Appeal from the District Court of the United States for the District of Connecticut.
Before L. HAND, SWAN, and AUGUSTUS N. HAND, Circuit Judges.
These three suits were tried and decided together, and the appeals were taken and argued at the same time. They concern three patents issued to Joseph Sachs, and all cover devices for housing electrical switches and fuses, and their wiring. The first was to keep inclosed against interference by unauthorized persons everything except the fuses which lead from an electrical meter to the fixtures which consume the current. These will at times blow out, and it is convenient that the customer shall have access to them, so that he may put in new ones. Everything else ought to be beyond his power to reach, both for his own safety, and because he might otherwise steal the current by by-passing the meter. The wires leading to the meter, their switches and the fuses which are often put there as well, are called the "service-side" of the installation; the wires leading from it, including the switches and fuses always put on this side, are called the "load-side."
The first patent disclosed a metal box which contained the "service-side" wires with knife-blade switches, which could be actuated from outside the box, fuses carried by the blades, and holes in the blades, expressly provided for use in testing the meter, of which more hereafter. These were housed in the upper part of the box which the meter surmounted. A little more than midway down the box was a solid horizontal partition through which the "load-side" wires passed to the "load-side" switches, also knifeblades, carrying fuses on their blades, on which there were also terminal testing holes. When the front was open, the box thus presented two compartments unconnected, except where the "load-side" wires passed through the horizontal partition. Over the whole front the patentee placed a metal cover to be locked in place, which would keep out any one who did not have the key or break the seal, except that opposite the "load-side" fuses there were holes in the cover of substantially the same bore as the fuses, through which they passed and which made them available to the consumer in case of a blow-out. He could not, however, reach anything but these, and this was one object of the invention.
Meters must be tested and during the test the consumer must still be supplied with current. This is done by attaching a wire, called a "jumper," from a "service" to a "load-side" terminal, thus by-passing the meter. The test meter is then put into the circuit; for this it is necessary that there be a gap, which may be on the "load-side," and perhaps also on the "service-side" (Swallow & McCoy, 927,384), though this the plaintiff denies. As we have said, the patent discloses switches in both "service" and "load-side," whose movable blades carry fuses; in these blades there are the holes to which the "jumper" can be plugged, after which both switches can be opened without interruption of the circuit, with both fuses still in place for purposes of safety. The testing meter is, normally at any rate, inserted in the gap caused by opening the "load-side" switch. The disclosure thus provides specific means for testing.
Of the prior art we need consider only the patent to Wurdack, 1,041,398, his catalogue, and the so-called "Baltimore Use." Taking up the last first, we may dismiss it, since it was not a single housing containing the "load-side" fuses with the "load-side" switch and the "service-side" fuses. Again, it had no "service-side" switch at all, and while this may not have been necessary, the patent prescribed it and the defendant has seen fit to use it. If there was anything of merit in the invention, it consisted in assembling all the switches, fuses and wires into one compact housing. This had been tried several times before, and when Sachs succeeded, as he did, in producing a unitary device, portable as such, with all the necessary details, which gained a very extraordinary popularity, it seems to us that the testimony of the past overcomes any inherent doubts we might have, based upon the apparent ease and inevitability of the changes he made. We should have to disregard settled doctrines to treat the installation at Baltimore as an anticipation.
Wurdack's patent is closer, and with his catalogue, the nearest in the record. We have held catalogues to be printed publications within the statute, when their distribution is adequately proved, Jockmus v. Leviton, 28 F.2d 812; and while the evidence here leaves something to be desired, we are content to accept the catalogue as a reference. It disclosed a single housing with a cover which could be taken off, exposing the whole inside. In the cover was a door which the consumer might open, and which made accessible the "load-side" fuses, eight in number. It however also showed some of the terminals, and was not, like Sachs', confined to the fuses alone. This of itself would not have been important, as appears in our consideration of the third patent, but it was possible for a person, expert in such matters, to make attachment between a "load-side" and a "service-side" terminal and so by-pass the meter, stealing the current. This would have been a troublesome job, no doubt, and often unsuccessful, but the possibility was there, whose avoidance may well have had something to do with the success of the patent in suit. It is true that it would have been a simple thing to put a horizontal partition above the "load-side" fuses, which would have prevented access to the "service-side" terminals. However, we cannot judge an invention by the ease with which the prior art may be changed, once the idea is conceived. It seems to us that the absence of the partition assumes importance if one considers the relative success of the two disclosures. Wurdack's housing was not accepted; Sachs' has gone into immense use.
Be this as it may, there was no provision for testing the meter in either Wurdack's patent or his catalogue. That it was possible to make a test with his device is probably true. Terminals could be found to which the "jumper" could be attached, and a gap could be made by the "service-side" switch in which a testing meter could be inserted. But there was no "load-side" switch for that purpose, and while we are not clear why it could not be inserted in the "service-side," the patent disclosed it in the other form, and the defendant has followed the disclosure. Wurdack's invention did not therefore have any means for testing, but left this to the ingenuity of the trade. It does not appear that this was so obvious as to make the specific provision for it a mere redundancy, or a matter of convenience. Even so, no one had thought to do it before. It seems to us therefore that the earlier efforts which did not go so far, and the surprising success of the patent, ought to overcome any doubts arising from the apparent simplicity of the changes, at least against literal adoption such as the defendant's.
There remains the question of the disclaimers. Pending the suit the plaintiff filed a disclaimer to claims seven and ten, so as to exclude from them all but devices in which the "load-side" switch contained a fuse which should alone be accessible without opening the door. The figures showed this and the specifications described it in this way (page 1, lines 55-57; page 2, lines 53-58; page 3, lines 100-103; page 4, lines 53-62; lines 108-114). We doubt that the disclaimers were necessary at all; claims seven and ten in saying that the "service-side unit" was to be "inaccessible while permitting access to the fuse of the 'load-side' unit" could by implication mean that the rest of the "load-side" was inaccessible. It is quite true that more than the fuses was shown to be accessible in some of the figures, but some, especially, of the language cited (e.g., lines 53-58; page 3, lines 100-103; page 4, lines 111-114), seems to indicate that one form was intended to prevent a customer from reaching anything but the fuse. When the specifications themselves distinguish between alternative forms, the patentee may disclaim one. Strause Gas Iron Co. v. Crane Co., 235 F. 126 (C.C.A. 2); Permutit Co. v. Harvey Laundry Co., 279 F. 713 (C.C.A. 2); Permutit Co. v. Wadham, 13 F.2d 454 (C.C.A. 6); Campbell Metal Window Corp. v. Pomeroy (D.C.) 300 F. 872.
The disclaimer to claim four adds another feature which appears to mean no more than that the "load-side" switch shall carry a fuse which is not disturbed by the movement of the blade. This was the only form shown in the drawings, and the switch was so described. It was disclosed as like the "service-side" switch (page 5, lines 31-36), and the "service-side" switches were to carry fuses on their blades (page 4, lines 127-128). The specifications in the passage cited do indeed say that other switches may be used, but the disclaimer goes no further than to limit the claim to the disclosure, abandoning any implied and undescribed scope. We think the patent valid and infringed and we affirm the decree below.
The next patent was for certain details of the mechanism within a housing for a switch and its fuses. It concerned the connection between a switch blade and a bail bar to throw the blade in and out, the bail being in turn moved by a handle outside the box. The bail bar was connected with the blade by a link of fibrous or other insulating material, but in such wise that the blade might have some side play, so as to accommodate itself for sure entrance into its clip to make the circuit. The specifications described the link as rigidly fixed to the blade with an open hook at its other end to engage the bail loosely, but they defined the invention vaguely as covering either a loose connection between link and bar, a loose connection between link and blade, or a loose connection at both ends of the link (page 2, lines 117-129). The main purpose seems to have been to avoid the familiar cross-head between several blades or links from such blades, which moved the blades together, and which allowed no relative movement between them. This apparently interfered, or was thought to interfere, with the proper seating of a blade if it did not exactly register with its clips. For this reason the blades were held independently and had each its own motion laterally.
There were a number of earlier efforts in the art of like kind. Hope's British patent, 4,397, of 1908, showed a slotted link pivoted on the blade, and by the slot loosely coupled to the handle which threw the switch. In Railing's British patent, 26,009, of 1910, the handle moved the blade at its own pivot, being attached to an axled block to which the blade was also attached, the block being loosely mounted upon the axle. In Wirt, 801,288, two switch blades were loosely connected by a cross-bar near their swinging end which allowed them some accommodation relatively, unlike a cross-head. In Levin, 1,370,656, the blade was loosely engaged near its pivot by a block which was attached to the handle. Each blade thus got independent lateral play to accommodate itself to its clips. Horton, 1,407,416, adds nothing to the rest.
Of the claims in suit, 20 and 21 prescribed that the link should be fixed to the blade, and the disclaimer by the words, "rigidly and fixedly secured," added nothing except to claim fourteen. However, it was valid as to that claim, since the specifications had clearly disclosed alternative constructions, and the situation is like that as to the first patent. In so far, however, as the disclaimer limited the claims to a bail bar which went across the blades, and to a link with an open end, we may assume, though we do not decide, that it was invalid, on the theory that these, though disclosed, are nowhere claimed in the specifications as a constituent part of the invention. However, we do not see that these limitations were in any sense necessary to escape the prior art. A disclaimer is to abandon some part of the invention of which the patentee is not "the first and original inventor." If he has claimed originally too much, so that the claims are invalid under the prior art, the part disclaimed must be clearly separate in the body of the specifications; if he wishes to recast the whole, he must go to a reissue. But there is no objection to his limiting a valid patent ...