With the exception of the third claim,
viz., for "the
incandescing conductor for an electric lamp, formed of carbonized
paper, substantially as described," the claims in the letters
patent No. 317,076, issued May 12, 1880, to the Electro-Dynamic
Light Company, assignee of Sawyer and Man, for an electric light,
are too indefinite to be the subject of a valid monopoly.
This was a bill in equity, filed by the Consolidated Electric
Light Company against the McKeesport Light Company, to recover
damages for the infringement of letters patent No. 317,076, issued
May 12, 1885, to the Electro-Dynamic Light Company, assignee of
Sawyer and Man, for an electric light. The defendants justified
under certain patents to Thomas A. Edison, particularly No.
223,898, issued January 27, 1880; denied the novelty and utility of
the complainant's patent, and averred that the same had been
fraudulently and illegally procured. The real defendant was the
Edison Electric Light Company, and the case involved a contest
between what are known as the Sawyer and Man and the Edison systems
of electric lighting.
Page 159 U. S. 466
In their application, Sawyer and Man stated that their invention
related to
"that class of electric lamps employing an incandescent
conductor enclosed in a transparent, hermetically sealed vessel or
chamber from which oxygen is excluded, and . . . more especially to
the incandescing conductor, its substance, its form, and its
combination with the other elements composing the lamp. Its object
is to secure a cheap and effective apparatus, and our improvement
consists first, of the combination, in a lamp chamber composed
wholly of glass, as described in patent No. 205, 144,"
upon which this patent was declared to be an improvement,
"of an incandescing conductor of carbon made from a vegetable
fibrous material, in contradistinction to a similar conductor made
from mineral or gas carbon, and also in the form of such conductor
so made from such vegetable carbon, and combined in the lighting
circuit with the exhausted chamber of the lamp."
The following drawings exhibit the substance of the
invention:
Image a:
Page 159 U. S. 467
The specification further stated that:
"In the practice of our invention, we have made use of
carbonized paper, and also wood carbon. We have also used such
conductors or burners of various shapes, such as pieces with their
lower ends secured to their respective supports, and having their
upper ends united so as to form an inverted V-shaped burner. We
have also used conductors of varying contours -- that is, with
rectangular bends instead of curvilinear ones; but we prefer the
arch shape."
"No especial description of making the illuminating carbon
conductors, described in this specification, and making the subject
matter of this improvement, is thought necessary, as any of the
ordinary methods of forming the material to be carbonized to the
desired shape and size, and carbonizing it while confined in
retorts in powdered carbon, substantially according to the methods
in practice before the date of this improvement, may be adopted in
the practice thereof by anyone skilled in the arts appertaining to
the making of carbons for electric lighting or for other use in the
arts."
"An important practical advantage which is secured by the arch
form of incandescing carbon is that it permits the carbon to expand
and contract under the varying temperatures to which it is
subjected when the electric current is turned on or off without
altering the position of its fixed terminals. Thus, the necessity
for a special mechanical device to compensate for the expansion and
contraction which has heretofore been necessary is entirely
dispensed with, and thus the lamp is materially simplified in its
construction. Another advantage of the arch form is that the shadow
cast by such burners is less than that produced by other forms of
burners when fitted with the necessary devices to support
them."
"Another important advantage resulting from our construction of
the lamp results from the fact that the wall forming the chamber of
the lamp through which the electrodes pass to the interior of the
lamp is made wholly of glass, by which all danger of oxidation,
leakage, or short-circuiting is avoided."
"The advantages resulting from the manufacture of the carbon
from vegetable fibrous or textile material instead of
Page 159 U. S. 468
mineral or gas carbon are many. Among them may be mentioned the
convenience afforded for cutting and making the conductor in the
desired form and size, the purity and equality of the carbon
obtained, its susceptibility to tempering, both as to hardness and
resistance, and its toughness and durability. We have used such
burners in closed or hermetically sealed transparent chambers, in a
vacuum, in nitrogen gas, and in hydrogen gas; but we have obtained
the best results in a vacuum or an attenuated atmosphere of
nitrogen gas, the great desideratum being to exclude oxygen or
other gases capable of combining with carbon at high temperatures
from the incandescing chamber, as is well understood."
The claims were as follows:
"1. An incandescing conductor for an electric lamp, of
carbonized fibrous or textile material, and of an arch or horseshoe
shape, substantially as hereinbefore set forth."
"2. The combination, substantially as hereinbefore set forth, of
an electric circuit and an incandescing conductor of carbonized
fibrous material, included in and forming part of said circuit, and
a transparent, hermetically sealed chamber, in which the conductor
is enclosed."
"3. The incandescing conductor for an electric lamp, formed of
carbonized paper, substantially as described."
"4. An incandescing electric lamp consists of the following
elements in combination: first, an illuminating chamber made wholly
of glass hermetically sealed and out of which all carbon-consuming
gas has been exhausted or driven; second, an electric circuit
conductor passing through the glass wall of said chamber and
hermetically sealed therein, as described; third, an illuminating
conductor in said circuit and forming part thereof within said
chamber, consisting of carbon made from a fibrous or textile
material having the form of an arch or loop, substantially as
described, for the purpose specified."
The commercial Edison lamp used by the appellee, and which is
illustrated below, is composed of a burner, A, made of carbonized
bamboo of a peculiar quality, discovered by Mr. Edison to be highly
useful for the purpose, and having a length of about six inches, a
diameter of about five one-thousandths
Page 159 U. S. 469
of an inch, and an electrical resistance of upward of 100 ohms.
This filament of carbon is bent into the form of a loop, and its
ends are secured by good electrical and mechanical connections to
two fine platinum wires, B, B. These wires pass through a glass
stem, C, the glass being melted and fused upon the platinum wires.
A glass globe, D, is fused to the glass stem, C. This glass globe
has originally attached to it at the point
d a glass tube
by means of which a connection is made with highly organized and
refined exhausting apparatus, which produces in the globe a high
vacuum, whereupon the glass tube is melted off by a flame, and the
globe is closed by the fusion of the glass at the point d.
Image b:
Upon a hearing in the circuit court before Mr. Justice Bradley
upon pleadings and proofs, the court held the patent to be invalid
and dismissed the bill. 40 F. 21. Thereupon complainant appealed to
this Court.
Page 159 U. S. 470
MR. JUSTICE BROWN, after stating the facts in the foregoing
language, delivered the opinion of the Court.
In order to obtain a complete understanding of the scope of the
Sawyer and Man patent, it is desirable to consider briefly the
state of the art at the time the application was originally made,
which was in January, 1880.
Two general forms of electric illumination had for many years
been the subject of experiments more or less successful, one of
which was known as the "arc light," produced by the passage of a
current of electricity between the points of two carbon pencils
placed end to end, and slightly separated from each other. In its
passage from one point to the other through the air, the electric
current took the form of an arc, and gave the name to the light.
This form of light had been produced by Sir Humphry Davy as early
as 1810, and, by successive improvements in the carbon pencils and
in their relative adjustment to each other, had come into general
use as a means of lighting streets, halls, and other large spaces;
but by reason of its intensity, the uncertain and flickering
character of the light, and the rapid consumption of the carbon
pencils, it was wholly unfitted for domestic use. The
second form of illumination is what is known as the
"incandescent system," and consists generally in the passage of a
current of electricity through a continuous strip or piece of
refractory material, which is a conductor of electricity, but a
poor conductor -- in other words, a conductor offering a
considerable resistance to the flow of the current through it. It
was discovered early in this century that various substances might
be heated to a white heat by passing a sufficiently strong current
of electricity
Page 159 U. S. 471
through them. The production of a light in this way does not in
any manner depend upon the consumption or wearing away of the
conductor, as it does in the arc light. The
third system
was a combination of the two others, but it never seems to have
come into general use, and is unimportant in giving a history of
the art.
For many years prior to 1880, experiments had been made by a
large number of persons in various countries with a view to the
production of an incandescent light which could be made available
for domestic purposes and could compete with gas in the matter of
expense. Owing party to a failure to find a proper material, which
should burn but not consume, partly to the difficulty of obtaining
a perfect vacuum in the globe in which the light was suspended, and
partly to a misapprehension of the true principle of incandescent
lighting, these experiments had not been attended with success,
although it had been demonstrated as early as 1845 that, whatever
material was used, the conductor must be enclosed in an air-tight
bulb to prevent it from being consumed by the oxygen in the
atmosphere. The chief difficulty was that the carbon burners were
subject to a rapid disintegration or evaporation, which
electricians assumed was due to the disrupting action of the
electric current, and hence the conclusion was reached that carbon
contained in itself the elements of its own destruction, and was
not a suitable material for the burner of an incandescent lamp.
It is admitted that the lamp described in the Sawyer and Man
patent is no longer in use, and was never a commercial success;
that it does not embody the principle of high resistance with a
small illuminating surface; that it does not have the filament
burner of the modern incandescent lamp; that the lamp chamber is
defective, and that the lamp manufactured by the complainant, and
put upon the market, is substantially the Edison lamp; but it is
said that in the conductor used by Edison (a particular part of the
stem of the bamboo, lying directly beneath the siliceous cuticle,
the peculiar fitness for which purpose was undoubtedly discovered
by him), he made use of a fibrous or textile material covered by
the patent to
Page 159 U. S. 472
Sawyer and Man, and is therefore an infringer. It was admitted,
however, that the third claim -- for a conductor of carbonized
paper -- was not infringed.
The two main defenses to this patent are (1) that it is
defective upon its face in attempting to monopolize the use of all
flbrous and textile materials for the purpose of electric
illuminations, and (2) that Sawyer and Man were not in fact the
first to discover that these were better adapted than mineral
carbons to such purposes.
Is the complainant entitled to a monopoly of all fibrous and
textile materials for incandescent conductors? If the patentees had
discovered in fibrous and textile substances a quality common to
them all, or to them generally, as distinguishing them from other
materials such as minerals, etc., and such quality or
characteristic adapted them peculiarly to incandescent conductors,
such claim might not be too broad. If, for instance, minerals or
porcelains had always been used for a particular purpose, and a
person should take out a patent for a similar article of wood, and
woods generally were adapted to that purpose, the claim might not
be too broad, though defendant used wood of a different kind from
that of the patentee. But if woods generally were not adapted to
the purpose, and yet the patentee had discovered a wood possessing
certain qualities which gave it a peculiar fitness for such
purpose, it would not constitute an infringement for another to
discover and use a different kind of wood which was found to
contain similar or superior qualities. The present case is an apt
illustration of this principle. Sawyer and Man supposed they had
discovered in carbonized paper the best material for an
incandescent conductor. Instead of confining themselves to
carbonized paper, as they might properly have done, and in fact did
in their third claim, they made a broad claim for every fibrous or
textile material, when in fact an examination of over 6,000
vegetable growths showed that none of them possessed the peculiar
qualities that fitted them for that purpose. Was everybody, then,
precluded by this broad claim from making further investigation? We
think not.
The injustice of so holding is manifest in view of the
experiments
Page 159 U. S. 473
made and continued for several months by Mr. Edison and his
assistants among the different species of vegetable growth for the
purpose of ascertaining the one best adapted to an incandescent
conductor. Of these he found suitable for his purpose only about
three species of bamboo, one species of cane from the valley of the
Amazon (impossible to be procured in quantities on account of the
climate), and one or two species of fibers from the agave family.
Of the special bamboo, the walls of which have a thickness of about
3/8 of an inch, he used only about 20/1000 of an inch in thickness.
In this portion of the bamboo, the fibers are more nearly parallel,
the cell walls are apparently smallest, and the pithy matter
between the fibers is at its minimum. It seems that carbon
filaments cannot be made of wood -- that is, exogenous vegetable
growth -- because the fibers are not parallel, and the longitudinal
fibers are intercepted by radial fibers. The cells composing the
fibers are all so large that the resulting carbon is very porous
and friable. Lamps made of this material proved of no commercial
value. After trying as many as thirty or forty different woods of
exogenous growth, he gave them up as hopeless. But finally, while
experimenting with a bamboo strip which formed the edge of a palm
leaf fan, cut into filaments, he obtained surprising results. After
microscopic examination of the material, he dispatched a man to
Japan to make arrangements for securing the bamboo in quantities.
It seems that the characteristic of the bamboo which makes it
particularly suitable is that the fibers run more nearly parallel
than in other species of wood. Owing to this, it can be cut up into
filaments having parallel fibers, running throughout their length,
and producing a homogeneous carbon. There is no generic quality,
however, in vegetable fibers, because they are fibrous, which
adapts them to the purpose. Indeed, the fibers are rather a
disadvantage. If the bamboo grew solid, without fibers, but had its
peculiar cellular formation, it would be a perfect material, and
incandescent lamps would last at least six times as long as at
present. All vegetable fibrous growths do not have a suitable
cellular structure. In
Page 159 U. S. 474
some, the cells are so large that they are valueless for that
purpose. No exogenous, and very few endogenous, growths are
suitable. The messenger whom he dispatched to different parts of
Japan and China sent him about forty different kinds of bamboo in
such quantities as to enable him to make a number of lamps, and
from a test of these different species he ascertained which was
best for the purpose. From this it appears very clearly that there
is no such quality common to fibrous and textile substances
generally as makes them suitable for an incandescent conductor, and
that the bamboo which was finally pitched upon, and is now
generally used, was not selected because it was of vegetable
growth, but because it contained certain peculiarities in its
fibrous structure which distinguished it from every other fibrous
substance. The question really is whether the imperfectly
successful experiments of Sawyer and Man, with carbonized paper and
wood carbon, conceding all that is claimed for them, authorize them
to put under tribute the results of the brilliant discoveries made
by others.
It is required by Rev.Stat. § 4888 that the application
shall contain
"a written description of the device, and of the manner and
process of making constructing, compounding, and using it in such
full, clear, concise, and exact terms as to enable any person
skilled in the art or science to which it appertains or with which
it is most nearly connected to make, construct, compound, and use
the same."
The object of this is to apprise the public of what the patentee
claims as his own, the courts of what they are called upon to
construe, and competing manufacturers and dealers of exactly what
they are bound to avoid.
Grant v.
Raymond, 6 Pet. 218,
31 U. S. 247.
If the description be so vague and uncertain that no one can tell,
except by independent experiments, how to construct the patented
device, the patent is void.
It was said by Mr. Chief Justice Taney, in
Wood v.
Underhill, 5 How. 1,
46 U. S. 5, with
respect to a patented compound for the purpose of making brick or
tile, which did not give the relative proportions of the different
ingredients:
"But when the specification of a new composition of matter gives
only
Page 159 U. S. 475
the names of the substances which are to be mixed together,
without stating any relative proportion, undoubtedly it would be
the duty of the court to declare the patent void. And the same rule
would prevail where it was apparent that the proportions were
stated ambiguously and vaguely, for in such cases it would be
evident on the face of the specification that no one could use the
invention without first ascertaining by experiment the exact
proportion of the different ingredients required to produce the
result intended to be obtained. . . . And if, from the nature and
character of the ingredients to be used, they are not susceptible
of such exact description, the inventor is not entitled to a
patent."
So in
Tyler v.
Boston, 7 Wall. 327, wherein the plaintiff
professed to have discovered a combination of fusel oil with the
mineral and earthy oils, constituting a burning fluid, the patentee
stated that the exact quantity of fusel oil which is necessary to
produce the most desirable compount must be determined by
experiment. And the Court observed:
"Where a patent is claimed for such a discovery, it should state
the component parts of the new manufacture claimed with clearness
and precision, and not leave a person attempting to use the
discovery to find it out 'by experiment.'"
See also Bene v. Jeantet, 129 U.
S. 683;
Howard v. Detroit Stove Works,
150 U. S. 164,
150 U. S. 167;
Schneider v. Lovell, 10 F. 666;
Welling v. Crane,
14 F. 571.
Applying this principle to the patent under consideration, how
would it be possible for a person to know what fibrous or textile
material was adapted to the purpose of an incandescent conductor
except by the most careful and painstaking experimentation? If, as
before observed, there were some general quality, running through
the whole fibrous and textile kingdom, which distinguished it from
every other, and gave it a peculiar fitness for the particular
purpose, the man who discovered such quality might justly be
entitled to a patent; but that is not the case here. An examination
of materials of this class carried on for months revealed nothing
that seemed to be adapted to the purpose, and even the carbonized
paper and wood carbons specified in the patent,
Page 159 U. S. 476
experiments with which first suggested their incorporation
therein, were found to be so inferior to the bamboo, afterwards
discovered by Edison, that the complainant was forced to abandon
its patent in that particular and take up with the material
discovered by its rival. Under these circumstances, to hold that
one who had discovered that a certain fibrous or textile material
answered the required purpose should obtain the right to exclude
everybody from the whole domain of fibrous and textile materials,
and thereby shut out any further efforts to discover a better
specimen of that class than the patentee had employed, would be an
unwarranted extension of his monopoly and operate rather to
discourage than to promote invention. If Sawyer and Man had
discovered that a certain carbonized paper would answer the
purpose, their claim to all carbonized paper would perhaps not be
extravagant, but the fact that paper happens to belong to the
fibrous kingdom did not invest them with sovereignty over this
entire kingdom and thereby practically limit other experimenters to
the domain of minerals.
In fact, such a construction of this patent as would exclude
competitors from making use of any fibrous or textile material
would probably defeat itself, since, if the patent were infringed
by the use of any such material, it would be anticipated by proof
of the prior use of any such material. In this connection, it would
appear not only that wood charcoal had been constantly used since
the days of Sir Humphry Davy for arc lighting, but that, in the
English patent to Greener and Staite, of 1846, for an incandescent
light, "charcoal, reduced to a state of powder," was one of the
materials employed. So also, in the English patent of 1841 to De
Moleyns, "a finely pulverized boxwood charcoal or plumbago" was
used for an incandescent electric lamp. Indeed, in the experiments
of Sir Humphry Davy early in the century, pieces of well burned
charcoal were heated to a vivid whiteness by the electric current,
and other experiments were made which evidently contemplated the
use of charcoal heated to the point of incandescence. Mr. Broadnax,
the attorney who prepared the application, it seems, was also of
opinion that a broad claim for
Page 159 U. S. 477
vegetable carbons could not be sustained, because charcoal had
been used before in incandescent lighting. There is undoubtedly a
good deal of testimony tending to show that for the past fifty or
sixty years, the word "charcoal" has been used in the art not only
to designate carbonized wood, but mineral or hard carbons, such as
were commonly employed for the carbon pencils of arc lamps. But we
think it quite evident that in the patents and experiments above
referred to it was used in its ordinary sense of charcoal obtained
from wood. The very fact of the use of such word to designate
mineral carbons indicates that such carbons were believed to
possess peculiar properties required for illumination that before
that had been supposed to belong to wood charcoal.
We have not found it necessary in this connection to consider
the amendments that were made to the original specification, upon
which so much stress was laid in the opinion of the court below,
since we are all agreed that the claims of this patent, with the
exception of the third, are too indefinite to be the subject of a
valid monopoly.
As these suggestions are of themselves sufficient to dispose of
the case adversely to the complainant, a consideration of the
question of priority of invention, or rather of the extent and
results of the Sawyer and Man experiments, which was so fully
argued upon both sides and passed upon by the court below, becomes
unnecessary.
For the reasons above stated, the decree of the circuit court
is
Affirmed.
