The opinion of the court was delivered by: CAMPBELL
CAMPBELL, District Judge.
This is an action in equity for the alleged infringement by the defendants of patent No. 1,536,844, issued to Ward Harrison and John H. Waterbury, assignors to General Electric Company, for Lighting Unit, dated May 5, 1925, on an application filed September 6, 1922.
The defendants have interposed by answer the defenses of invalidity and non-infringement.
This patent was duly assigned by General Electric Company to the plaintiff, which is the owner thereof.
The plaintiff is a Connecticut corporation, with its principal office at Meriden, Connecticut.
The defendant, Bright Light Reflector Co., Inc., is a corporation organized under the laws of New York, with its principal place of business in Brooklyn, New York.
The individual defendant, Isaac Litner, is the owner of all of the stock of the defendant corporation, and at the time of the filing of the complaint, he was the sole director of the corporation's affairs, and directed the manufacture of the device alleged to infringe the patent in suit.
After this suit was begun, a disclaimer was filed in the United States Patent Office, relating to claims 2, 3 and 4, and limiting the globe recited in such claims to a diffusing globe.
Defendants contend that the matter disclaimed was not included through inadvertence, accident or mistake, but that contention is not sustained.
There was no disclaimer as to claim 1, only as to claim 3.
There is some doubt in my mind whether the disclaimer was absolutely necessary, because it seems clear to me that the stated combination of claim 3 would serve no particular function unless the globe was of diffusing glass, and the plaintiff might have relied on the doctrine that claims may properly be limited if they are drawn too broadly to the disclosed invention. Smokador Mfg. Co. v. Tubular Products Co., 2 Cir., 31 F.2d 255, 257.
The disclaimer was properly made.
Defendants contend that there was unreasonable delay in filing the disclaimer, and cite Hailes v. Albany Stove Co., 123 U.S. 582, 8 S. Ct. 262, 31 L. Ed. 284; Ensten v. Simon, Ascher & Co., 282 U.S. 445, 51 S. Ct. 207, 75 L. Ed. 453.
No court had previously passed on the validity of the disclaimer, and no authority is cited which holds that there has been unreasonable delay in disclaiming, unless a court has previously passed on the validity of the disclaimed claim.
Hailes v. Albany Stove Co., supra, was decided not on the matter of delay, but on the fact that the disclaimer was used to change the invention disclosed.
Ensten v. Simon, Ascher & Co., supra, was decided on the matter of delay, which had been for a period of two years after a finding of invalidity.
This suit was based on claim 1 and claim 3 of the patent in suit, claim 3 being written as it reads after disclaimer, which claims read as follows:
"1. In a lighting unit, the combination of a substantially vertically disposed incandescent lamp and a support therefor, a light diffusing globe substantially inclosing said lamp and an opaque reflector positioned over and partially inclosing said globe, said reflector being recessed to allow the transmission of a substantial portion of light in substantially vertical directions through its upper portion, means for supporting said reflector and supporting means engaging said globe through said reflector."
"3. In a lighting unit, the combination of a diffusing globe and an opaque reflector of larger diameter than said globe positioned over the same and extending downwardly therearound, said reflector having passages extending three-through below the upper edge of said globe for allowing the transmission of a substantial portion of light through said reflector from said globe."
It hardly seems necessary to describe at length the defendants' infringing unit, Exhibit 5, as that is almost a Chinese copy of the plaintiff's unit, Exhibit 7, which is almost an exact reproduction of the unit of the patent in suit.
If the patent is valid, it is infringed.
What defendants think of the patent in suit is clearly shown by the fact that, in spite of the contention of the defendants that the patent is invalid, as lacking in invention, yet with all of the prior art to choose from, the defendants' alleged infringing device is almost an exact reproduction of the device of the patent in suit.
The patent in suit has had substantial commercial success.
The plaintiff having not only successfully manufactured and sold considerable quantities of the patented unit, but having received more than $43,000 in royalties from its six licensees, all of which licenses as the evidence shows were negotiated independently in good faith and are still in force. There has been such general acquiescence that this is the first suit which plaintiff has been obliged to bring to compel respect for its rights.
The claimed invention of the patent in suit is a complete lighting unit for industrial use; that is the combination of a light source, such as an incandescent lamp bulb, inside a diffusing globe which substantially encloses the bulb, and an opaque or metal reflector surrounding the globe and extending well down around the globe, with openings in this reflector located below the upper edge of the globe, so that diffused light will be transmitted from the globe through these openings to the ceiling above the reflector, and thus break up the sharp contrast between the brilliantly lighted working plane beneath the unit, and the otherwise intense darkness above the unit.
There are set forth in the patent in suit the reasons for and the advantages of the illumination of the ceiling when a metal reflector is used, as is usual in industrial lighting, but they are better expressed in the prior Minor patent, No. 1,345,796.
In that patent the patentee says: "Metal reflectors are used extensively in industrial lighting because of their unbreakableness as well as because they shield the bright concentrated light sources usually installed in manufactories and such places. Such reflectors usually direct all of the light into the lower hemisphere and leave the ceiling dark or illuminated only by light reflected back from the lower hemisphere, which is ordinarily dark colored and of a non-reflecting character. The unilluminated ceiling is in sharp contrast with the brightly lighted working plane and this contrast produces eye fatigue in those workmen who may have occasion to look up from their work. Besides the physiological effect there is an adverse psychological effect, caused by the unpleasant ...