I'EDERALR:\llPORTER,
vol. 40. et ale
OARRINOO'Oll':·.". LENTZ
(O«rcu,(t Oourt, E. D. Missouri, E. D. September 24" 1889.) 1. VBNDOR ',urn VENDBB-Broiu.
Complainant land aeed from B., who was alleged to have bougM it from the county. There was no direot evidenoe of a sale to B., but it appeared that the county had taxed the land; and he had paid the ta.xes; that In a book preserved in. the oince of but not one Of the records of the oounty, thereWaB a statement of the sale to him i that in one of the oinc.li1.l bo.oks there was an entry of money received from bim 1n payment for the land; and it appeared from one ,certiftoate"signed by the register of the county, that the land had been sold to B., . and from anot4et:t signed by therooEllver of the oountYt that he had paid for it. the land from the county' DutitW8B proven that he Defendant afterwards had aCcess to all :,of the recordll, and .l\ad.notice before thesil.le was completed that oomplainant claimed thepr9perty. ·,Beld, that the equitable tItle was in complainant, lUU1 defendant. would be compelled to convey the legil.l tItle to him.
FIDE
PUBO!tA.SEBB-EQUITABLE TITLE.
. ,. The fact tbat.,. d,efjmdlWt holdl! a contract in respect to t\J,e land and refull6s to . produce it, will justify a i!ecrie d,i'veliting him of au, title, and SUbjecting him to ,costs with the otllerdefetldants.·.., , . . , &W,\STE-WRQ Is LiABLE. :' '".:' ,. ,.".. , Though. a defendant assisted .in· obtil.lning thetttle, yet, if he did not take .part 'in, or recMve benefit from, the 'to the property,' damages will not be \leoreed againsthi'm. ' " . '" . "
ll. .CoSTs-REFUSAL TO DISOLOSB INTEREST.
: In I
E.
.H. Olopton, fo.r defendan1;s.,: . ,
oflegal title.
O.J. case.isabillfiled by , that .b,e the equitable tit;I.e to.o, tract of county.; that thelegal title.j.sin defendants;anll seeking to.$arge them . :compel the vesting oftpe.legal title..in.him; to recover possessiqnj .for.waste. The .land is what as "swaw.pJand.lI 'rhe defen4ant Potter obtained title from the county , in 1887;;· Complainant insists tllat iJ;l. La57 one:James Stunson bought ,and pai4for the land. By the act of September 28, 1850, .the; lands in 1\iissouri .were granted to the state of Missouri. 9 U. S. St..at Largej By the act of the legislatnreofMisf30uri ofM:arch 3, 1851, (Laws l8Sh p. 238,) and the act.:of February 23, 1853, (Laws 1852-53, p. ,l.08,) the title to these to .the cO\lnty Butler. 8<rheld py the supJ:eme court of the in Linville v. .:8ohanan, 60l\{o. 554, and ;,¥itchelf, v. Nodaway C'ounty,80\Mo. 264. ,Bytheact of Marcb 1,1855, .(Laws. Mo. 1854-:-55, p. 154,) the c1erl,ts of.;the several county courts werem!;lde ez offipio .and the treas;urers ez offidQ, receivert'l, for the pUl'poseqf performing all d\lties in respect·to the sale of lands ini;h,eirrespectivt;l counties. By other statutes the counties were authorby an act of November 5, 1857, (Laws 1857, p. 258,) slliles, ,ratified. .. . . ' ... pivotal queliltion is wl,lether Stuqscin bought and for There.,is no direct· of . purchase or paySt;unson; is· dead. It that the land was taxed by ,the qnderhim, paid coputy,anf! that. Stunson,l!ond.those i
,
-.".
,C,;
CABJUNGTON fl. IoEN'1'Z.' ,
19
Of coutse the land, while it belonged to the county, was not taxable, and the fact that it was' Utxed, and the taxes paid by Stunson, is evidence'that it had been sold, and sold to ' There is found in the 6ffice of the county clerk of Butler county a book which is marked "Receiver's Register of Swamp Lands of Butler County, Missouri." I should judge from the testimony thut it was not looked upon as one of the official county records, and yet it was preserved as a book of the office, and on that book is a statement of the sale, describing the lands, the purchaser, aild the price. There is also in one of the official books of the county, (Record D,)-an entry of a receipt from James Stunson of warrants,$240; and on the front leaf of that book is written, "Charges of money received for swamp lands;" and at the head of the first page is written', "Treasurer of Butler county, in account current on account of swamp-land funds of said county." There is also in the office of the state register of lands two certificates,-one signed by the register of that county,and the other by the receiver of the county; the one showing a sale to James Stunson of this land, and the other payment for this land. It is contended on the part of defendants that those certificates are not in form. They should have been simply receipts, as prescribed by the statute, instead' of certificates. Be that as it may, these various records in the county offices and in the state land-office, coupled with the fact that the land wassubjooted to taxation, and taxes paid by James Stunson and those claiming under him, is satisfactory evidence of a sale to hitn, and, in the absence or all contradictory evidence, sl1fticient to prove that he bought and paid for the land as claimed. On the records of the county is to be found a deed from James Stunson to the father of the present complainant, and6ne from such grantee to the present complainant, so that there can be no question but that the equitable title to 'these lands passed from the county, through Mr. Stunson, to the complainant. , It is further insisted by the defendants that Mr. Potter is a bona fide purchaser without notice; that the entries in those books in the county clerk's office were not entries made by authority of statute, and therefore furnished no constructive notice; and that Mr. Potterin fact had no actual notice. There is testimony-contradicted, it is true, but testimony which commends itself to the consideration of the court-that some time before Mr. Potter purchased he was informed that this complainant owned the land, and was holding it for sale. All these entries on the books of the state land-office and on the books found in the county clerk's office, as well as the entry on the county clerk's official record, were within his reach, if he had been anxious to find whether there had been a prior t'ale. More than that, after the negotiations for a purchase, and before the deed was made to him, the county court was advised that the title was in this complainant. It thereupon rescinded the order of sale, and of that Mr. Potter unquestionably had information. Indeed he threatened the court with mandamus to compel a deed. We are clear that Mr. Potter does not stand in the position of a bona fide purchaser. He either knew of the outstanding equitable title, or was put in posses-
FEDERAL. REPOB1'Jm,
vol. 40.
,sion of information sufficient to compel an inquiry. The equitable title being in the complainant, and Potter having taken with notice of such equitable title as against him, complainant is entitled' to a decree. Mr. Nasmith stands in no better position, for he simply furnished money to Mr. Potter, who acted in all things as his agent, and notice to the agent is notice to the principal. Mr. Lentz files a disclaimer,and asks to be discharged with his costs. But he holds a contract from Mr. Potter in respect to part of the land. He refuses to produce such contract, and hence we are not advised of its provisions. But the fact that he holds some kind of a contract is sufficient to justify a decree against him divesting him of all title, and subjecting him, with the others, to the costs of this suit. A decree will go canceling the title held by all the defendants, and vesting it in the complainant, and directing, further" that the defendants deliver to the -complainant, upon production of a copy of the decree of thiseourt, within five days, possession of the land, and t1;lat, upon a failure to so deliver possession, a writ ·of assistance be issued to put him in sion. With respect to the danlages it appears that since his purchlitRe:Mr. .fotter, for himself, his children, or ,his ,stripped the land ,of its timber. Tpe value ofthe waste doneiseEltimated .differently by different Mr. Lanel who WitS the agent of thecomplainant, says that there was about 295 acres of timber,and that the value ,of that timber was $4 an acre. We do notthi l1k that the ..court strain a point to relieve from responsibility, for it.looks very much as though it was a scheme to get a semblaneeof titlldn or,der to strip the"landof the timber. We would be amount of damages to charge against thel;le defendal1ts. So far as Mr. Lmtz is concerned, while he was instrunientali ll optainingthe title from the county, yet that fact does not necessarily make him a in the waste dQnetbereafter, and, unless he took partin such or was to share in the. profits therefrom, the mere fact. that assisted in obtaining the title does not make him responsible. ., We are unable to see from the testimony that he has conducted himself in such manner as to be responsible for the carrying off of the timber. As to Mr. Lentz, the decree will.be forposse.<r $ion, title, and costs, and as against the others, for possession, tiUe, <lOst.,., ,and $900 damages.
CONSOLIDATED ELECTRIC LIGHT CO. CoNSOLIDATED EUCTRIC LIGHT CO. (Cin'Uit Court, W. D.
rI.
M.'XEESPORT LIGHT CO. McKEESPORT LIGHT Co. October 5, 1889.)
21
'II.
L
PATENTS FOR INVENTIONS-ELECTRIO LIGlIT CARBONS-ExTENT OF CLAIM.
The claims of letters patent granted May 12, 1885, to the Electro Dynamic Company, for improvements in electric lamps, (excluding the third claim. whlCh was not in issue,) are substantially as follows: (1) A conductor of carbon, made of fibrous or textile material, and of an arched form; (2) a conductor of carbon, made of fibrous material, in an hermetically sealed chamber, without regard to form; (3) the combination of a conductor of carbon, made of fibrous or textile material, in an arched form, and the glass chamber, hermetically sealed, and deprived of carbon-consuming gas. in view of the state of the art, and the evident necessities of the case, that these claims amounted to the broad claim of the exclusl ve use, in incandescing lamps, of all carbons made of fibrous or textile materials. Snch a claim is void for want of Ilovelty, in view of the fact that wood charcoal had previously been used for electric lighting In incandescent lamps.
S. 8.
SAME.
SiMB-AMENDMENT TO ApPI,IOATION.
The original application of Sawyer & Man, filed January 9. 1880, for a patent for improvements in incandescing electric lamps, was evidently intended to secure only the arched form of the carbOn burner; but in 1885, after Edison's inventions had been published to the world, the purpose of the application was changed tosecure the use of all carbons made of fibrous material. HflLd,that such a change was . not justifiable, and the claim based thereon is v o i d . · . SAME-INvENTION.
.
Held, further, from the evidence in the case, that Sawyer & Man did not invent a successfullamp, and dili not discover the principle onwliich such a lamp could be made; but that the true principle for constructing such a lamp was described in the patents of Edison applied for in April, 1879, and November 4,1879, and numbered 227,229, and 223,898, as eXhibited in the filamental·Or thread-like conductors or burners, inclosed in.a.more perfect vacuum than had ever before been used.
In Equity. Bill for infringement of patent. Edmund Wetmore, Thomas B. Kerr, Amo8 Bmadnax, and John DalzeU, for :comphlinant. . R. N. Dyer, B. F. Thur8ton, G. P. Lowry, W. R. Griffin, and Magnus Pflaum, for respondent. BRADLEY, Justice. This is a bill for the alleged infringement of a patent, fUed December 8, 1887, and the patent alleged to be infringed is dated :May 12, 1885, and is for improvements ill electric lamps. !twas granted upon the application of William E. Sawyer anq. Albon Man,of New York, to their assignees, the Electro Dynamic LightCompany, and by mesne assignments was transferred to the complainant, whose title (Jommenced in October, 1882, before the patent was issued. The appli.cation for the patent was filed January 9, 1880, and the issue was layed by various proceedings in the patent-office, including an interference with an application of Thomas A. Edison, which had been filed a month earlier,ta-wit, December 11, 1879. Various defenses were set up in answer, such as anticipation by prior inventors, vagueness of description, want of novelty and utility, undue change of specification filing, surreptitious claim of an invention made by Edison, etc. Itis :conceded that the defense of the is conducted by the Edison Electric Light Couwany ,. s· corporatiop. of New York, ",hich· sells the lamps Complainedo(, of the patent, and Js interested asassigpee in
J'EDERAL REPOR'l:ER,
the for electric lights formerly owned by the Edison Electric Light Company, and in the question of interference between Edison and the complainants. In the specification of the patent sued on, called "Sawyer and Man Patent," t:M invenHonis described as relating to that class of electric lamps employing l!;Il incandescent conductor, inclosed in a transparent, hermetically .sealed vessel or chamber, from which oxygen is excluQ,e4,and constituting an improvement upon the a.pparatus shown in a previous patent granted to 'the same parties (Sawyer and Man) June 18, 1878, It is further stated in the specification that the invention relates .mf)re especially to the incandescent conductor, its substance, its form, and its combination with the other elements composing the lampj,and tbat the iinprovement consists, first, of the combination in a lamp chamber, composed wholly of glass, as describeu in the said, former patent, of an incandescent conductor of carbon, made from a vegetable fibrous material, in contradistinction to a sitlli1ar c9nductor made from mineral or gas carbon, and also in the form of such conductor, combined in lighting circuit within the exhausted chamber oftbe lamp. 'fhe con8tr\).ction of the lamp is then described; reference being made to the drawings for illustration. The lamp as described and shown in the drawings is a glass cylinder, with rounded top, cemented at ,the bottom to a. glass.disk or plate, ground to fit closely to the cylinder, 'and the whole bottom inclosed in a cup filled with wax or SUitable, ceIlleni, to prevent, as far 1,\spossibJe, the access of atmospheric air. Two holes nremade in the ,bottom of the lamp for the passage of the wires which convey the electric current into and .Clut of the lamp. The carbon conductor within tlie'glass cylinder is conrtected by its extremitiesto these two wires, respectively ,in a mode specified in another patent of Sawyer and Man, dated December 10, 1878, and numbered 210,809, s6:asto constitute 1\ part oitha Circuitj and having a ductivity, and presenting a certain amount of resistance to the current of electricity, it becomes incandElScent. and highly luminous. If the bon in this condition were exposed to atmospheric nir, thnt is; to oxygen, it would' be consumed by combustion. Hence another part of the combinatiol'lnecessary to the result consists in filling the lamp with nitrogengas, or other gas, which prevents combustion, to the exclusion of atmospheric air. The mode of doing this is pointed out in the patent No. 205,144, before referred to. !tis further stated, in the specifica-o tionsj that in the of the invention the applicants had made use of paper, and also wood carbon; also that they had u:::ed conductorsofdifferel1t shapes, such a,s V-shaped,ittid .with recta\1gular Cor· ners, but preferred the arch-shaped,' as shoWn'iil)the drawings. Ins added that a description of the;mode of making the illuminating carbon of this improveconductors described, "andtna:kitlg the ment," was unnecessary ,.as theycduld be made, by anyone skilled in the ,art, by theordiuary well-knowD methods in praetice. The speCification thengtatestne proposed Oftheal'ched form of the conductor; :by· its perrnittingthe earbonto expand and contract,' and casting lesssbadow;a1ldtheadvantage ofmakifig the wa1l6fth'e lamp
CONSOLIDATED lf4-ECTBW LIGHT CO. 11. M'XEESPORT LIGHT CO.
23
fore set forth.· (2) The combination, substantially as hereinbefore set forth, of an electric circuit and anincandescinll conductor (If carbonized fibrOllS material, included in and part of said circuit, and a hermetically sealed · chamber, in which the conductor is inclosed. (8) The Incandescing conductor for an electric lamp, formed of' carboniZed papei' bstantially as described. (4) An incandescing electric lamp, consisting of the following elements, in com·bination:Flr.st, an illuminating chamber, made wholly ofgll\sS, hermetically seal&1,al'\dout,of which all carJ>on-colli!uming,gas has b,een exhausted or driyen; · seco1!4, j1n elelltric cirCUit, conductor passing through the glasswall ot said chat,nber, ,a.nd hermetically seal.ed therein, as described; third, an ilIuminat· 109 conductor In said circuit, and fotming part thereof, within said chamber, consisting of carbon made from fibrous or textile material. having the fol'tn of anarch or loop, SUbstantially as described, for the purpose specilied. "
wholly of glass, by its preventinK oxidation, leakage, etc·· and states particularly the advantages resulting from the manufacture of the carbon from vegetable fibrousor textile material,instead of mineral or gas carbon. "Among them," it says, "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 du:rability.· " "We have used;" it is added, "such burners, inclosed in hermetically sealed, transparent chambers, in a vacuum, in nitrogep gas, and in hydrogen gas, but we have obtained the best results in a vacuum, desideratum being or an attenuated atmosphere of nitrogen gas; the ,to exclude oxygen or other gases, capable of combining with carbon at high temperatures, from the incandescing chamber, as is well understood." The patent has four claims: "(1) An incandescing conductor for an electric lamp, ot carbonized fibrous or textile material, and of ,anarch. orhorsesboe shape, substantially as hereinbe-
great question in this suit is whether the patent sued on is valid, SQfaJ:',:a!l it involves a general (llaim for theuse"in electric lamps, of incandMcing of fibrous or textile substances. If · it is, the (l9D;}plainant must prevail; if it is, not,the bill must be dismissed, The of the patent (excluCling the third claim, which . the defend,antdoes not use, and which is not in the case) may be sUIllmarized as follo\vs: (1) A conductor of carbon, made of fibrous or textile p)aterial, and of an a,rched form; (2) a conductor of carbon, made of fibrpus. rpaterial, in an hermetically sealed chamber, without regard to form; (3) The combinlcttiolil of a. conductor of carbon, made of fibrous or textile material, in an arched form, and the glass chamber, hermeticaUysealed, and deprived of carbon-consuming gas. The ,claim of the combination last named may be dlijmissedJrom consideration as a separate claim; beAll.use glass chamber, hermetically sealed, for holding ,the Hght, has always been usedt,imd must necessarily be used, in all inby candescing Cl;lrbonelectric lamps. .It was useq by King in " Greener a:nd Staite in 1846, ,1>Y Robfrts in 1852, by, Konn in 1$72. by ·Xosloffin 1&7- 5, alld 1>Y others. is valid for the con.,4q.ctor of Cali.p.oll, wade of llQrou,8 textile m\lterial, in an archedf()rm, it cannot be made valid with a
24
FEDERAL BEPOaTER,
ber, hermetically sealed. We are equally of opinion that the giving of an arched form to the conductor was not new, and could not give to the claim any validity which it would not have as a broad claim of the conductor itself, made of carbon produced from a fibrous material. The arched or bent shape in incandescent conductors was applied in 1848 by Staite to an iridium conductor, in 1858 by Gardiner and Blossom to a. platinum conductor, and in 1872 by Konn to a carbon conductor. In the last clUle the conductor was inclosed (as it had to be) in a glass lamp or case filled with nitrogen or other gas incapable of supporting combustion. The carbon, it is true, is presented in a V·shaped form; but in a ,Similar patent, applied for a few weeks afterwards, claiming the same apparatus for the production of heat, the patentee very properly says: "It is evident that fltems of other shapes may be used." If the U or V shaped form had not been given to carbons made in fibrous material, for incandescent light, before Sawyer and Man adopted that form, it was merely'an application by them of an old device to a new and analogous use. But the carbons used by Konn included charcoal, as well as other carbons. He mentions graphite as preferable, but he claims the use of carbon generally. As before stated, therefore, the patent must be conI3trued as making tpe broad claim to the use, in electric incandescing lamps, of all carbons made of fibrous Or textile substances. , Is the patent valid for such a broad claim? The defendant contends that it is not-Jilir8t, because no snch invention was set forth in the original application, but was introduced for the' first more than four years aiter it was filed, and ,after the same material had been used by Edison, and claimed by him in an application for a patenti 8econdly, because Edison, and not Sawyer and Man, was really the orignal and first inventor of an incandescent conductor made of fibrous or textile material 'for an electriclampi thirdly, because, if Edison was not the first inventor, the thing claimed as an invention was old, and neither of the parties was entitled to a patent for it. The whole vegetable kingdom is composed of fibrous material, and all carbop. or charcoal made therefrom comes within the scope of the complainant's claim. Silk is fibrous or textile, and carbon made from silk thread is therefore within the claim. Miner8.l coal, and the carbon produced in p;as-retorts, are not included. Can it possibly be said, when we look at the history of the art of electric lighting,that carbon made from fibrous or textile material was never used for that purpose until Sawyer and Man used it in 1878? We thinl: not. We do not propose to describe in detail the various English patents of prior date which haye been adduced in evidencE.'. The word "charcoal," as well as "carbon," is'constantly used to detine the material from which the conductors were made; and that word, in the English language, prima facie refers to carbon or coal made of wood. We cannot yield our assent t.o the ingenious theory of the complainant's counsel, and some of their witnesses, that the word has come to have an artifiCial or wchnical meaning, in this particular art, signifying gas or mineral carbon. Wethink that carbon made from wood or other vegetable material is gen*,rally In King's patent of 1845 he says:
CONSOLIDATED EI,.ECTIUC LIGHT CO.
v.
M'KEESPORT LIGHT
co.
25
. "The .nature of the invention consists in the application of continuous metallic'and carbon conductors. intensely heated by the passage of a clurent of electricity to the purpose of illumination." "When'carholl is used, it becomes necessary, on acc'ount of the affinity this substance has for oxygen at high temperature, to exclude from it air and moisture. To accomplish this in the most perfect manner, it should be inclosed in a vacuum." He does not confine himself to any particular kind of carbon. It is true, he does afterwardR say: "That form of carbon found on the interior of coal-gas retorts which have long been used, is well suited for this purposej" but his claim is general, for "the application of metallic and carbon conductors, intensely heated," etc., and the Use of wood carbon would have infringed the patent. Greener and Staite, in their patent of 1846, in describing how they prepared the carbon for the incandescing stems in their lamps, say: "We take a quantity of lamp-black, or of charcoal reduced to powder, or of coke reduced also to powder, which has been purified," etc. "The carbon thus highly purified we next bring into a state of great dryness, and then convert it into solid prisms, or in to cylinders; both soUd and hollow," etc. The,charcoal here referred to.is clearly wood charcoal. Roberts, in his patent of 1852, says: II Another part of my invention consists of a mode of obtaining electric light by passing a current of electricity through a thin piece of graphite, coke, or charcoal, orother infusible body, being a conductor of electricity, whilst it is inclosed in a vacuum, or space not containing any,oxygen or other matter, which can cause the or destruction of it, when brought into an incandescent state by the action of the current of electricity." This certainly refers to wQod charcoal. We have already alluded to Konn's patent of 1872, in which he claims carbon stems generally, arranged as specified in the patent, for giving incandescent light. We may add that, in the earliest experiments of Sir Humphrey Davy and others on the effects of the electric current in producing light in various SUbstances, charcoal was one of the most frequent articles used for that purpose. Long prior to 1878 it was a well-known fact in science and the arts that the transmission of the electric current through a pencil ofcharcoal, interposed in a metallic circuit, would produce intense and that when this charcoal was guarded from contact with oxygen, in a vacuum or otherwise, it would not be consumed. This is fully verified, not only in scientific writings, but by the statemeritsfound in several of the .patents referred to. The great desideratum was to construct an apparatus and to discover a process which would make the light economical and convenient of use for ordinary domestic purposes. We are clearly of opinion, therefore, that neither Sawyer and Man nor Edison can maintain any just claim to the exclusive of charcoal generally. in any form, as an incandescing conductor in an electric lamp. This view of the subject is sufficient to decide the present case against the complainants. But there are other considerations which go to corroborate the conclusion to which we have come, which, however, we shall only cur$)dly examine.
26
It is very ,c1eario us that,in the original application for the patent sued on, the applicants had no sucQ object in view as that of claiming all carbon made from fibrous anCi textile substances as a conductor for anincandesoing electric lamp. Nothing on which to base any such claim is disclosed in the original, application. We have carefully compllred wit4 the amended applicl!,ti!ln, on which the patent was issued, and are fully satillfied tbat, after Edi$on's inventions on this subject had published to the world, there was an entire change of base on the part of Sawyer and Man, and that the application was amended to give it an entirely different direction and purpose from what it had in its ol'iginal form. It is true that the last claim of the original was for "an p.1uminating arc, made of carboJ:lized fibrous or textile material." But this claim had special reference to the arched form of the conductor, ratherthan'to the material ofwhich it was composed. And this claim is the only expression hi the application which'even suggests anyexcluSive right to all vegetable carbons, Or any invention or discovery in relation thereto. No advantage io. the use of said 'cal,'bon is anywhere alleged. T4e whole scope and purpose of the application related to the arched f6rm of the 'conductor. 'A'subsidiary purpose was to claim carbon made from paper or pasteboard. They say distinctly: "Our ,improvement consists in the employment of an incandescent arc of carbon in,the circuit llE$ the,light-givirigm'edium,"-Clcarbon" generally, not any particular carbon. By an made in 1885 they say: "Our improvement re,lates, more espe9jally to the inCandescing conductor, com.hination with the other elementsc9m": its substance, its posing the lamp." The purpose of this amendment is obvious, and needs no comment. After eX'phiining the drawings, the original application goes on to say: ' "Our imprOVed burner or arc consists of an arch-shaped or piece of carbon, A, lJl()unted in its clat:llps or supports in th'& usual well-known ways. We have tried carbonizedpapel' covered with pow,;, dered plumbago, wood carbon, or charcoal, and ordinary gas carbon. We have also used such arcs or burners of various shapes, such as pieces with their 'lower emls secured to their respective supports, and with their upper ends united, so as to form an lQverted burner. We have also used arcs of varying contour, that is, with rectangular bends. instead of curvilinear ones, but prefer the arch-shaped, as. the shadow cast by such a burner is less than that produced by other forms of burners. We have used such burners inclose transparent chambers, in a vacuum, in nitrogen gas, and in hydrogen gas. buthaveattalned the best results in a vacuum or attenuated atmosphere of nitrogen; the great desideratum being to exclude oxygen from the combuscbamber. as is well understood·. The operation of ourimprovell!I<Ppara.t\1S will readily be understood from foregoing '.rben come the claims, as follows: , , .· .
/
as forth;8econfl" i.ncandescing arcs,of carbon. in combination with the circuit .of an electric light; third. the combination, su!:>stantially as hereinbefore set forth, of the ci'rcuit of an electric light. an incnndescing arc of carbonized paper. included in the circuit, and a close transparent chamber
,"Fir8t. incandescingl\rcs,foJ: electric lights, made of carbon, sUbstantlaUy
CONSOLIDATED ELECTBICLIGHT CO. V.
LIGHT CIO.
27
in wbicb tb.B llrc is inclosed; fourth, an incandescing are, made qf carbonized fibrous ')r textile material. " Thlil is the whole of the original application, except the formal introduction. The arc is everything. The changes are rung on the arc. The fact is that Sawyer and Man were unconscious that the arc was not new, and supposed that they, could get It patent for it; but, as their eyes were opened, they changed about, and amended their application,and made the material of the conductor the great object,-carbon made from fibrous or textile material. Compare the original with the amended application, as .first stated in this opinion, and this purpose most obviously appears. The carbons mentioned in the original application are merely mentioned by the way, to show that the arched form would apply to all kinds of carbon. "We have tried carbonized paper, covered with powdered plumbago, wood carbon, and ordinary gas carbon." This is charlged in the amended application to the words: "In the practice of our invention, we have made use of carbonized paper, and also wood carbon." The object of this change is manifest. In other parts of the amended specification the importance of vegetable carbon, as distinguished from gas carbon, is dwelt upon. Thus they say in a former paragraph: "Our improvement consists, first, of the combination in a lamp chamber composed wholly of glass, and described in patent No. 205.144 of an incandescing conductor· of. carbon, made from a vegetable fibrous in contradistinction to a similar conductor made from mineral or gas carbon, and also in the form of such conductors, so made from such vegetable carbon, and combined in the lighting circuit within the exhausted chamber of the lamp." The fact that the whole object of the application was changed is evinced by the corrt:spondence of the parties. In a letter from William B. Baldwin, one of the attorneys of the applicants for the patent, to his clients, the Electro. Dynamic Light Company, (who then owned the interest in the invention,) dated January 8, 1880, he says: . "I have this day prepared an application for patent of arched form of an incandescent.carbon electric lamp, made by Wm. E. Sawyer and Alban Man, as joint inventors, containing a request for the issuing of such patent to your company, etc. I will not make any alteration in the claims or specification of said patent, enlarging its scope beyond its intended purpose of covering the arched or angular form of the carbon used for incandescent electric lights. " In a letter from Albon Man, one of the applicants for the patent, to a Mr. Cheever. dated December 12, 1880, he says: III have received your two notes of 11th inst:, inclosing letter from the patent-office, advising Messrs. Baldwin, Hopkins. and Payton of subsUtution of Mr. Broadnax as attorney in carbon arch matter." This had relation to the application in question; Baldwin, Hopkins & Payton being the solicitors in the case, and Mr. Broadnax being substituted in· their place. "Carbon arch matter" are words that could hardly be more Buggestiv:e. As· before stated, Edison had filed an application for a patent in December, 1879, about a month prior to the iriquestionj and in September, 1880, an interferenoe was declared be.
28
FEDERAL' REPORTER,
tween the two applications. The controversy raised on this interrerence related principally to carbon made from paper, which Edison claimeu in his appJication. The case was not finally decided until the beginning of 1885. Mr. Broadnax was examined as a witness in this suit, and testified as follows: "After the decision of the commissioner of patents of the interference, awarding priority of invention to Sawyer and Man, I resumed the prosecution of the application, insisting upon our right to the claims that had been once rejected by the examiner, among which was one for the U.shapf'd or loopcarbon illurninant. My attention was then called for the first time by the Elxaminer to the British patent of Konn, in which is shown an arch-shaped carbon ilIuminant, and Vlhich, as I thought.'anticipated broadly the claim for the U-shaped or arch-shaped carbon illuminant; and then, in the discussion of the case with the examiner, my attention was called to t,he patentability of the fibrous carbon illuminant, as such, on account of the properties such carbon possessed, which made it available for electric lighting above all other carbons." BeinJl; asked when this was, he said it followed soon after the decision of the commissioner of patents upon the question of priority, or as soon as he could, in the ordinary course, get the case before the primary examiner again. His best recollection was that it occurred in February, 1885. This testimony of Mr. Broadnax, which is undoubtedly to be relied on, in connection with the letter just quoted, shows that the idea of claiming carbons made from fibrous and textile materials was an after-thought, and was no pilrt of the purpose of the original application. The amendments relating to this new and broad claim were made afterwards, in February and March, 1885. We are of opinion that the changes made in the application in this regard were not justifiable, and that the claim in question cannot be sustained'; There are other aspects of the case, to which we might refer, which operate strongly against the claim of the complainants. Weare not at all satisfied that Sawyer and Man ever made, and reduced to practical operation, any such invention as ,is set forth and claimed in the patent in suit. Their principal experiments were made in 1878, and perhaps the begltming of 1879. The evidence as to what they accomplished in the construction ofelectric lamps is so contradictory and suspicious that we can with difficulty give credence to the conclusions sought to be drawn from it. We are not satisfied that they ever produced an electric lamp with a burner of carbon made from fibrous material, or any material, which was a success. During the year referred to, 1878, and the beginniug of 1879, they applied for and obtained ten different patents (besides An English patent) on the subject of electric lamps; but not one of them contains a suggestion or a hint of any such invention as is claimed in the patent in suit, which was not applied for until 1880. They al11"elate to lamps with straight pencil burners, generally of carbon, butwithout any preference given tJ one kind of carbon over another. The application for the patent in suit was not,made until January 1880,,-nearly or quite a year after all their experiments had and after the inventions of Edison had been published to the