BRUSH et al. v. CONDIT et al.1 (November 4, 1889.) PATENTS FOR INVENTIONS-ELECTRIC LIGHT LAMP CLAMPS ANTICIPATION. |20, 1879, to Charles F. Brush, one of the plaintiffs, for "improvements in electric lamps," on an application for a reissue filed April 14, 1879, the original letters patent, 1. The claims of reissued letters patent No. No. 203,411, having been granted to said 8,718, granted May 20, 1879, to Charles F. Brush, Brush, May 7, 1878, on an application filed for improvements in electric lamps, are, in an elec September 28, 1877. The rights of the plaintric lamp, (1) the combination, with the carbon tiffs were finally rested upon an alleged holder and core, of a clamp surrounding the carbon infringement of claims 1, 3, 5, and 6 of the holder; (3) the combination of the core or armature, reissue. Another patent was sued on in the clamp and the adjustable stop, whereby the the case, but at the final hearing the bill in points of the carbons are separated when an elec- regard to it was dismissed with costs, or trical current is established,-prevented from sepa-motion of the plaintiffs. The opinion o. rating so as to break the current,-and gradually fed together as the carbons are consumed; (5) the combination, with a carbon holder, of an annular clamp surrounding the carbon holder; and (6) an annular clamp adapted to grasp and move a carbon The specification of the reissue states the holder. In 1876, Hayes had constructed a lamp including the clamp devise of claims 1 and 3 of the general nature of the invention in these patent, which was put to ordinary use, and did words: "My invention relates to electric practical work. Held, that it was a completed in-light mechanism, and it consists in the fol vention, and anticipated the patented invention, though but one lamp was made, and its use was abandoned for other lamps after two and onehalf months, and it did not operate as perfectly as the patented clamp; it not appearing that its use was abandoned because of the clamp. 2. It is immaterial that the rod in the Hayes apparatus was square or rectangular, and was surrounded by a rectangular clamp, while claims 5 and 6 of the patent were for an "annular clamp," as the difference is one of degree only. Appeal from the circuit court of the United States for the southern district of New York. the circuit court, held by Judge SHIPMAN. on the merits, as to reissue No. 8,718, is reported in 22 Blatchf. 246, 20 Fed. Rep. 826. lowing specified device, or its equivalent, whereby the carbon sticks usually employed are automatically adjusted and kept in such position and relation to each other that a continous and effective light shali ual interference." In this automatic ar be had without the necessity of any manrangement the electric arc is established. and then, as the electrodes are consumed the arc is regulated by causing the strength. of the current and the length of the arc mutually to control each other. There is no clock-work or other extraneous power, but the action of the electric current alone W. C. Witter and Wm. H. Kenyor, for appellants. Edmund Wetmore and Sam-effects the necessary movements. The elecuel A. Duncan, for appellees. trodes tend to move towards each other at all times, and this tendency is opposed BLATCHFORD, J. This is an appeal by by the electro-magnetic action, which tends the plaintiffs, Charles F. Brush and the to separate them. These opposing forces Brush Electric Company, in a suit in equity are designed to be in equilibrium when the brought by them in the circuit court of the electrodes are at such a distance from each United States for the southern district of other as will produce the maximum develNew York, against C. Harrison Condit, Jo-opment of light with a given electric curseph Hanson, and Abraham Van Winkle, from a decree dismissing, with costs, their bill of complaint, so far as it relates to reissued letters patent No. 8,718, granted May 'Affirming 20 Fed. Rep. 826. v.10s.c.-1 rent. It was to an electric arc lamp of this character that the invention of Brush was to be applied. The construction of his arrangement, as described in the specification of the reissue, is as follows: A helix of insulated wire, such helix being in the bons are consumed, substantially as described." "(5) In an electric lamp, the combination, with a carbon holder, of an annular clamp surrounding the carbon holder, said clamp adapted to be moved, and thereby to separate the carbon points by electrical or magnetic action, substantially as herein set forth. (6) In an electric lamp, an annular clamp adapted tc grasp and move a carbon holder, substantially as shown." What is called in these claims "the clamp, D," is the ring of meta which surrounds the rod or carbon holder. The specification of the reissue, as granted, contained the following paragraph: “I do not limit myself narrowly to the ring, D, as other devices may be employed which would accomplish the same result. Any device may be used which, while a current of electricity is not passing through the helix, A, will permit the rod, B, to move freely up and down, but which, when a current of electricity is passing through the helix, will, by the raising of the core, C, operate both to clamp and to raise the rod, B, and thereby separate the carbon points, F, F', and retain them in proper re form of a tube or hollow cylinder, rests granted: "(1) In an electric lamp, the comupon an insulated plate upheld by a metal- bination, with the carbon holder and core, lic post or standard. Within the cavity of of a clamp surrounding the carbon holder, the helix are contained an iron core and a said clamp being independent of the core, rod which passes longitudinally and loosely but adapted to be raised by a lifter sethrough and within the core. This rod cured thereto, substantially as set forth." holds a carbon. The core is also made to "(3) In an electric lamp, the combination move very freely within the cavity of the of the core or armature, C, the clamp, D, helix, and is partially supported by means and adjustable stop, D1, or their equiva of springs which push upward against ears ents, whereby the points of the carbons attached to the core. A ring of metal just are separated from each other when an below the core surrounds the carbon hold-electrical current is established,-prevented er, and rests upon a floor or support. One from separating so as to break the current, edge of the ring is over a lifting tongue, and gradually fed together as the carwhich is attached to the core, while the opposite edge is a short distance below the crown of an adjustable set-screw. The design is that one point of the ring may be lifted in such way as to clamp the carbon | holder, while a limit is placed to the upward movement of the core. The poles of the battery being so attached that the circuit of an electric current is completed, the core, by the force of the axial magnetism, is drawn up within the cavity of the helix, and by means of the lifting tongue one edge of the ring is lifted until, by its angular impingement against the rod or carbon holder, it clamps such rod, and also lifts it up to a distance limited by an adjustable stop. While the ring preserves this angular relation with and impingement against the rod, the rod will be firmly retained, and prevented from moving through the ring. The adjustable stop is fixed so that it shall arrest the lifting of the rod when the two carbons are sufficiently separated from each other. While the electric current is not passing, the rod can slide readily through the loose ring and the core; and, in this condition, gravity will cause the upper carbon to rest upon the lower car-lation to each other." bon, thus bringing the various parts of the On the 14th of October, 1881, the plaintiffs device into the position of a closed circuit. filed in the patent-office a disclaimer, in If, then, a current of electricity is passed which they stated that the patentee had through the apparatus, it will instantly claimed more than that of which he was the operate to lift the rod, and thus separate first inventor or discoverer, by or in consethe two carbons, and produce the electric quence of the use, in the specification, of the light. As the carbons burn away, thus in-language contained in the paragraph last creasing the length of the voltaic arc, the above quoted; and that there were maelectric current diminishes in strength, terial and substantial parts of the thing owing to the increased resistance. This patented, also embraced within the terms weakens the magnetism of the helix, and of the above quoted paragraph, which accordingly the core, rod, and upper car- were truly and justly the invention of Brush. bon move downward, by the force of grav- The paper went on to enter a disclaimer to ity, until the consequent shortening of the that part of the subject-matter of the specvoltaic are increases the strength of the cur-ification, and of claims 1, 2, 3, 5, and 6 of rent, and stops such downward movement. the reissue, which, being embraced within After a time, however, the ring will reach its the general language of the above quoted floor or support, and its downward move- paragraph, included as within the invention ment will be arrested. Any further down- of Brush "clamping devices substantially ward movement of the core, however slight, different in construction and mode of operwill at once release the rod, allowing it to ation from the clamp, D." On the 6th of slide through the ring until arrested by the April, 1883, the plaintiffs filed in the patentupward movement of the core, due to the in-office a disclaimer of so much or such part creased magnetism. In continued operation, the normal position of the ring is in contact with its lower support, the office of the core being to regulate the sliding of the rod through it. If, however, the rod accidentally slides too far, it will instantly and automatically be raised again as at first, and the carbon points thus be continued in proper relation to each other. Claims 1, 3, 5, and 6 of the reissue, on which alone recovery is sought, read as follows, there being eight claims in all in the reissue as of the invention described in the reissue, and coming within the general language of the third claim, as might cover or include as elements thereof "the core or armature, C," and "the clamp, D," excepting when the core or armature raises the clamp by a lifter secured to such core or armature, substantially as described in the patent. The same paper disclaimed the specific combinations forming the subject-matter of claims 2, 7, and 8. Judge SHIPMAN held that the first claim ing.' At this time he was in Philadelphia, and a fellow-employe by the name of King, thinking that he could improve upon the clutch, and make the feeding of the carbons answer more promptly to changes of the current, or make the feeding less 'jerky,' obtained permission from Wallace & Sons, who owned the clamp, to make an alteration. The 'King clutch,' constructed upon a different principle from that of the Hayes or the Brush clamp, was put into the lamp, which has remained in use in the mill, and, since the end of 1876, has been 'used in the electrical room for testing machines, car describes a clamp independent of-that is, | it from time to time, when a lamp was not fixed to-the core, but adapted to be needed, until the 16th of September followraised by a lifter secured to the core, and does not mean that the clamp is independent of, and not in any way dependent for its motion upon, the core, but is adapted to be raised by a lifter secured to itself. He further held that the first claim does not include the adjustable stop of the third claim, but includes only the combination of the clamp and core and rod, with the described elements which are necessary to cause an angular impingement upon the rod, and an intermittent downward feeding of the rod. He also held that the clamp of the sixth claim is not any annular clamp adapted to grasp and move a carbon hold-bons, etc., and has been used for that purer, but means to describe in general terms the clamp of the first claim, which raises, clamps, and feeds downwardly the rod, preserving a practically uniform length of arc by the described means, or an annular clamp surrounding the carbon holder independently of the core, but adapted to be raised by a lifter secured to the core, and some suitable agency to allow the clamp to be tripped; and that the fifth claim includes the clamp of the first and sixth claims, the carbon holder, the motor, and the tripping device. Judge SHIPMAN exam-skirt shop,' the third floor of which was ined the question of the novelty of claims 1, 3, 5, and 6, and arrived at the conclusion that they were invalid by reason of their prior existence, as perfected inventions, in a lamp made in June, 1876, by one Hayes, at Ansonia, Conn. On this subject he says in his opinion: pose more or less ever since.' But one Hayes lamp was made until a duplicate specimen was made for use in this case. The Hayes clamp, it will be observed, was used in the lamp only until September 16th. Prior to that date the use of the lamp with the original clamp is thus described by Mr. Hayes upon cross-examination: 'It [the lamp] was moved about and burned in different places,-in the mill and outside,-and it was also burned in our other shop occasionally.' This shop was known as the used for electrical work. The mill and skirt shop were ordinarily lighted by gas. 'Question. On what occasions did you use the lamp out of doors? Answer. The lamp was used out of doors on several occasions. When gangs of men required light unloading freight from railway cars. Digging for "The clamp, in combination with the some work connected with the water-powother necessary elements, which was made er. I am unable to specify positively any by Charles H. Hayes, of Ansonia, Conn., particular date, but have a general recoland was a part of a lamp which he con-lection of being frequently called upon to structed about the end of June, 1876, as an make a light for some such purposes. Q. improvement upon the White lamp, is the Did you use it sometimes to test dynamos combination of the first and third claims of with in June-September, 1876? A. I think the Brush patent. The carbon rod was not during that time. Q. What other use square or rectangular, and therefore was did you put it to during those months exsurrounded by a rectangular clamp which cept the occasions out of doors which you was independent of the core. It is not de- have mentioned? A. It was used about nied that this clamp is the equivalent of an the mill, more particularly around the mufannular clamp. It was raised by a lifter se- fles, on occasions when it was necessary to cured to the core, and was tripped by com- work during the evening.' The use was a ing in contact with a floor, while the ascent public one, in the presence of the employes of the rod was checked by the contact of of the factory. The Hayes clamp has been the clamp with an adjustable stop. The preserved, and was an exhibit in the case. plaintiffs' answer to the anticipatory char Wallace & Sons thereafter, after much exacter of this clamp is that it was an aban-perimenting, went, to a limited extent, indoned experiment, and never was a perfected invention. The facts in regard to its character and position as an invention are as follows: Mr. Hayes was in 1876, and has been continuously since, in the employ of Wallace & Sons, who are large manufacturers of brass goods in Ansonia. In 1876, this firm was trying to find a successful electric lamp to manufacture. Mr. White furnished them with his device, which they sent, as a part of their exhibit, to the Centennial Exhibition at Philadelphia. Mr. Hayes testifies as follows: 'Experiments with the White lamp showed its defects so strongly or plainly that I designed this [the Hayes] lamp to overcome those defects. I made rough drawings in the middle or latter part of May, 1876. Commenced building the lamp at once, and finished it about the end of June following. Tested it, tried it, and made some minor alterations, and run to the manufacture of what were known in the case as 'plate lamps,' or lamps having two carbon plates instead of rods, but did not continue the business long. They say that the discontinuance was due to the fact that they did not have a satisfactory generator. The Hayes clamp was used upon the plate lamps, but, as has been said, was used upon but one carbon pencil electric lamp. The plaintiffs vigorously insist that the Hayes clamp was not a completed and successful invention, but that its use was merely tenative and experimental, and was permanently abandoned because the device did not promise to be successful. "Two facts are manifest: (1) That the Hayes clamp was the clamp of the Brush patent; and (2) that it became, after September 16th, a disused piece of mechanism in connection with carbon points. The question then is, was it a perfected and Hayes lamp, either with or without the Hayes clutch, did not impress them favorably, for they contented themselves with making only one specimen, whereas they made six White lamps, and, after much experimenting, and after the invention of the Hayes lamp, they made fifty or sixty plate lamps. For some reason they did not manufacture the Hayes lamp, but turned away to the plate lamps. But the facts that the anticipatory device was the device of the patent, and did do practical work, and was put to ordinary use, and that it does not appear that the Hayes clamp was the cause of the neglect with which Wallace & Sons treated the Hayes lamp, seem to me to outweigh the doubts which arise from the shortness of its existence, and its permanent disappearance from a carbon pencil lamp. The case is that of the public, well-known, practical use, in ordinary work, with as much success as was reasonable to expect at that stage in the development of the mechanism belonging to electric arc lighting, of the exact invention which was subsequently made by the patentee; and although only one clamp and one lamp were ever made, which were used publicly known invention, the use of which | had no generator, and I also think that the was abandoned prior to the date of the Brush invention, or was its use merely experimental, which ended in an abandoned experiment on September 16th? The plaintiffs, in support of their view, say that Wallace & Sons were searching for a successful lamp, and were exhibitors of an electric lamp at the Centennial Exhibition; that inventors were in their employ, who were encouraged to make experiments and trials in the hope that something good might be produced, and, under this stimulus, one Hayes lamp was made; that improvements in the location of the spring were made; then it gave a 'jerky' light, and, when the inventor was away, another clamp was put on, by the permission of the owners, to remedy this irregular feeding; but that afterwards no other lamp was ever constructed, and the Hayes clutch was left among other odds and ends;' and that the indifference with which it was received, its confessed faults, the attempted improvements, and its disuse show that the Hayes clamp never was anything more than an attempt to invent something which proved to be a failure. The question of fact, in this part of the case, must turn upon the character of the use of the lamp prior to Sep-together two and one-half months only, tember 16th, because it is established that the Hayes clamp and the Brush clamp, in its patented features, were substantially alike, and that the point in which they differ, viz., the length of the arms, is not a part of the principle of the device. Was the lamp with this clutch used merely to gratify curiosity, or for purposes of experiment, to see wheth-patent for a useful and successful invention, er the feeding device was successful, or whether anything more was to be done to perfect it? or was it put to use in the ordinary business of the mill, as a thing which was completed, and was for use, and was neither upon trial nor for show? Hayes made the lamp for Wallace & Sons as an improvement upon the White lamp, and apparently turned it over to them to be used when they chose. An alteration was subsequently made in the location of the spring. The lamp was used at different times, in the work of the mill,at night, in doors and out of doors. Its use at these times does not seem to have been for the purpose of testing the machine, or of calling attention to its qualities, or of gratifying curiosity, but it was used to furnish light to the workmen at their work. I have queried whether this use was not that of a thing which might be of help in an emergency, and which was thought to be better than nothing, though not of much advantage; but it was apparently used to accomplish the ordinary purposes of an electric light in a mill, to enable the workmen to see at night, although it was not uniformly used, because the mill was lighted by gas. "But the plaintiffs press the question, why, then, was the further use of the Hayes clamp and lamp discontinued? This question is significant, because the abandonment of a thing which is greatly wanted is, ordinarily, a very suggestive circumstance to show that it was defective, and that, before the invention could be completed, something was to be done which never was done. I think that Wallace & Sons did not push the electric lamp business because they and the invention was then taken from the lamp, and was not afterwards used with carbon pencils, it was an anticipation of the patented device, under the established rules upon the subject. With a strong disinclination to permit the remains of old experiments to destroy the pecuniary value of a and remembering that the defendants m ust assume a weighty burden of proof, I am of the opinion that the patentee's invention has been clearly proved to have been anticipated by that of Hayes. Coffin v. Ogden, 18 Wall. 120; Reed v. Cutter, 1 Story, 590; Pickering v. McCullough, 104 U. S. 310; Curt. Pat. §§ 89-92. The bill, so far as it relates to the clamp patent, is dismissed." We have examined carefully the evidence, in this case, relied upon by the plaintiffs to show that the clamp arrangement of Hayes was not a perfected invention, but was merely an abandoned experiment, and we have arrived at the conclusion that Judge SHIPMAN's views on the subject are correct. They are well and accurately expressed, and we could not add to their force by a prolonged discussion of what is purely a question of fact. The cases of Coffin v. Ogden and Pickering v. McCullough, cited by Judge SHIPMAN, are enforced by the case of Hall v. Macneale, 107 U. S. 90, 97, 2 Sup. Ct. Rep. 73. This latter case meets, also, the objection made by the appellants that the mechanism of the Hayes clutch was concealed from view, and the further objection that it would not operate as perfectly as that of the Brush invention. In Hall v. Macneale, speaking of the anticipating safes, this court said: "The invention was complete in those safes. It was capable of producing the results sought to be accomplished, though not as thoroughly as with the use of welded steel and iron plates. The construction and arrangement and purpose and mode of operation and use of the bolts in the safes were necessarily known to the workmen who put them in. They were, it is true, hidden from view, after the safes | praisers required the plaintiffs to add 50 per were completed, and it required a destruction of the safes to bring them into view; but this was no concealment of them, or use of them in secret. They had no more concealment than was inseparable from any legitimate use of them." It is contended by the appellants that, notwithstanding the prior existence of the Hayes apparatus as a perfected invention, claims 5 and 6 of the reissue are sustainable, because each of them is limited to an "annular clamp." It is urged that the clamp of the patent is a ring which surrounds a cylindrical rod, and that the rod in the Hayes apparatus was square or rectangular, and was surrounded by a rectangular clamp. But it is quite apparent that claims 5 and 6 of the reissue would, if the patent were valid, be infringed by the manufacture and use of the patented apparatus with a rectangular carbon rod surrounded by a rectangular clamp. Such an apparatus might be inferior in perfection and utility to the cylindrical rod with the ring clamp, but It would still embody the principle of the invention, carried out by equivalent means. The improvement, if any, in the use of the circular clamp over the rectangular clamp was only a question of degree in the use of substantially the same means. We are of the opinion that the decree of the circuit court must be affirmed, and it is so ordered. (132 U. S. 17) ROBERTSON, Collector, v. FRANK BROS. Co. (October 28, 1889.) CUSTOMS DUTIES-INVOLUNTARY PAYMENT-DECISION OF APPRAISER. cent. of these amounts as transportation charges for bringing the bananas into Aspinwall, and also certain shipping charges and commissions. The plaintiffs protested against this as an unjust addition; but whenever it was omitted the charge was added by the appraiser, and a penalty of 20 per cent. of the whole duty was imposed and exacted; and the officers declared that this would be done whenever the addition should be omitted. To avoid this penalty, and to get immediate possession of their goods, (which are of a perishable nature,) the plaintiffs made the addition required, and paid the increased duties that resulted, but always under protest, as before stated.. The form of the entries and invoices, with the additions, was as follows, the additions being in italics: "Invoice of merchandise shipped by the Frank Bros. Co. on board the Alsa, Sansome, master, bound for New York, and consigned to Frank Bros. Co.; Colon, Feb. 11, 1882, bins, containing: 1. Insertion by importers, on entries and invoices, of additional charges, in order to avoid on-"4,202 bunches bananas at 60..... erous penalties imposed by the appraisers for their "3.564 bunches bananas at 30...... omission, though such penalties may be illegal, "Charges for labor.. renders payment of the increased duties caused "Consul fee...... thereby involuntary. .... 2,521 20 pesos. 3,832 77 ..... 3,479 20 239 37 "The Frank Bros. Company. 2. Rev. St. U. S. § 2906, declares that, when an ad valorem duty is imposed, the collector shall cause the actual market value of the imported articles, at the time of their exportation, in the principal markets of the exporting country, to be appraised for the assessment of the duty. Section 2907 pro-"Shipping charges added, as revided that there should be added thereto "the cost of transportation, shipment, and transshipment, with all the expenses included, " from the place of production to the vessel in which shipment is made to the United States, "and all other actual or usual charges" for packing, etc. Held, that the decision of the appraiser as to the amount to be added as cost of transportation, etc., was not conclusive. Error to the circuit court of the United States for the southern district of New York. Sol. Gen. Chapman, for plaintiff in error. H. E. Tremain, M. W. Tyler, and W. B. Coughtey, for defendants in error. quired by the appraiser, to 140 38 8,897 85 "Reduced to U. S. currency.. .$3,207 93 "Commission, 2% per cent... 1,033 432 87 $4,673 SO 116 84 $4,790 64" 3 3 3 The appraiser's return indorsed thereon was as follows: "Value correct, with importer's additions.” *20 BRADLEY, J. This is an action to recover for an alleged overcharge of duties on imports. The goods imported were bananas brought from Aspinwall. The duty was 10 percent. ad valorem. The plaintiffs offered It was contended by the counsel for the evidence tending to show the market value government at the trial, and is contended of the bananas at the port of shipment, here, that the payment of the duties comwhich was claimed to be only 50 cents a plained of was a voluntary payment, inaspiece for the large bunches, and 25 cents a-much as the plaintiffs themselves made the piece for the small bunches. The invoices re- additions to the entries and invoices, and ceived with the cargo exhibited this as the that therefore they cannot recover back true market value. and added certain any part of the money so paid; and they charges for labor and consul fees. The ap-requested the court below to instruct the |