The opinion of the court was delivered by: GALSTON
This is a patent infringement suit involving claims 1, 6, 8, and 14 of patent to Friederich, No. 1,393,520, and claims 1, 2, and 3 of patent to Meikle, No. 1,266,517.
The Friederich patent is for an inclosed arc device and the method of starting it. The application for this patent was filed October 13, 1914, and it was issued October 11, 1921. The original application for the Meikle patent was filed October 9, 1914. That application was then divided, and on January 15, 1916, the application for the Meikle patent in suit was filed, which issued May 14, 1918.
By reason of earlier German applications, the Friederich invention must be regarded as prior to that of Meikle.
It is alleged that the devices of the patents, as well as the infringing bulbs, are used in connection with rectifying alternating current for the purpose of making such current available for use in charging automobiles, radio batteries, and storage batteries, generally. Storage batteries cannot be charged with alternating current, for when the current goes in one direction it will charge the battery, but on reversal of the current the battery will be discharged. These rectifying bulbs, therefore, permit current to pass through in one direction only.
The defenses are invalidity of both patents and noninfringement. On motion made at the trial by the plaintiff, the suit as against Electronic Laboratories, Inc., was dismissed.
Taking up first the Friederich patent, the invention is described as comprising a device in which an arc is operated in an inclosed envelope between electrodes of refractory material, such as tungsten, in an indifferent atmosphere, the electrodes proportioned to be heated to incandescence. One of the objects of the invention was to operate that arc in an envelope of vapor, such as mercury vapor, to render the arc luminous at approximately atmospheric pressure.
Claim 8 of the patent may be regarded as typical. It reads: "An electric arc device comprising a sealed container, a cathode of refractory material adapted to support at incandescence an arc discharge while remaining substantially intact, a co-operating anode, a filling of material having at the operating temperature a gaseous pressure of the order of magnitude of atmospheric pressure, and means for independently heating the cathode to incandescence."
It is contended that the Friederich patent is neither shown nor described as a rectifier, and more particularly that it is not capable of such use, and that there has been no commercial acceptance thereof.
Did Friederich disclose a rectifier? Professor Webb, plaintiff's expert, admitted that before Meikle could adapt the Friederich lamp as a rectifier important changes had to be developed therein. Interrogated in cross-examination, the following important considerations developed:
"XQ40. And as shown and described, it is not adapted for use as a rectifier, is it? A. No.
"XQ41. Now, I am particularly interested in the changes, the physical structure changes that must be made in the disclosure of the Friederich patent in order to produce a rectifier. And the first one that I think you mentioned was that you had to take steps to prevent disintegration of the anode electrode, is that correct? A. Not quite correct. You will have to take steps to prevent the anode becoming sufficiently hot so it can, on the reversal of the potential, become the cathode. It is a matter of temperature. In the Friederich device, although the anode does become the cathode, it does not disintegrate because the gas pressure is sufficient to protect it from disintegration.
"XQ42. But as disclosed in the patent, then, I gather from your last statement, the Friederich structure could not be successfully used as a rectifier, is that right? A. The design of the anode is not right. The design of the cathode structure could be. As a matter of fact, they are the same in the two.
"XQ43. As shown, because I take the Friederich patent to disclose a complete structure, as shown in Fig. 1, for example, could that device act as a rectifier successfully? A. No.
"XQ44. Getting back to your suggestion as to what would have to be done in order to enable it to be used as a rectifier, you would have to make the anode so large that it could not act alternately or at any other time as a cathode, is that right? A. Yes."
Now the defendant's devices are rectifiers, and since they are coated with a mirror of magnesium they cannot be used as lamps. Thus the query is presented as to whether these devices, which might fall within a literal reading of the Friederich claims, can be held to infringe. Friederich described an arc lamp, not a rectifier; defendant sells a rectifier and not a lamp. Friederich's device cannot be used as a rectifier; defendant's device cannot be used as a lamp. The principle involved in the Friederich invention is not the principle of the defendant's device. It is, of course, true that a patentee is not compelled to set forth in his specification all possible uses of his invention; but such a concession does not help the claim of infringement urged herein. The matter would be altogether ...