The Baldwin patent, original No. 821,580, reissue No. 13,542,
for improvements in acetylene gas generating lamps,
held
valid and infringed as to Claim 4.
The patent relates to an acetylene gas generating lamp, with an
upper reservoir for water and a lower receptacle for calcium
carbide, connected by a tube, with a rod extending through the tube
and subject to manipulation from above. The inventive features
involved lie in securing a proper flow of the water through the
tube and access for it to the unslaked carbide, the first, by
adopting a comparatively large tube with a size of rod suitably
restricting its capacity; the second, by manipulating the rod when
necessary to break up slaked carbide at the mouth of the tube in
the lower receptacle.
Page 245 U. S. 199
Held, upon the evidence, that the invention is
meritorious and entitled to invoke the doctrine of equivalents.
Paper Bag Patent Case, 210 U. S. 405.
The original patent having figured the tube as extending to and
embedded in the carbide, and described the rod as a means, when
manipulated, of breaking up slaked carbide at the lower mouth of
the tube, to permit the water to percolate to the unslaked carbide,
held that an amendment in the reissue explicitly
describing the tube as so extended and embedded did not enlarge the
patent.
In the original patent specification, the rod or "stirrer" was
described as bent at the lower extremity, while the specification
of the reissue declared, "it is obvious that the stirrer need not
always be formed with a bent end."
Held that the reissue
did not enlarge the original patent; the function of the rod as a
"stirrer," clearly described in the original, is the same whether
its end be bent or straight; the two forms are but interchangeable
equivalents.
In the original patent proceedings, the applicant was required
to surrender a claim describing the rod as "extending from a point
outside the lamp through the tube into the carbide receptacle."
Held, on the evidence, that this was not a surrender of
the straight form of stirring rod.
In view of the facts of the case,
held that one of the
petitioners, which entered the field when the patent was
unquestioned and after the patentee by his efforts had created an
extensive market, acquired in equity no intervening rights against
the patent as subsequently reissued.
228 F. 895 affirmed.
The case is stated in the opinion.
MR. JUSTICE McKENNA delivered the opinion of the Court.
Suit for infringement of a patent embraced in letters patent No.
821,580 and a reissue thereof, No. 13,542.
Page 245 U. S. 200
The suit was originally brought by Frederick F. Baldwin,
patentee. John Simmons Company, licensee, having the exclusive
right to manufacture and sell the patented device, subsequently
intervened and became complainant.
The patents are for a lamp designed to generate and burn
acetylene or similar gas "intended for use," to quote the
description of the patents,
"and adapted to use as a bicycle, automobile, yacht, or miner's
lamp, or for any other analogous purpose, it being necessary only
to change its form or dimensions to adapt it to any one of the
purposes mentioned."
Stress in this case, however, is put upon the use of the
asserted invention as a miner's lamp, such use conspicuously
displaying its commercial utility.
Answer was filed by the Justrite Manufacturing Company, who was
made a party defendant to the suit as manufacturer of the asserted
infringing lamp, and by stipulation its answer was considered the
answer of the Abercrombie & Fitch Company. It denied invention
with great detail, set up anticipating patents, denied its utility,
attacked the validity of the reissue on the ground that the first
and fourth claims of the original patent were held invalid by the
United States Circuit Court of Appeals for the Seventh Circuit, 199
F. 133, and for the further reason that the application for the
reissue was not made until seven years after the original letters
patent were issued and rights had accrued in the meantime to
defendants (petitioners here) and to others. Infringement was
denied.
A decree was passed sustaining the validity of the original
patent and of the reissue, the originality of the invention and its
utility, and adjudging defendants (petitioners) had infringed Claim
4 of the reissue, that plaintiffs recover the damages they had
incurred by reason of the infringement and the profits defendants
had received, an accounting being ordered for this purpose. A
perpetual
Page 245 U. S. 201
injunction was also adjudged against further infringements. 227
F. 455. The decree was affirmed in all respects by the circuit
court of appeals, 228 F. 895, and subsequently this certiorari was
granted.
The plaintiffs (we shall so designate respondents) struggled
through some years and some litigation to the success of the
decrees in the pending case. In a suit brought in the District
Court for the Southern District of Illinois, a device like that of
the defendants herein was held to be an infringement of certain
claims of the original patent. The holding was reversed by the
Circuit Court of Appeals for the Seventh Circuit.
Bleser v.
Baldwin, 190 F. 133.
Subsequently, the reissue having been granted, suit was brought
in the Western District of Pennsylvania against an asserted
infringer. Unfair competition was also alleged, and, holding the
latter to exist, the court granted a preliminary injunction. 210 F.
560. Upon final hearing, that holding was repeated, and
infringement of a claim of the reissue patent decreed. 215 F. 735.
The decree was reversed by the circuit court of appeals (Third
Circuit) on the ground that the claim of the reissue patent found
to have been infringed was broader than a corresponding claim of
the original letters patent, and therefore void. The holding of the
district court as to unfair competition was sustained. 219 F. 735.
Aided by the reasoning in the opinions of those cases and the
discussion of counsel, we pass to the consideration of the
propositions in controversy.
First, as to the original patent. Its contribution to the
world's instrumentalities was, as we have said, an acetylene lamp,
and was represented by the following figure, designated as Figure
1:
image:a
It will be observed that the device consists of a receptacle
divided into two compartments, an upper one for
Page 245 U. S. 202
water and a lower one designed to serve as a gas-generating
chamber, adapted to contain a receptacle for calcium carbide, which
is attached to and forms the detachable bottom. There are means of
introducing water into the reservoir and thence to the carbide, and
means of conducting the gas to the burner.
The device is a means of using the gas (acetylene) formed by the
decomposition of water with calcium carbide and necessarily must
bring them into contact in an effectual way and use the gas
generated in a controlled flow. A tube (L) hence leads from the
water reservoir into the carbide receptacle, and forms a duct which
introduces the water into the body of the carbide. Various means,
the specifications recite, have been employed to regulate or
control the flow of water to the carbide, which were found
objectionable or not adequate.
Page 245 U. S. 203
The patentee then says that the method which be has invented
"for securing the proper feed under all circumstances" without
"objectionable features is to make the bore of the duct of
comparatively large size and then restrict the duct by means of a
wire or rod, preferably centrally located therein, to leave a
channel of the proper size."
It is then said:
"This arrangement is simple, but in a long experience it has
been found to be entirely successful. It is possible to secure the
correct drop-by-drop feed with a duct of considerable size, since
the friction of the water on the large area of the tube wall and
wire reduces its flow. This retarding friction may be regulated by
varying the size of wire used. The duct does not become choked,
since, if foreign particles are deposited therein, the water can
take a zigzag course around it without the supply being appreciably
affected. If it is at any time necessary to clean the tube, the
wire is simply reciprocated and rotated a few times from the
outside of the lamp without disturbing the position of other parts.
This nice regulation of the flow enables me to entirely dispense
with the troublesome adjustment of the valve. . . . In some cases,
however, there is employed in connection with the means for
introducing water into the mass of carbide a device in the nature
of a stirrer, which, on proper manipulation, may be used to break
up the mass of carbide surrounding the outlet of the water duct and
which, by having become slaked and caked by the action of water,
prevents the proper percolation of the latter to the unslaked
carbide in the receptacle G, Fig. 1. As such device. I employ a
stem rod N, which extends down through the tube L and is bent at
substantially right angles to form an arm N'."
There is also a figure attached to the patent which shows a
valve upon the constricting rod, and it is said:
"this rod may form a prolongation of the valve stem, . . . or,
in case no valve is used, may extend from the top of the
Page 245 U. S. 204
lamp down through the water reservoir,"
and this is illustrated by figures.
"As calcium carbide possesses strongly absorptive properties,
the introduction of water through the tube L will result in the
gradual slaking of the material about its outlet; but the lime thus
produced becomes gradually less permeable to the water, so that an
insufficient quantity of gas is generated to maintain the proper
flame. When this becomes noticeable, the rod N is turned so as to
cause the arm N' to break up to a greater or less extent the mass
of lime, and in practice I have found that, under ordinary
conditions, this is amply sufficient to insure a substantially
uniform generation of gas until all of the carbide in the
receptacle G is exhausted."
There are some further descriptive details not necessary to be
repeated, and this was said:
"The specific construction of the various parts of my lamp may
be, as will be seen from a consideration of the nature of the
improvements, very greatly varied without departing from the
invention."
The claims of the patent which are pertinent to our inquiry are
as follows:
"1. In a lamp of the kind described, the combination with a
water reservoir, and a receptacle for calcium carbide, of a tube
extending from the former a considerable distance into the latter
so as to be embedded in the mass of carbide contained in said
receptacle, and a rod or stem extending through said tube into the
carbide receptacle and having its end formed as a stirrer to break
up the slaked carbide around the outlet of the water tube, as set
forth."
"2. In a lamp of the kind described, the combination with a
water reservoir, and a receptacle for calcium carbide, of a tube
extending from the former into the latter so as to be embedded in
the mass of carbide contained in the receptacle, a rod extending
from a point outside of the
Page 245 U. S. 205
lamp through the tube and into the carbide chamber and having
its end bent to form a stirrer for breaking up the slaked carbide
around the outlet of the water tube, as set forth."
"
* * * *"
"4. In a lamp of the kind described, the combination with a
water reservoir and a receptacle for calcium carbide of a water
tube extending from the former a considerable distance into the
latter and adapted to be embedded in the mass of carbide in the
receptacle, and a rod extending through the water tube and
constituting a stirrer to break up slaked carbide around the outlet
of the water tube,
the rod operating to restrict and thus
control the flow of water to the carbide, as set forth."
The words in italics are the addition of the reissue.
Whether the lamp exhibits invention, when both patents are
considered, we shall discuss later. Our attention is more
immediately challenged by the stress put upon other defenses,
especially upon the contention that the patent is confined to a
special form and, so confined, is not infringed, and that the
extension of the patent by the reissue is void. The controversy is
therefore brought to a consideration of the original patent as
added to or developed by the reissue. And their comparison centers
in the water feeding duct or tube and its restriction by means of a
wire or rod and the shape and use of the rod to pierce or stir the
carbide. In the original patent, as we have seen, it was said that
the invented method for securing a proper feed (flow of the water
to the carbide) without certain specific objectionable features
was
"to make the bore of the duct of comparatively large size. and
then restrict the duct by means of a wire or rod preferably
centrally located therein to leave a channel of the proper
size."
In the reissue, after the words "comparatively large size," it
was added, "extend the tube which forms the duct downward so that
its end will be always embedded
Page 245 U. S. 206
in the carbide." In other words, the tube is explicitly
described as extending to and its end embedded in the carbide, and
this, it is contended, was an enlargement of the original
patent.
The contention is untenable if there was in the original patent
an implication of such length and termination of the tube, and we
think there was. To conduct water to the carbide, it necessarily
had to extend to the carbide receptacle, and as necessarily had to
penetrate the carbide if the rod located in it, whether straight or
bent, was to act "in the nature of a stirrer, which on proper
manipulation" might "be used to break up the mass of carbide
surrounding the outlet of the water duct," which is the purpose
that the patent ascribes to it. And Fig. 1 shows such ending and
embedding. It would be impossible otherwise to perform its function
or secure the "proper percolation" of the water "to the unslaked
carbide in the receptacle G, Fig. 1."
But there was another addition in the reissue which, it is
contended, enlarges the invention and assigns a new shape and
function to the stirrer of the original. In the latter, the rod is
described as extending "from the top of the lamp down through the
water reservoir, as shown in Fig. 3." To this the reissue adds:
"It will be understood from what has been said that the function
of the stirrer is to break up, pierce, or disturb the particles of
the slaked carbide mass which, when the lamp is in use, forms at
the delivery end of the tube. This slaked carbide mass tends to
solidify, and either shuts the water off altogether or restricts it
so that less water is delivered from the water tube than the lamp
demands for efficient operation. As it is sufficient, under the
certain circumstances, to insure the requisite water flow by so
manipulating the stirrer as to pierce, break up or loosen the
slaked carbide mass immediately around or at the mouth of the tube,
it is obvious that the stirrer need not
Page 245 U. S. 207
always be formed with a bent end, or so as to extend radially
from the mouth of the tube."
There is nothing in this but what was clearly implied in the
original, except the shape of the stirrer. In the original, it is
described and represented as bent. In the reissue, it is stated to
be obvious that the stirrer need not always be bent "or extend
radially from the mouth of the tube."
We are unable to assign to this the extent of alteration that
counsel do, nor do we think it necessary to rehearse the details of
their argument. We have given it attention, and the cases it cites,
especially the decision and reasoning of the circuit court of
appeals of the Third Circuit in
Grier Bros. Co. v.
Baldwin, 219 F. 735, but we are constrained to a different
conclusion. Indeed, we are of opinion that the original patent did
not need the exposition of the reissue. It exhibited an invention
of merit, certainly one entitled to invoke the doctrine of
equivalents.
Paper Bag Patent Case, 210 U.
S. 405. Baldwin, the patentee, complied with the statute
(§ 4888, Rev.Stats.) by explaining the principle of his
invention and the mode of putting it to practical use; there was a
clear exposition of the principle, and the instruments of its use
were defined and their purpose and manner of operation. It left
nothing in either for further experiment or contrivance. As we have
said, the invention was a means of using the gas formed by the
decomposition of water with calcium carbide, and necessarily the
water and carbide must be brought into contact and under a
controlled flow; hence the tube and its centrally located rod
extending downward to the carbide. It was foreseen and stated that
the carbide might become torpid or slaked by the action of the
water, and might have to be disturbed or dispersed in order that
there might be percolation of water to unslaked carbide, and this
was provided to be performed by a simple manipulation of the
Page 245 U. S. 208
rod. Whether the rod was bent or made straight was unimportant.
In either form, it removed the slake and secured the continuous
operation of the water and carbide, and through them the formation
of the gas and its illuminating purpose. One or the other might be
better, according to the extent of the dispersion required, and one
naturally suggested the other.
It is, however, contended that plaintiffs were required to give
up and did give up in the Patent Office a claim which had the
extent which we have indicated. A claim, numbered in the
application as 6, described the rod as "[a] rod extending from a
point outside the lamp through the tube into the carbide
receptacle."
Counsel say, "[i]t is to be particularly noted" that, while
other claims "mentioned the stirring function of the rod, Claim 6
omitted this feature," but that the solicitor who drew the
claim
"unquestionably had in mind the straight form of rod
construction without any stirrer at the end, for the claim
specifies, 'through the tube into the carbide receptacle.'"
It is hence argued that, when the claim was given up, the
straight form of construction was given up, and, having been given
up to secure the patent, it cannot be insisted upon to prevent its
use by others. But counsel is in error as to the extent of the
surrender. The straight construction was not given up, but such
construction through the tube into the carbide receptacle, and this
was in deference, and only in deference, to other patents that
showed such use -- that is, showed a penetration into the
receptacle -- but not its duct ending and embedded in the
carbide.
We do not think the case calls for extended discussion. It is
best considered in broad outline. The scope and merit of the
patents are of instant and assured impression, and to the attempt
to defeat or limit their invention by the State of the prior art we
adduce the discussion and reasoning of the opinions of the lower
courts, which we approve.
Page 245 U. S. 209
The denial of infringement is also easily disposed of. Indeed,
it has been in effect disposed of. It is based on the contention
that the stirrer is an essential of plaintiff's lamp, and that a
stirrer is absent from defendants' lamp which is, in all other
particulars as far as this case is concerned, similar to the
plaintiff's lamp. To the contention of defendants, therefore, we
cannot assent. There is a stirrer in both, and its form, as we have
seen, is not of the essence of the invention. There is nothing
occult in the act of stirring; it is causing movement or
disturbance, and this may be performed by a straight rod as by a
bent one. There may be difference in their dispersing power, but no
difference in function, and one or the other would be instantly
selected according to the need under the clear description of the
patent. This ready adaptation of the form of stirrer to the work to
be performed Baldwin demonstrated even before the grant of the
patent. Early in 1906, he put upon the market a lamp with a
straight rod "which, among other things," as the district court has
said, "has characterized the commercial lamp ever since."
To the contention that the Justrite Company, the manufacturing
defendant, acquired rights before the reissue, we again may oppose
the reasoning and conclusion of District Judge Mayer and their
affirmance by the circuit court of appeals. The learned judge
said:
"It will be remembered that this company entered the field with
its lamp at a time when the validity and scope of the Baldwin
patent were still unquestioned and when, after some five years of
capable effort, the Baldwin lamp had created an extensive market.
The Justrite Company took its chances, and, in view of the
necessities of the situation, it is relieved of all accountability
for the period prior to the granting of the reissue patent; but
when the reissue statute was granted the Justrite Company again
took its chances."
"By the reissuance of the patent, the patentee loses all in the
way of an accounting under the original patent,
Page 245 U. S. 210
but the dominant purpose of the reissue statute was to save to
the inventor the future remaining after the reissue."
"I see nothing in the course of plaintiffs or defendants which
would allow a court of equity to conclude that defendants are to be
relieved because of intervening rights."
Decree affirmed.