The opinion of the court was delivered by: CAMPBELL
CAMPBELL, District Justice.
This is an action brought by the plaintiff for the alleged infringement of Patent No. 2,179,161 issued to Edward Rambusch and Victor G. Anderson for Illuminating Device, granted November 7th, 1939, on an application filed August 18th, 1938.
The defendant has interposed the defenses of invalidity and non-infringement, and file wrapper estoppel.
Plaintiff is the owner of the patent in suit, and the required notice was given.
Plaintiff bases its action only on Claims 19 and 20.
The patent in suit is for an over-ceiling downlighting device, one of the principal elements of which is an auxiliary reflector, which the patentees called a "shovel".
The patentees said in their specification, with reference to the invention claimed in Claims 19 and 20.
Another object of this invention is the creation of illuminating devices adapted to attain the first two objects hereinbefore recited and, which because of additional structure of appropriate shape and outline, incorporated therein will direct light upon a certain additional surface or surfaces of predetermined outline; and, which additional structure may be so positioned therein as to cast additional light upon at least a portion of the illuminated surfaces mentioned in the second object hereinbefore recited, or not, as desired."
They further in their specification, in describing Figs. 3, and 5, said
"Fig. 3 represents a view similar to that of Fig. 1 of a possible variant and modified embodiment which likewise casts light downwardly, and because of the presence in the device of this view of a certain additional structural element, a further lighting effect is cast diagonally down to one side.
"Fig. 4 represents a sectional view taken along the section line 4-4 in Fig. 3 looking in the direction of the arrows.
"Fig. 5 represents a diagrammatic perspective view similar to that of Fig. 2 in which there is shown in full lines a device of the character illustrated in Figs. 3 and 4 and by dotted lines the imaginary outlines of the light beams produced thereby, and, further by dot and dash lines the imaginary outlines of the patterns that such light beams effect upon the surfaces being illuminated by this device."
They further said in their specification "The present invention, in the main, is directed to the casting of light either generally downwardly, generally diagonally down to one side or both, towit: to certain lighting effects which, as a matter of convenience, we hereinafter respectively refer to either downlighting, side-downlighting, or back."
It seems clear to me that while the claims in suit are each for a combination what the patentees really described and claimed as a necessary element in the patent in Claims 19 and 20, which alone are in suit, was an auxiliary reflector, which they denominated a "shovel".
Plaintiff contends, and I believe rightly, that the name shovel, as applied to such reflectors, was a name of its own choosing, and not one colloquially used in the trade. That, however, does not seem to be important, as we are not concerned merely with names, but rather with a consideration of the facts and the surrounding circumstances.
The resemblance of the auxiliary reflector to the concave blade of an ordinary shovel would certainly lead to the belief that such descriptive name was colloquially used, but it is not supported by proof, but I will, for more easy comparison, use the word shovel in parenthesis, after the word reflector in describing or referring to other patents and the defendant's accused device.
The patent states the function of the shovel to be to direct light rays diagonally sidewise on a side wall of a room, "if in position to intercept the same". Considered so broadly I cannot see that the alleged invention shows any more novelty than does any reflector-type downlight located near a wall.
The patentees were not, as the plaintiff contends, pioneers in the field of overceiling downlighting. See Allgemeine German Patent 304,598.
The patentees were not the first to devise a reflector (shovel) of any kind, and the patent in suit does not cover all kinds of reflectors, shovels or mirrors, but is limited to the shovel described and claimed, this will be apparent when the prior art is analyzed.
Claims 19 and 20, which are the only claims in suit, read as follows:
"19. In an illuminating combination a ceiling having an aperture therein, a side wall and means above said aperture for illuminating a substantially rectangular area on said side wall, said means including a source of light mounted above the aperture and a reflector spaced apart from said source of light and disposed so that the lower edge of such reflector falls adjacent the plane of said aperture; said reflector having such reflecting surface as is generated by rotating a part of an ellipse, the foci of which are at the theoretical center of the source of light and the center of the aperture, respectively, about the imaginary line joining such points through an angle predeterminedly limited to accord with the width of the rectangular side wall area to be illuminated by such reflector."
"20. The structure recited in claim 19 characterized in that the reflecting surface of the mentioned reflector is that segment of a zone of an ellipsoid, the upper edge of which lies in an upper plane perpendicular to the mentioned imaginary line adjacent th eminor axis of the mentioned ellipse, the lower edge of which lies in a lower plane parallel to the last mentioned plane and perpendicular to the mentioned imaginary line adjacent the plane of the mentioned aperture, and the respective side edges of which are defined by the prolongation past the center of the aperture of two side planes, defined by the right side edge of the side wall area to be illuminated and the center of the aperture, and the left side edge of the side wall area to be illuminated and the center of the aperture, respectively, until such side planes intersect the zone of the ellipsoid of which said segment is a part."
It will be sufficient to consider Claim 19, as the decision on Claim 19, on the record in this case, would of necessity be the same for Claim 20, which distinguishes only in merely adding further limitations as to the dimension of the shovel.
The following limitations, which are important in the instant suit, are found in Claim 19 and whether they be self-imposed, or required to avoid the prior art, if they be not found in the defendant's accused device there can be no finding of infringement.
"means above said aperture for illuminating a substantially rectangular area;"
"the lower edge of such reflector falls adjacent the plane of said aperture;"
"said reflector having such reflecting surface as is generated by rotating a part of an ellipse,"
"the foci of which are at the theoretical center of the source of light and the center of the aperture, respectively,"
"an angle predeterminedly limited to accord with the width of the rectangular side wall area to be illuminated by such reflector."
The aim of the alleged invention is to provide a device "for illuminating a substantially rectangular area on said side wall." To accomplish this the side wall must lie close enough to the light-emitting aperture of the fixture to be within the normal visible range of the light rays, as the shape of the shovel will determine the light beams to be reflected to define the area to be illuminated.
This seems to me to be clearly established, and it makes the question of visibility material as the patentee Rambusch was doubtful of the effect ...