CALIFORNIA ELECTRICAL WORXS V. HENZEL.

375

'VORKS 'V. HENZEL.

(Oircuit Oourt, N. D. Oal(fornia. December 7, 1891.)
1.

PATENTS FOR ]NVENTIONS-CONSTBUOTION OF CLA.m-ELECTRIC-LIGHTING BURNERS.

Gu-

S.

In letters patent No. 280,590, issued 'July 27, 1886, to F. Pinkham, as assignee of Jacob P. Tirrell, the claim is for, "in an electric.hghting gas-burner, a magnet for turning t1le gas-cock bY one electricimpUlse, cO!l1bined with a fixed eleotrod,e. a', and a mo.Vable, electrode, c'! normally in contact, and mechanism connecting the armature with the movable Ellectrode. to break the contact between a/ and d t)J,einstant aftar gas is turned OJl,.lLJld OL'CILte a sparkf9rjgnition, substantially as described." In the drawings a' designated a platinuJJ1 point on the fixed and d a small bent arm normll.1ly in contact wltii' the fixed 'electrode. Held, tliat the word and especially 81\, used .In :tile patent, tile platinum or other metll.1 pQints constituting tne poles of the circuit.
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BA.ME-INFRINGEMENT.

The mechanism being otherwise 8ubstantlll.1ly the same,.the fact that defendant'· apparatus which mo;ves direction. while the . patented aPPlloratll!l bas Ii vertical armature, which moves in a horlzontal direction, does Dot prevent Infringement.. , . ,
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B.S,lME-,-P4ST

," When a patent hal been assigned, tOgether wtth all claims for pastlnfringementa, the faeti tnat a person, sued by the'aislilgnee' hli.s11l0t sold: BUyot the infrlnginr art!olell cslll1J8theasaJgnmetlt,and wstifles that helntendll,toliell,no more., wnotsumto Jurisdicti.QD, when it appear. that he still haa them in stiJdk,. and hall publIshed' aeatal0gu6 ol!eringthem for Ble. and that In bis an_er
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In Equity. Suit by tbeCalitorniaEleetrieal Works ,against. George L.lIenzel for in(ri'n'gement of patent. DeCree for injunction anel. an aeP9u,n¥ng. " . ' . " ' , ' , ' " , " ' :lAnghorne & Miller,' , &'j{Wfce, for defendaI1t. ,HAWLiY,J. This isa suit inequityfQrthe irifrlnp;ement of letters patent No: 230,590, granted to' George F. Pinkham, as the assignee of JJl,eob 27, 1880, fqrelectric gas-lighting is tetritqJ'ial grantee. of all rights under the stateoLCahforma. claims that the patent IS vOld,because the bill ,ofcomplaint alleges thatit,was uponthe joint application of the inventor and his assignee. It affirmatively appears by the letters pahmtthatJacob theinventor, made the application for the that, having assigned his right, title,and interest to George F. PinkhaJDl the letters were granted to Sl1W Pinkham. Complainant was allowed to amend his bill so ,as to conform to the proofs in this reBpect.. This obviates the necessity of investigating or deciding thequesan application for ,letters patent can be legally made jointly by' i,nventor and the assignee. ", claims the bill should be' dismissed because the only lnftingeinent shown committed before .theliBsignmellt to the com.that, inasmuch as there is a pla,in, speedy, and, adequat& equity bas no jurisdict1<?n.Tbe question whetperan ·.should be, ill '. upon the, facls pre'senfea in' each particular case. 'Secuoh 723, u. S:,pr9vides

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876

FEDERAL REPORTER,

vol,' 48.

,

,.,t

that "suits in equity shall not be sustained in either of courts of the United States in any case where a,plain, adequate, a:nd 'complete remedy may be had at law." It is well settled that a bill in equity for a naked account of profits and damages against an infringer of a patent oonnotbe sustai.ned. Root N. Railway Co., 105 U. S. 189; Hayward v. Andretl)s, 106 U. S. 672, 1 Sup. Ct. Rep. 544. In order to sustain the jurisdiction in equity, it I;Ilustaffirmatively appear that some ground of equitable jurisdiction exists,or that complainant has not a complete reroedy law for the wrongs complained of. What are the facts? It the evidence that from January 11, 1881, until March 24, California Electric Gaa-Lighting Company held and. owned the patent in. question; that on the said 24th of March, 1888, it assigned and sold to complainant the said leners patent, "together with any and all claims,: demands, andeausesofaction for past infringement upon tha.tdefendaI).,t isa dealer in electrical supplies, and had been so engaged for a period of over eight years; that priortothe month of Mar(lh,18&8, he had sold a number of burners ofthe character and kind claimed to be au hifringe.nentof .complainant's patent; that· he has not February,1888, and hetestifies that he has'n:ot intended sel1inganYJDore of them !linee the 1st day of February,t888; that he still has on hand some of the burners capable of being used at any time; that he a catalogue, and still has it on hand for circulation, aaid burners to the Pllblic; and asserts in his answer that he has the'rightto sell them.' . The assignment to complainant, sufficient to authorize it to recover its claim for profits and for for past infringements prior to the time of its ownership of the patent. In Packer Co. v · EattJli, which was a suit in to restrain from further infringement, this precis!'lquestion was passed upop;; SHIPMA.N,J., in. the course of his opiniop,lilaid: ' took place in this dlstrlct in the year ,1878, while the "The' Martin patent was owned by H.H. Doubleday, who assignedit to 'the plaintiff on April 4, 1tl79; and on June 10, 1879, also assigned to the plaintiff all his right, title, and interest in and to any claims for past infringements of said patent within and throughout the state of Connecticut. ... ... ... The plaintiff, when the suit was commenced, owned the patent, apd owned the entire interest in the claim for profits and damages which ill here sought to. be recovered. and 'has a right, by virtue of such ownership, t<;l in this. suit the profits and damages for infringements committed in this district before it the patent. " 12 Fed. Rep. 870. . Defendant's, pHor infringement, taken in connection with the fact that he still has some oUhe infringing bUrners on hand and advertises them jp his catalogue, is sufficient ,to sustain complainant's tight to equitable relief, the fact that he has not sold any Of them, and tllat1t has not been his intention to sell any, since .February. 1888. Jfanupg A!Zinf!.ton Manuf.'g Co., the defendant claimed It hadceaaed to mfrmgebefore the bIll was filed, and asserted that it did not intend to renew the use of the infringing machine. WALES. J., said:' ., ., . .

CALIFORl-o"l:A ELECTRICAL WORKS V. HENZEL.

377

"It still continues in possession of all the contrivances and appliances to enable it to violate the patent, but promises not to use them for that purpose. This is a naked and unsupported promise. The practice of the courts in fluch cases is well settled. In Woodworth v. Stone, 3 Story, 749. it was decided that a bill for an injunction will lie, if the patent-right is admitted or has been established. without an established breach, upon well-grounded proof of an apprehended .ntention, on the part.of the defendant, to violate the plaintiff's right. A fortiori should an injunction issue where, as in the present ('ase, the defendant has already infringed. and Ilothing but a mere promise stands in the way of its doing so again." 34 Fed. Hep. 324. To the same effect see Walk. Pat. §§ 676. 701j 3 Rob. Pat. § 1191; American Bell Tel. Co. v. Globe Tel. Co., 31 Fed. Rep. 732. Defendant contends that no infringement has been proven. The ification in the patent states that"The invention relates to apparatus for lighting gas by electricity in Which the gas-cock is opened and closed· by electric action upon a mechanicaf device connecting with snch cock and a battery, and in which are employed. in combination with a burner, a stationary metamc arm terminating in a platinum or other metallic point in near proximitytu the orifice in the burner. this arm or electrode being fixed to the burner. and insulated from it, and connected to. Qne· pole of a battery and a movable arm or electrode, which is con!1ected to the other pole of the battety, and pivoted or otherWise connected to the burner, in such manner as, when vibrated, to make and break circuit with the latter, and produce a spark to ignite the gas. In this apparatus I employ two electro-magnets. and a vertically arranged Vibrating armature. connected with the gaS-COCk, and arranged between the magnets, in compination with a movable aud a fixed electrode, the latter being secllredl'igidly to and insulated from the body of the burner, and is connected with a button wired to an eleetric battery, While the burner itself is connected With the oppusite magnet and a battery by a button, thereby making connection with the movable electrode; the whole being so arranged that the movement of the armature. when attracted to one magnet, which is charged from the battery by a pressure and when attracted to the oppoupon its button, serves to open the site magnet, by depolarizing the first· and charging the second 1:lY pressure upon its button, the cock is closed, while, as long as the first magnet remains charged by the pressure tipon its knob, the movable electmde vibrates with rapid intermissiolls, and t:ertain lighting of the gas is therelJy insured. My present improvements consist in the employment of a horizontal SWinging arm attached to the lower end of the vertical gas-cock, this arm being fOt"ked, and straddling an upright bar erected upon the top of a armature, di&pQsed between two pairs of electro-magnets. and caused to vibrate by the closing and opening an electro-circuit from a suitable battery, the vibration of the armature effecting reciprocatioll of the lever and cock. My invention also consists in connecting the armature with the lower end of the movable electrode or arm in such manner that, as the armature moves in one ·direction and opens the cock, it causes the movable electrode to separate from the fixed and insulated electrode, breakiuK the electric circuit. and producing a spark to light the gas; while a reverse movement of the armature closes the cock, and allows the movable arm to return by the stress of a spring, and make contact with the fixed arm." Then follow certain specified· details of constrtlction, wherein referis made to the drawings acoompanying the specification. The claim of the patent alleged to be infringed reads as follows:

378

FEDERAL REPORTER,

vol. 48.

by 'one electric impulse. combined with a tlxed electrode. ar" and amovable

," (1} In lin electrlc.lIghtinggas-burner, a magnet for turning the, gas.cock

electrode ef , normally in contact, and ,mechanism connecting the almature with the movable electrode, to break the contact between a/ and a' the instant after the gas is turned on, and create a spark for ignition, substantially as described...·

The claim sued upon is a claim, and defendant's contention is that the burner of defendant does not have one of theelements of the patented burner. in this: that in defendant's burner the armature strikes the movable electrode by direct contact without any "mechanism connecting' the armature with the movable electrode." In the catalogue defendant specifies that his burner"Contains two electro-magnets. one on either side of the gas-way, which govern an armature by a lever, so that. when an electric current is established through magnet, the arJDature is attracted to that magnet, and the lever turns the stop-cock and the gas. At the same instant the armature comes inoontact with the brellking lever, the electric circuiUs broken at the burner tip.aoti the emitting sparks ignite the issuing gas. When a current of electricity Is sent into the other magnet the armature is drawn to it. thus shutting 01ltbe gas." This degijition, as well, as a comparison of the respective exhibits, shows that,while there are some slight differences in ,the construction of the two burners, their operation and effect are substantially the same. The defendl1nt's contention is that the electrodes of the, patent are not merely the platinum or other metallic points at their upper ends, but they are the entire shaft; of which the metallic point is only a small part; and the defendant's burner spows that the armature comes in direct contact with the lower end of the movable electrode without any connecting mechanism of any nature or kind; and that, inasmuch as that medhanism is one of the elements of the combination of the first claim .n the patent burner, the defendant's burner does not infringe. The controversy touching the qbestion under is prinCipalJy the definition which should be given to'the word Uele{;trode," claiming that the movable.electrode in defendant's burner consists "of a small platinum point attached to the upper end of a brass stem;" and, if this contention is correct, then there is a" mechanism connecting the movable electrode with the armature." Numerous definitions of the word "electrode" have been cited from the various die'tionaries. The Century Dictionary defines it as "a pole of the current from an electric battery, * * * applied generally to the two ends of an open Webster's International Dictionary gives the following definition: "The path by which electricity is conveyed into Or from a solution'or other conducting' medium; (especially',) the ends of leading from the..Bource of electricity, and terthe wires or 'minating in the medium traversed by the currents." These definitions seem to support the contention of complainant. All the other definitions agree that electrodes are simply the poles of an open electric circuit, and that the poles are the ends of the two wires, or the points of the wires. But the patent itself is the best evidence as' to what is meant by

379
the word cc electrode,"_" combined with a fixed electrode, 0:, and a movable electrode, d, normally in contact, andmechltnism connecting the armature with the movable electrode, to break the contact, a' and d, the instant after the gas is turned on.". Now, referring to the drawings., it will be seen that a' designates the platinum point on the fixed arm, and that rf designates a small bent arm, normally in contact with the fixed electrode. From this it appears that complainant is fully justified in calling the two points on the arms the "electrodes," and, applying this definition to the defendant's burner, it is apparent that there is a mechanism connecting the movable electrode with the armature. The fact that the patented burner has a vertical armature, which moves in a horizontal direction, while the defendant's burner has a horizontal armature, which moves in a vertical direction, does not in any manner tend to support the plea of non-infringement. In Electric Co. v. Fuller, which was a suit instituted for the infringement of the first claim of this identical patent against defendant, Fuller, upon a similar burner to the one used by the defendant in this case, Com, J., said: "The defendant's apparatus is the aame in principle, though its construction differs somewhat from the plaintiff's. The magnets have tlleircones parallel with the burner, while the magnets in the patent are substantially at right angles thereto. The movable electrode hasta vertical movement to break the circnit, while the movable electrode in the patent has a laterally Vibrating movement. In defendant's apparatus the armature is. horizontal instead of vertical, and the means for breaking the circnit are somewhat different.! am of opinion, however, that the defendant's apparatus embodies the substance of the patented invention, and that changes in the details of construction should not protect them from the charge ofinfringement. The fact that the main features in the patented apparatus, such as the circuit breaker, single circuit, operatinK the gasoCock directly by the armature. werE! old, should not limit the complainant to the exact form of mechanism found ill the patent. The patent covers an important impl·ovement in the art of lighting gas by electricity, and it should receive a rt'&sonahly broad construction, and those should be held to be infringers who accomplish the same result by substantially the same or equivalent means." 29 Fed. Rep. 517. Complainant is entitled to a decree for injunction and for an &<leounting. Let the usual decree be entered.

DDElUL .JtEl>OBTBB,

vol. 48.

&

LoCK

GERARD V. DIEBOLD SAFE

Co.

Court, E. D. Texas. December 10, 1891.)
PA'l'JIlIlTI I'OR lliYBNTIONs--LrM;ITATION 01' CLAW-BURGLAR-PROOP BAll'BI.

Letters patent No. 246,748, issued September 6, 1881, to Alonzo Gerard, are "an improvement in burglar-proof safes, "and the inventor repeatedly uses this description in the sDeoificatioIlll, also stating that the object is to.provide "a safe" with non-explosive seamll, and that "anv suitable locking device may be operated to throw a bolt on the iuner face of the door · · · which willprevenL the shaft. and handle from being to unfasten the door." The claims are for" a combination. Qf a safe" specified, with a particular locking device described. that the· patent was for a burglar-proof" safe" and not for a burglar-proof" safe lock, ," and hencie was not infringed by the use of a similar device in the construction Qf jail cages.

In Equity., Suit by Alonzo Gerard against the Diebold Safe & Lock Company for infringement. of patent. On demurrer to the bill. Sustained. Fizet Miller, for complainant. H. Po Ring, for defendant.
PARDEE, J. . The complainant's bill is for an injunction and an accounting in the matter of an alleged infringement of a patent. The bill sets forth, in the usual form, that the complainant was the original and first inventor of a certain new and useful improvement in burglar-proof safe locks, patent United No. 246,748, with the usual allegations.B.S to.pri(>r knowledge and prior use. The bill proceeds to charge.. That thedefendant, in:violation of the exclusive right of complainant, without any'!icense, ,at Canton, in the county ofl::ltarke, state of Ohio, has made or caused to be made, sold, and' has used, in the construction of locks upon jail cages,' at divers places. one or more locks embodying the in,vention .and improvements described and claimed in said letters patent; that the said defendant has been notified;' of his said infringement, and requested to desist therefrom,but that he refuses to do so, and persists in the use of said infringing apparatus or locks ,in open disregard and defiance of complainant's !'lxclusive said Jetters patent. It To this bill the defendant has interposed a general demurrer. The points made thereunder are that it appears from the bill, and the letters patent proffered in connection therewith, that complainant's invention is a combination, one of the essential elements of which is a safe, while the bill affirmatively shows that the defendant is using something not in combination with a safe,-a character of device of which a safe cannot be one of the parts; that the bill upon its face excludes the hypothesis of a safe forming one of the parts of the device used by the defendant, as alleged, in the construction of locks upon jail cages; and that it is also apparent upon the face of the bill that the stated object of complainant's invention, to-wit, "to provide a safe with non-explosive seams," is entirely foreign to the object of the device employed by the defendant, which is described in the bill as something used in the construction of locks upon jail cages.