio, by the Bellows Corporation in equity for infringement of letters patent No. 1,125,476, together with a prayer for injunction accounting of profits, and damages. 1928-12/12 Case ordered referred to special master. 1929-3/4 Trial commenced and continued from day to day. 3/30 Trial concluded and both parties rest their case. 4/9 Amended answer filed. 4/10 Plaintiffs' opening brief filled. 4/11 Defendants' opening brief filed. 4/29 Plaintiffs' reply brief filed. 4/29 Defendants' reply brief filed. 5/9 Case argued before special master. 5/9 Memorandum brief filed by plaintiffs. 5/15 Memorandum brief filed by defendants.

Neon Gas and Its Uses.

About 1898 two English scientists, named Ramsey and Travers, discovered a new rare gas, called neon. This gas is also referred to as being an inert, inactive, monatomic gas, being in the same classification with helium, argon, krypton and xenon.

Neon is a by-product, obtained, in the manufacture of liquid air, and can now be purchased as a commercial product in the open market.

It is an exceedingly sensitive gas, its color being masked by a very small amount of gaseous impurity, such as oxygen, hydrogen, nitrogen, carbon monoxide, and carbon dioxide.

The characteristic color of pure neon, contained in a properly constructed glass tube, and when excited by the passage of an electric current through the gas, is a brilliant orange red. The glass tubes containing neon may, of course, be bent in any desired form to construct signs of words or designs, which, when lighted, form a very attractive advertisement.

It is worthy of comment that, although the original patent was issued in 1915, little or nothing seems to have been done with it until over nine years later, when its possibilities in connection with advertising were realized, resulting in the formation of the Claude Neon Lights, Inc., with a widespread commercial success.

That this form of advertising has met with widespread success, it is only necessary to mention the increase in business from $190,000, done in 1924, to $19,000,000, done in 1928, together with the great amount of litigation which has arisen in connection with this patent, resulting in some twenty or twenty-five lawsuits.

The commercial advantages of neon signs are variously: (a) Attractiveness; (b) visibility; (c) safety in handling; (d) efficiency.

By reason of its visibility in adverse weather conditions, such as fogs, neon light has been used in connection with aeroplane landing fields, and was in use at the landing field in Paris, France, where Lindbergh landed.

Compared to the average lifetime of 1,000 hours for the ordinary incandescent bulb used in electric lighting, neon lights have a lifetime of from 10,000 to 20,000 hours.

Two of the suits brought by Claude Neon Lights, Inc., or by one of its licensees; have been contested, the others resulting in default decrees.

One of the two contested cases is the Machlett Case ( 27 F.2d 702) arising in New York and cited later, while the other case arose on the Pacific Coast, style of the case being Electrical Products Corporation v. Neale, Southern District of California.

There will be found, among the exhibits in this case, a well-considered opinion of the special master to whom this case was referred.¹

1 Hearings on exceptions to report pending.

In another case arising in the Southern District of California, Electrical Products Corporation v. General Sign Company, J.J. Madine et al.² an injunction was issued, and this case will be commented upon later in connection with the liability of defendant J.J. Madine in this action.

2 No opinion filed.

In none of these cases was the cap type electrode manufactured and sold by defendant Sun Ray Gas Corporation involved, so that as to this type of electrode the question of infringement is first presented.

Since this case was filed, the Circuit Court of Appeals for the Second Circuit, in the case of Claude Neon Lights, Inc., v. E. Machlett Son, 27 F.2d 702, passed on this patent, and, as to claim 1, held it valid as a combination patent.

The Supreme Court of the United States denied a motion for certiorari on October 22, 1928 ( 278 U.S. 634, 49 S. Ct. 32, 73 L. Ed. 551).

This decision seems to the master to remove from his consideration the defense of invalidity of claim 1 of the patent, and to leave the defendants their asserted defense of noninfringement.

No new facts were presented of such a character that it might fairly be supposed would have led the Court of Appeals of the Second Circuit to reach a different conclusion with reference to claim 1 as above.

In view of the foregoing, the master considers that three questions are presented for his determination.

I. Does the admitted manufacture and sale by defendant of the "Dry-O-Let" sign (Plaintiffs' Exhibit 45 A-B) constitute an infringement of claim one of plaintiffs' patent No. 1,125,476?

II. Are defendants E.S. Woolrich and J.B. Mitchell, officers of Sun Ray Gas Corporation, liable to plaintiffs?

III. Is defendant John J. Madine a workman employed by the defendant corporation liable to plaintiffs?

I.

All gaseous conductor tubes belong to a classification known as "Geissler" tubes, and prior to Claude's patent no gaseous conductor tube employed for advertising or commercial purposes had been developed, although there was a gaseous conductor tube known as "Moore light," which was used in one or two instances.

The Moore light contained an active gas as distinguished from neon, and this gas had to be replenished frequently through a breather valve. It proved impracticable, because of its size, difficulty in connection with manufacture, and handling, and became obsolete.

Plaintiffs made and leased, as distinguished from the outright sale plan of Sun Ray Gas Corporation, its gaseous conductor tubes made of glass bent to any desired design or words used in advertising.

At each end of the tube there was placed within the tube a device known as an electrode, which was variously composed of carbon, iron, copper, aluminum, etc. These electrodes were separated from the glass walls of the tube by two collars of glass beads.

Wires of a material called "Dumet," having the same coefficiency of expansion as glass, are attached to the electrodes at either end, and pass out through the ends of the tube, which are sealed tight.

The main portion of the tube is slightly smaller than the ends containing the electrodes, and is so designed that it may be filled with neon gas.

Upon first being assembled, both the glass tube and the electrodes contain impurities known as "Occluded gases," which must first be removed prior to use; otherwise the neon gas would be affected and weakened and its color masked.

Depending upon their location, these gases are referred to as absorbed or adsorbed gases; the first being contained within the glass tube or the electrodes, and the second those clinging to the surfaces of the metal.

Usually these gases are removed from the glass tube and the electrodes by heating, their removal being a question of temperature and time, the usual temperature used by the plaintiffs being about 300° Centigrade, this being in accord with a high factor of safety maintained by plaintiff. It might under certain conditions reach 900° Centigrade.

In the course of the development of his patent, Claude found four methods of removing these impurities from the tube: (1) Pumping; (2) scavenging; (3) alkali purging; (4) aging.

Briefly described, scavenging is the washing out of impurities by successive charges of neon gas and the application of electrical discharge to the tube, with the result that the final charge of neon gas shows the desired color.

The alkali purging method consisted of neutralizing the impurities in the tube by the use of an alkali vapor having an affinity for these impurities followed by the final introduction of neon gas of the purity desired.

The aging process was the continued passage of electrical discharge through neon gas in a sealed tube which has been placed on a rack and allowed to remain there until the impurities have become pocketed and disappeared and the tube shows the desired color.

Plaintiffs' standard method of manufacture is substantially as follows:

A tube of lead glass is bent to a desired design with an electrode sealed in each end, to which are attached the leading-in wires previously mentioned. A piece of glass tubing is attached or tubulated to permit the pumping out of gas and the injection of neon. By means of a pump, the tube is exhausted and filled with neon. The pumping usually consists of a mechanical oil pump backing up a mercury condensation pump, which, by means of valves, create a high vacuum in the tube. Neon gas is passed through a U-shaped tube containing cocoanut charcoal. In one pump is a U-shaped tube immersed in liquid air. Inside the U-shaped tube is what is called a liquid air trap designed to prevent mercury from the mercury condensation pump from getting into the system. The tube is heated by passing a high voltage current of electricity through the tube with low pressure air in the tube. Heat is created in the tube by the low pressure air, whereby the glass walls and electrodes are deprived of occluded gases. These impurities are pumped out, and the tube is heated two or three times with an average of about twelve minutes per tube, irrespective of aging time, which may be from two minutes to half an hour, after which the tube is of the desired color and may be sealed off ready for use.

The life of the tube depends upon the phenomenon known as "sputtering." The passage of the electric discharge through the tube causes the breaking off of ions from the electrodes, which fly back and forth in the tube, and gradually there develops a film or deposit on the walls of the tube seen in greatest quantity adjacent to the electrodes composed of a combination of the ions and neon gas which has thus been pocketed or plated out. This process continues until the tube has been reduced to a point of nonconduction, and its usefulness ends.

The master has reached the conclusion that the Sun Ray Gas Corporation infringed claim one of plaintiffs' patent No. 1,125,476 by the manufacture and sale of the Dry-O-Let sign, Plaintiffs' Exhibit 45 A-B, and bases his conclusion on the testimony of plaintiffs' witnesses Schwartz and Beck. Their testimony was that this structure combined the three elements called for in claim 1 of the patent (1) purified neon, (2) electrodes deprived of their occluded gases, (3) electrodes having a surface area in excess of 1.5 square decimeters per ampere to decrease vaporization, and was clear and convincing the testimony of defendant's expert denying the infringement was weakened in its effect by his tendency to qualify his answers.

Schwartz readily distinguished defendant's electrode in several ways from the so-called external electrode which surrounds the glass wall on the outside, which is insulated from the gas by the glass walls, and which is used with high frequency currents of 750,000 to 1,000,000 cycles per second as compared with the commercial frequency of 60 cycles used in the tubes of plaintiff and defendant.

Counsel for defendant urge that its type of electrode is different, that its method of forming tubes is different, and that there is indefiniteness and want of invention in plaintiffs' patent.

It was stipulated that defendant's standard process was used in the formation of its tube, Exhibit J, for which an elapsed time of about 8½ minutes was required. No neon or other gas was used as a wash. This tube was sealed on to the tube leading from the station manifold by hand fire, and the process of exhausting the tube was commenced. Leads from the volume transformer were attached to the electrodes, and the current of about 100 mills was cautiously raised and lowered. During the bombardment, the neon gas and the charcoal trap used in connection with the system were shut off from the rest of the system by two stopcocks.

With the passage of the current, impurities appeared in the tube, and their volatilization increased the pressure. The air and impurities were removed, and a high vacuum reached. The electrodes reached a temperature estimated by defendant's expert to be 200° Centigrade.

The tube having been deprived of these impurities, commercially pure neon gas was admitted to the tube to a pressure estimated by the expert as 7.3 MM. With the normal operating current, the true neon color appeared, and the tube was sealed off.

It is defendant's contention that there is no scavenging, no absorption of impurities in the neon in the tube into a carbon liquid air receptacle, no aging, and that the neon receives no treatment in the tube itself, nor any treatment in connection with the cleaning of the tube.

On the other hand, defendant's expert concedes the use of commercially pure neon, admits that, unless the tube and the electrodes were first deprived of their occluded gases, the true neon color would not appear, and concedes that Plaintiffs' Exhibit 45 A-B was put out in a pure condition with the electrodes deprived of occluded gases.

The Court of Appeals of the Second Circuit took the view that Claude could not be held to have intended to restrict neon to that which had been purified by a particular method, and his claims do not specify a particular method of purification. Plaintiffs' expert says that neon is purified if the purification has been accomplished previous to the regular use of the normal commercial use of the tube, regardless of how its purity was obtained.

The master in the case of Electrical Products Co. v. Neal, in California, defined previously purified neon as "Neon in a completed tube, ready for use, regardless of how its purity was obtained."

The fact that defendant's electrode is of a different geometrical shape than that of plaintiffs does not in the opinion of the master alter the situation, in view of the evidence of plaintiffs to the effect that the inside of the cap electrode functions as an internal electrode, operating in the same way and producing the same result as plaintiff's type.

The master cannot agree with their contentions for additional reasons. The Sun Ray Gas Corporation came into existence in January, 1927, long after the plaintiff company was in the field with its product. There is no doubt that the formation of the defendant company for the various purposes stated in its charter was entirely legal, as was its entrance for business into the state of Ohio.

It started to make and sell its cap type of electrode, which may be briefly described as a metal electrode in the shape of a cap made of copper or a composition of metal in which copper is used in large proportions. The cap type of electrode was sealed onto the glass tube at either end in such a way that the inner edge of the electrode was covered by the glass, but the inside of the electrode is in direct contact with the gas in the tube and the electrode fitted into a spring socket connected with the electric circuit.

It has two advantages over the Claude type of electrode, which are readily conceded by plaintiff as follows: (1) Conductivity of heat by convexion and conduction; (2) the fact that the inner edge of the electrode is sealed into the glass.

The electrode is more particularly described in the application for patent No. 166,857, made by defendant John J. Madine, and assigned by him to the Sun Ray Gas Corporation, Exhibit No. 23.

Previous to this assignment, Madine had made another assignment of his interest in the same application to a company on the West coast, the two assignees are now in dispute, and no patent has as yet been issued.

Sun Ray Gas Corporation knew of plaintiffs' product, its commercial success, the fact that it was being imitated, and was well aware that plaintiff was vigilant in protecting its rights by pending litigation.

In short, defendant chose to enter a field of competition where the plaintiff had made a noteworthy contribution to the industry or art of advertising by solving one of its problems in a new and original way, which had gone into general use with what might be termed phenomenal commercial success, followed by wide imitation, and in which plaintiff under its patent was entitled to a proportionately greater degree of liberality and a wider range of equivalency in the construction of its claims, nor does the hiring by defendant of its codefendant Madine, already under injunction in the United States District Court in California in connection with one of plaintiffs' patents, tend to improve its position in the view the master takes of the situation.

II. The Status of Defendants E.S. Woolrich and J.B. Mitchell.

Plaintiffs urge that these two defendants are individually liable, as the result of a conspiracy in which they participated, and that the Sun Ray Gas Corporation was organized merely as a subterfuge to enable these defendants to do indirectly what they could not do directly.

In the opinion of the master, no conspiracy has been proved against these defendants. So far as the records show, the Sun Ray Gas Corporation was regularly organized under the laws of Nevada for the various purposes set out in its charter, and it has complied with the laws of the state of Ohio as to doing business here.

The record shows that Woolrich and Mitchell were elected as officers of the company, and the fact that at the first meeting of its stockholders a proxy was held by Woolrich from another stockholder does not sustain plaintiff's contention of conspiracy. Woolrich and Mitchell do not now hold a majority of the stock of the defendant company, which at the present time has a number of stockholders, strangers to this action, except for the interest represented by their various shares of stock.

Neither does the record show individual acts of these defendants, resulting in damage to plaintiff, which can be said to be beyond the scope of their official duties as officers of the defendant corporation, so that they might be held as "active participants" within the rule of Western Electric Company v. North Electric Company (C.C.A.) 135 F. 79. In fact, plaintiffs' own witness, Dallons, says that he dealt with these defendants as officers of Sun Ray Gas Corporation believing them to be officers of the defendant company.

III. The Status of Defendant John J. Madine.

The position of this defendant is somewhat different then that of defendants Woolrich and Mitchell, by reason of the fact that Madine, as far back as 1926, was engaged in the Neon lighting industry, and was made a defendant in the United States court in the Southern district of California by a licensee of Claude Neon Lights, Inc., in the case of Electrical Products Corporation v. General Sign Company, John J. Madine, et al. which involved plaintiffs' patent in suit here.

An injunction was entered against Madine, which he did not carry to a final conclusion, although it must be said that the Claude type of electrode and not the present type was there involved.

However, Madine was ready to make and did make, in the early part of 1927, an application for the patent on the cap type of electrode previously described, and did make the two assignments of his interest therein previously mentioned.

Under a merely verbal contract of hire with defendant Sun Ray Gas Corporation, known to him to be a newly formed company, he came from Los Angeles to Cleveland to take charge of the pumps, tubes, and glass work in connection with the manufacture of neon signs for Sun Ray Gas Corporation.

He testifies positively that he had no authority to hire or fire employés, and that his duties were to see that the work of the company in connection with its pumps, tubes, and glass work was properly done, and his direct examination in his own behalf was exceedingly brief.

To sustain its contentions with reference to this defendant, plaintiff introduced the evidence of Oscar Dallons. The affidavit of Rex Kennedy, filed by plaintiff prior to the trial, had some bearing on the status of this defendant, and was stipulated in the records as his testimony.

Both are wanting in specific instances of infringement, and Dallons further admitted on cross-examination that he knew that Madine was not an officer of the company.

However easy it may be to draw inferences unfavorable to Madine, in view of the foregoing, and the master has little doubt but that this defendant was not the innocent workman he is held out to be, his status must be decided in accordance with the evidence, and it only remains to say that plaintiff did not, in the opinion of the master, make proof against him to the degree required, and for that reason only the master finds in his favor.

Conclusions.

1. Holding these views, the master finds:

(1) That title to letters patent No. 1,125,476 is in Claude Neon Lights, Inc.

(2) The Bellows-Claude-Neon Company is the licensee of Claude Neon Lights, Inc., for the exclusive right of manufacture, use, and sale under said patent in the states of Ohio, Indiana, and Michigan.

(3) Letters patent No. 1,125,476, are good and valid in law as to claim 1 thereof.

(4) That Plaintiffs' Exhibit 45 A-B was manufactured and sold by defendant Sun Ray Gas Corporation and infringes claim 1 of letters patent No. 1,125,476.

(5) That defendants E.S. Woolrich and J.B. Mitchell were directors and officers of the defendant company, but are not liable individually to plaintiffs for the infringing acts of Sun Ray Gas Corporation.

(6) That defendant, John J. Madine, is not liable individually to plaintiffs for the infringing acts of defendant Sun Ray Gas Corporation.

Recommendations.

(1) That a decree be entered in conformity with this report, and an injunction issue restraining the defendant Sun Ray Gas Corporation from acts infringing claim 1 of plaintiffs' letters patent No. 1,125,476.

(2) That an order be entered as against defendant Sun Ray Gas Corporation, directing an accounting of profits and damages.

(3) That the motion for dismissal of the case as to individual defendants Woolrich, Mitchell, and Madine, made at the close of plaintiffs' case and renewed at the close of all the evidence in the case, be granted.

NOTE. — On June 15, 1929 a draft report was submitted by the master to counsel for plaintiffs and defendants.

The master is indebted to counsel for suggestions made by them in the interest of clarity, although no changes were made in the findings.

All pleadings and briefs in the possession of the master are herewith returned to the court.

The manufactured exhibits, such as tubes and electrodes, remain by agreement in the possession of the parties introducing them.

All other exhibits are herewith returned to the court.

JONES, District Judge.

This is a suit for infringement of Claude patent 1,125,476, dated January 19, 1915, calling for a system of illuminating by luminescent tubes, the effective date of the invention of which being November 28, 1910, when the corresponding French patent 434,525, was filed. Invalidity and noninfringement are interposed as defenses. Injunction and accounting are prayed for. Exceptional conditions requiring it, the case was referred to a master for full hearing upon all issues. The matter is now before the court upon exceptions of both parties to the report of the master finding the patent valid and infringed, but dismissing the bill as to individual defendants.

The validity of claim 1 of the patent upon which the plaintiffs rely has heretofore been upheld by the Circuit Court of Appeals for the Second Circuit in Claude Neon Lights v. Machlett, 27 F.2d 702, certiorari denied by the Supreme Court October 22d 1928, 278 U.S. 634, 49 S. Ct. 32, 73 L. Ed. 551. Infringement also was found under a motion for preliminary injunction in the District Court for the Southern District of California; final default decree being entered therein. [No opinion filed.]

The defendants complain that the master accepted the adjudication on the validity of the patent in the Machlett Case as binding, and failed to give the issue of validity the benefit of original consideration independent of that appellate court's judgment. In the interest of uniformity of ruling, termination of litigation, and security of the inventor in his patent, the adjudication by an appellate court should be given controlling weight unless there is clear conviction of plain error in law or fact. Mast, Foos Co. v. Stover Manufacturing Co., 177 U.S. 485, 488, 489, 20 S. Ct. 708, 44 L. Ed. 856; Penfield et al. v. Potts Co. (C.C.A.) 126 F. 475, 478. It is not enough to urge added reasons for invalidity of the patent which were not presented to the superior court. There must be new facts, substantially different. Badische Anilin Soda Fabrik v. Klipstein Co. (C.C.) 125 F. 543, 546. So also is the principle applied as to such prior decisions on the issue of infringement, where the device, structure, or process cannot be substantially distinguished. Cincinnati Butchers' Supply Co. v. Walker Bin Co. (C.C.A.) 230 F. 453, 454. It is true in the latter case, and in Penfield et al. v. Potts Co., supra, our Circuit Court of Appeals was speaking with relation to its own decisions on the same subjects; but I see no reason why the principle should not be extended to the decisions of outside courts, and upon the same considerations. Vacuum Cleaner Co. v. Thompson Manufacturing Co. (D.C.) 258 F. 239.

It may be doubted that the decision of the District Court for the Southern District of California is entitled to the controlling weight which it otherwise might have had if the decision had been made upon full and final hearing, rather than upon the motion for preliminary injunction. Meurer Steel Barrel Co., Inc. v. Draper Manufacturing Co. (D.C.) 260 F. 410. If there is here presented new evidence not before the appellate court for the Second circuit which presumably would have required a different ruling, such decision would lose much of its controlling effect. Conley v. Thomas (D.C.) 204 F. 93, 94.

The master found that no new facts were presented here on the question of validity which presumably would have led the appellate court of the Second circuit to reach a different conclusion. With this finding I agree. The argument of the defendants upon that question is largely an attempt to narrowly construe the scope given the patent under the language of the Circuit Court of Appeals decision. Regardless of the exact time when, or the process by which, the neon gas must be purified, the patentee's method of lighting requires that the impurities be eliminated before the tube is put in use. It is manifest from a reading of the opinion in the Machlett Case that the appellate court gave adequate and complete consideration of the claim here involved, and no useful purpose will be served by again covering the field.

Claim 1 of the patent here in issue reads as follows:

"A luminescent tube containing previously purified neon, and provided with internal electrodes for illuminating said gas, said electrodes being deprived of occluded gases and having an area exceeding 1.5 square decimeters per ampere, to decrease the vaporization of the electrodes and prevent the consequent formation upon the walls of the tube, in proximity to said electrodes, of deposits containing said gas, whereby the luminosity of the tube is maintained constant for a very considerable period of time without a fresh introduction of gas."

Simply described, the plaintiffs' system consists of a glass tube of desired length, filled with purified neon gas, which is excited to a glow by the passing of electric current introduced through wires attached to electrodes at each end of the tube and hermetically sealed therein. Alternating or direct current is applicable, although alternating current is recognized to be more practical and probably more economical. It involves also the use of a transformer to step up the voltage necessary to overcome the resistance to the electric current in the electrode and in the gas.

The means and method employed in the production of the plaintiffs' light are fully stated by Manton, Circuit Judge, in delivering the opinion of the appellate court, and the master has in his report described the elements and process of the patent. In the Machlett Case the Circuit Court of Appeals found infringement of claim 1 of the patent in a device different in character than this defendants' manufacture. The claimed infringement here relates to a cap type electrode manufactured and sold by the Sun Ray Gas Corporation in its Dry-O-Let sign. The master found that the inside of the cap electrode functions as an internal electrode operating in the same way and producing the same result as the plaintiffs', although having some conceded advantages. The defendants, however, contend that they do not rely upon a nominal distinction between internal and external electrodes, but assert a difference in function and mode of operating between its cap type and Claude's electrodes, such as shape and reduction of sputtering; the metal walls bathed in atmospheric air and in contact with metal conductors, permitting the ready passing of heat and retention of coolness in the electrode — all of which permit the defendants' light to operate with a ratio of area to current of 1.3 or 1.25, which is below the necessary limit fixed by Claude. But these claimed functional differences will not avoid infringement if they are merely improvements on what is disclosed by Claude. General Electric Co. v. Laco-Philips Co. (C.C.A.) 233 F. 96, 105; Procter Gamble Co. v. Berlin Mills Co. (C.C.A.) 256 F. 23; Palmer v. E.Z. Waist Co. (D.C.) 278 F. 530. The evidence discloses that, regardless of means employed, the defendants' tube contains pure neon gas, and the electrodes therein are deprived of occluded gases. The use of these elements and processes were held to be infringement in the Machlett Case. See page 705 of the opinion.

Other claimed departures or advantages in the defendants' tube do not bring them without the range of equivalents to which Claude is entitled under his patent. A mounting of the defendants' electrode on the outside of the tube is merely a method of applying the cap type electrode, and does not alter its ultimate function. It seems reasonable to conclude from the evidence on the subject that an internal electrode is one which is in direct contact with the gas in the tube. The defendants' electrode has the same function, although the glass of the tube is not carried around the electrode, but is sealed to the electrode which forms the closing end of the tube. Nor do I think the reduction of sputtering and the operation in an electrode area less than Claude's minimum constitute an accomplishment not thought of by Claude, nor by others previously concerned with the action and relation of electrode and current as affecting the final operation of the light.

Claude was a pioneer in combining known forces and processes for the production of a new and useful kind of lighting. It is often easy to minimize originality when a new idea combines and adapts what has heretofore been known to the production of a desirable and valuable article, device, or process. As such inventor, Claude is entitled to a wide range of equivalents, and certainly sufficiently broad to cover what, after clearing away the technical phraseology, is no more than a departure or improvement of no substantial distinction. I think the defendants have overemphasized the distinguishing features of their tube as to the function of its metal cap type and external electrode. The function and result is the same as Claude's, although thought to be an improvement or advantage. The same purpose is effected by substantially the same method. The plaintiff was long in the field of practice and manufacture before the defendant came into existence, and has enjoyed a commercial success under the patent which cannot be doubted. Widespread imitation has resulted, which reflects the great tribute paid to an original and noteworthy contribution to an art alert for attractive and serviceable novelty.

The defendant was organized in January, 1927, under Nevada laws, for the manufacture of illuminated gas tube signs, and the defendants Woolrich and Mitchell were made directors. Under authority of the board of directors, those two began operations in Cleveland. The defendant Madine appears not to have had any official title, but was employed ostensibly to take charge of pumps, tubes, and glass work in connection with the manufacture of signs for the defendant. Madine had been made a defendant in the Southern district of California infringement suit, and as such was under injunction as to the Claude type electrode. He also had made application for patent on a method of attaching a cup-shaped electrode, in the early part of 1927, the assignment of which was made to the Sun Ray Gas Corporation, defendant.

The master concluded that the evidence failed to establish the individual liability of these defendants, although their acts border upon personal participation in infringement. The master's ruling may be justified as to Madine on the ground that the infringement here is not as to the tube manufactured in the California case, wherein Madine was enjoined, otherwise he might be subject to penalty and damages. If it appeared in the evidence that these individuals personally participated and profited by the infringing acts, either directly or indirectly, or had organized the corporation as a cloak for their own protection, I have no doubt that they might be subjected to a charge for damages; but the master found insufficient evidence upon which to so hold them. I see no reason, however, why they should not be enjoined as individuals for the better protection of the patent against future infringement. Their relation and acts under corporate authority are of such a character as to justify injunctive relief against them, though no accounting for damages will be ordered.

In other respects, the findings and report of the master will be confirmed, and a decree may be entered accordingly.