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use of a shunt in connection with the measuring instruments for such large currents had been found, although the necessity for such an instrument was thoroughly appreciated, and many electricians all over the world attempted to invent one. In actual practice, no shunt at that time was used. The measuring instrument was applied to the entire current, but the result was unsatisfactory. The measuring instruments were complicated, inconvenient, and expensive, and the measurements which could be made by them were inaccurate and unsatisfactory. The essential problem in discovering a shunt which could be used with a powerful current was not electrical, but thermal. The question was how to avoid excessive heat at the shunt. The efforts, previous to Weston's, to solve the problem, consisted substantially in attempts to construct a shunt which should have a sufficiently large resisting mass to heat slowly, with various appliances or methods for keeping it cool. Weston's invention consisted in constructing a shunt consisting of short plates of high resistance, arranged with air spaces between them, and directly connected with massive terminals, the object being to have the heat generated in the short plates of high resistance rapidly removed by the joint action of radiation through the massive terminals and the cooling influence of the air. Instead of making the plates of high resistance long, so that they would heat slowly, they were made short, so that they would heat quickly, but, being inserted in massive terminals at each end, consisting of a metal of less resistance, and being surrounded by air, the heat was dissipated quickly. The heat generated in the short plates of high resistance reached a certain degree of temperature very quickly, and thereupon substantially all further heat was effectively dissipated, so that the degree of heat in the plate of high resistance quickly became and remained substantially uniform. The result was a shunt capable of successfully measuring an electric current of enormous power. The instruments manufactured under Weston's patent immediately entered into substantially universal use in all large central electric power and light stations, and have ever since been used almost exclusively as ammeters of large electric currents.
The defendants claim that Weston's patent was invalid for want of invention, claiming that he borrowed all the ideas in his shunt from shunts previously patented or described. The defendants pleaded in their answer that the invention had already been disclosed and patented in certain patents, naming about 70 United States patents and 13 French patents previously issued to Weston, and 98 American patents, 41 English patents, 22 French patents, and 4 German patents previously issued to other persons. The answer also alleged that the invention was described in about 50 enumerated publications. The defendants have given in evidence a few of these patents and publications, and in their brief rely upon a previous patent for a shunt issued to Weston, and other shunts known as the Queen shunt, the Edison Shunt, the Anderson shunt, the Franklin Institute shunt, the La Roche shunt, and the Vienna and Munich shunts. An elaborate argument has been made that Weston's shunt in suit is the same in principle as all the other shunts, but, in my opinion, it is radically different in principle. The basic idea of a shunt, of course, is fundamentally the same; that is, some metal of higher resistance than the conducting metal is inserted.
for the purpose of shunting off a portion of the current. But all the shunts relied upon by the defendants were shunts which made no use of the methods which Weston used to dissipate the heat in the case of a large current. None of them had struck upon the idea of making the plates of high resistance short, so that the heat in them would be rapidly absorbed by the terminals, and none of them had hit upon the idea of making the terminals massive, so that they would radiate a large amount of heat rapidly from the plates of high resistance. I think that Weston's patent not only embodies invention, but that it embodies invention. of a very high and superior order. It adopted a method of dissipating heat which was not only novel, but was in a line entirely opposite to the direction in which all other electricians had been working. The defendants lay especial stress upon the case of the Weston patent, No. 496,501, for a shunt. This patent was applied for on the same day as the patent in suit, but was issued about two weeks earlier. The defendants contend that it is, therefore, an underlying patent, which claim, under the authorities, I think is correct; and that it is a patent for the same invention as the patent in suit, which claim, in my opinion, is entirely incorrect. The earlier patent makes no claim for short plates of high resistance joined with massive terminals as a method of dissipating heat. The defendants also seem to place great reliance on the Franklin Institute shunt as having anticipated Weston's invention, but I cannot see that it anticipated it at all. It was a shunt; but its plates of high resistance were long, not short, and its terminals were not massive. It was an instrument designed for laboratory use. It was not calculated for commercial use, and was never in fact employed, and is impracticable to be employed, for practical commercial purposes. The so-called La Roche shunt is admitted by the defendants' counsel to be further from Weston's invention than the Franklin Institute shunt; and, in my opinion, the so-called La Roche shunt and all the others that have been referred to have nothing in common with the Weston shunt in suit.
The defendants allege that Weston did not comply with the statute requiring his invention to be described in such full, clear, concise, and exact terms as to enable any person skilled in the art to make it. Great stress is laid on the fact that the claims of the patent do not specifically state that the plates of high resistance should be short, or designate the exact length or size of the parts of the shunt. It is true that the invention must be stated in the claim, and must be fairly included within it. But the claim must be read in the light of the specifications and drawings; and if the invention, as a whole, is fairly stated in the claim, and the claims, with the specifications and drawings, enable a person skillful in the art to construct the thing invented, the patent is sufficient. In my opinion, the claims in this patent sufficiently describe the invention, and all the parts of the patent read together afford a sufficiently clear and exact description of the thing invented to enable a person skilled in the art to construct it. The fact that no precise dimensions of the short plates or the massive terminals are given is certainly immaterial. The length of the plates of high resistance and the size of the metal terminals must necessarily vary to some extent with the size and force of the current and the circumstances under which
the shunt is to be used. Under such circumstances, absolute precision. was not feasible or necessary.
The defendants allege that La Roche, the president of the defendant F. A. La Roche Company, made public use of the invention more than two years before Weston's patent was applied for. La Roche testified that he constructed in or about 1884 an instrument called a "voltmeter" and a shunt, and that from about 1884 until about 1888 or 1889 he used this shunt in connection with this voltmeter as a measuring instrument, for the purpose particularly of testing storage batteries, at his workshop in Germantown or Philadelphia. In my opinion, the shunt in question does not embody Weston's invention, and, even if La Roche's testimony as to the use of this shunt in 1884 and afterwards were true, it would not prove a prior use of Weston's invention. But if the shunt produced by La Roche embodied the principle of Weston's invention, I am entirely convinced that La Roche's entire testimony as to the use at any time between 1884 and 1893 of the shunt which he produces is incorrect. A very large amount of testimony has been taken bearing upon the accuracy of La Roche's testimony, which it is unnecessary and impracticable to consider in detail. The evidence establishes, in my opinion, that the instrument called a "voltmeter" was formed by putting together a number of instruments or parts embodying different inventions, none of which had been made or was known to electricians before Weston applied for his patent; that it would have been a marvelous and almost impossible thing for the most skillful electrical inventor at that time to have devised such an instrument; that La Roche is a man not only without any scientific education, but without even the ordinary electrical knowledge of a skillful electrical mechanic; that his reputation for veracity is bad; that his shunt never was used as a measuring instrument in connection with his voltmeter between 1884 and 1889; that the various pieces of apparatus constituting the voltmeter were put together by La Roche after the issue of the patent in suit to Weston, with the object of being used in support of his own untruthful testimony to be given in this and other suits for the purpose. of attempting to invalidate this and other patents issued to Weston; that a part of the apparatus contained in the said voltmeter are two magnets, which are so arranged that their poles neutralize each other; that, as a result, it is impossible for a current of electricity, in passing through the instrument, to move the coil; that therefore the instrument is, and always has been, entirely inoperative, and the shunt could not have been used as a measuring instrument in connection with it. In short, I cannot avoid the conclusion that the testimony of La Roche in this case was deliberately and intentionally untruthful, and that to support it he deliberately fabricated an instrument to be used upon this trial and other trials involving Weston's patents. It was a careful, premeditated, and elaborate attempt by untruthful testimony, fortified by fabricated exhibits, to deprive Weston of his just rights in his inventions, to impose upon this court, and to pervert the course of justice. I direct that the evidence and exhibits in this case be submitted to the District Attorney, in order that he may take under consideration the question whether a prosecution should be brought against La Roche for perjury.
The evidence of La Roche as to the use of this shunt in the 80's is corroborated by two witnesses-Toplis and Hanks. I am satisfied that their evidence is incorrect, but I am not satisfied that it was willfully untruthful. It may have been mistaken. I think it is proper, however, that the question of their truthfulness should also be submitted to the District Attorney.
Complainant's counsel claims that the damages in this case should be increased under the statute on the ground that the defense has been unconscionable. I think that that question will properly arise on the coming in of the report on the accounting.
My conclusion is that there should be a decree for the complainant, granting a perpetual injunction, with costs and disbursements, and a reference to take an account of the damages and profits.
WESTINGHOUSE ELECTRIC & MFG. CO. v. MONTGOMERY ELECTRIC LIGHT & POWER CO.
(Circuit Court, N. D. New York. June 18, 1904.)
1. PATENTS-INFRINGEMENT-ELECTRICAL CONVERTERS.
The Stanley patent, No. 469,809, for a system of electrical distribution, is infringed by a converter in which the length of the primary coil is substantially that of the converter of the patent, and required by the so called "Stanley Rule," although the length is not ascertained by the use of such rule, which is not a part of the claims of the patent.
In Equity. Motion for a Preliminary Injunction.
The patent in suit, No. 469,809, was granted to William Stanley, Jr., March 1, 1892, for improvements in systems of electrical distribution. The patent has been considered and sustained in this circuit in the so-called "Saranac Case" (C. C.) 108 Fed. 221, affirmed in 113 Fed. 884, 51 C. C. A. 514. The patent was also considered by the Circuit Court for the District of Massachusetts in 117 Fed. 309, and by the Circuit Court for the Southern District of New York in 119 Fed. 365.
J. Edgar Bull, for complainant.
COXE, Circuit Judge. To what was said at the close of the argument but little need be added. It is agreed by counsel that the only question to be decided on this motion is the following: Does the defendant use a length of wire substantially equal to the length of wire prescribed by the Stanley patent? In other words, it was admitted at the argument that in this circuit the question of infringement is the only one left open for discussion and that it must be determined in favor of the complainant if the foregoing question be answered in the affirmative.
The specification of the Stanley patent says:
"The first thing to be determined is the length of the primary wire. This should be of such length that reacting self-inductively upon its own magnetic current the average counter-potential so produced approximately equals the potential applied to the primary circuit. When so constructed, an ammeter will practically show no current when the secondary circuit is opened."
It was conceded by counsel for the defendant, in response to a question by the court, that if this direction were followed the correct length of wire would be obtained. In other words, if wire be wound on the primary coil until the ammeter practically shows no current when the secondary current is opened the result will be the invention of the Stanley patent. But counsel insists that this method was previously shown by Zipernowski and Deri and, therefore, that the patent is anticipated.
Several answers suggest themselves but at the present time it is sufficient to say that the courts of this circuit have decided that the patent is not anticipated by the Zipernowski and Deri publication. The Circuit Court says:
"The article in question imparts no information upon the one subject which is the all essential feature of the Stanley invention, namely, the length of the primary wire and the method of determining the same."
The Circuit Court of Appeals says:
"Concededly the man skilled in the art would not have found in that art anything which would have told him precisely what that length of wire should be. * But when the patentee in his claim enumerates as one element of his combination a wire of a length which will accomplish the result sought to be achieved, and his patent discloses a method for determining that length with mathematical exactness, his clain may be fairly sustained for the length thus shown."
It would seem, therefore, that the argument that the method for ascertaining the length of the primary wire as pointed out in the specification is vague, uncertain and indeterminate, cannot be maintained. We have, then, a clear statement that existing difficulties can be remedied by regulating the length of the wire on the primary coil and a simple method of ascertaining that length. In view of all that has been decided by the courts of this circuit it cannot be contended that the so-called "Stanley Rule" is a part of the claims involved. The essence of the invention is the length of the wire on the primary coil and not the instrument or method by which that length is determined. If this were otherwise any one who reaches the same result by a different method will escape infringement. The court is not prepared to say that a combination can be appropriated by one who adopts a different rule for the measurement of one of its elements from that pointed out in the patent. As was said by the court in the Orange County Case, 119 Fed. 365:
"It seems to this court that the Court of Appeals found that the claims of the patent were for a combination of the elements therein set forth, of which one element was a primary coil having a length of wire equal to what would be found to produce the indicated results when applying the Stanley rule; and that the claims were sustained for a combination of the enumerated elements into a converter, not merely for a process of determining one of those elements."
Coming now to the question of fact, as indicated above, the court cannot resist the conclusion that it must be answered in favor of the complainant. It is not pretended that the length of wire on defendant's coil was ascertained by an application in each instance of the Stanley rule, but it is established that the length required by that rule