T
223
79
54
B 405608 A
United States Circuit Court of Appeals
FOR THE SECOND CIRCUIT.
IN EQUITY.-No.
THE SCHUYLER ELECTRIC COMPANY,
Complainant and Appellant,
Appeal from the United
VS.
ELECTRIC ENGINEERING AND
SUPPLY COMPANY,
Defendant and Appellee.
States Circuit Court,
Northern District of
New York.
BRIEF FOR APPELLANT.
C. L. BUCKINGHAM,
Solicitor and of Counsel for Appellant,
195 BROADWAY,
New York City.
C. G. BURGOYNE, Cor. Walker and Centre Sts., N. Y.

rella &+1-25-38
United States Circuit Court of Appeals
FOR THE SECOND CIRCUIT.
IN EQUITY-No.
THE SCHUYLER ELECTRIC COMPANY,
Complainant and Appellant,
VS.
ELECTRIC ENGINEERING AND SUPPLY
COMPANY,
Defendant and Appellee.
49411
1
Appeal from
the 2
Circuit Court of
the United States
for the Northern
District of New
York.
BRIEF FOR APPELLANT.
Statement of Case.
The bill of complaint in this case was filed in the
United States Circuit Court for the Northern District
of New York against the Electric Engineering and
Supply Company, defendant in the Court below and
appellee, charging defendant with infringement of the
first claim of Letters Patent of the United States No.
247,103, dated September 13, 1881, issued to the United
States Electric Lighting Company, as assignee of
Charles G. Perkins, for an improvement in circuit.
breakers for electric lamps.
The Engineering and Supply Company alleged as
defenses :
(1) That the patent in suit was invalid for want of
novelty; and (2) that it was not infringed by de-
fendant.
The first of these defenses, however, was not sup-
ported by proofs, nor was it seriously urged that the
state of the art served to more than limit the claim of
the Perkins patent.
3
2
5
6
In the Circuit Court the cause was heard by his
Honor Judge COXE, who dismissed the bill of com-
plaint upon the ground that the first claim of the Per-
kins patent was not susceptible of an interpretation,
in view of the state of the art, sufficiently broad to
cover either of the two forms of switches against which
infringement was charged. In pursuance of this de-
cision, a decree was entered dismissing the bill, with
costs to be taxed to the defendant; and it is from this
decree that the present appeal is taken.
A ratchet wheel is shown in the patent in suit (Rec.,
p. 78 A), in which alternately arranged insulating and
conducting teeth are in rotating contact with a spring
pawl or detent; and, as the wheel is rotated, an elec-
tric circuit is first closed through the spring and a me-
tallic tooth, and next automatically broken with a
spring action as the pawl passes off from the
tooth into an insulating notch. The principal feature
of the invention is an inevitable automatic snap action for
quickening the break as metallic contacts are separated
7 in slow-moving circuit breakers.
The evidence shows that a snap movement was not
contemplated in the telegraph patents cited; and, in
fact, that with the currents employed no such device was
needed; it also shows that in prior electric lighting
switches presented by defendant the difficulty of burn-
ing was understood, but that other devices were em-
ployed for the extinction of the arc. The evidence
also shows that while no snap action was contemplated
in the telegraph devices, it was distinctly not wanted,
8 and that if it had been present it would have destroyed
rather than improved the operativeness of the appa-
ratus.
The following are the principal reasons advanced in
the opinion of the Court below for dismissing the bill,
all of which complainant submits are error:
1. That the first claim of the Perkins patent is lim-
ited by the state of the art as shown by the patents of
Gilliland, Guest, Rogers, Floyd and others to a form of
ratchet switch in which the alternately arranged con-
3
ducting and insulating teeth are made the rotating 9
element.
2. That, in view of the state of the art, the two forms
of the defendant's switches, having the alternately
arranged conducting and insulating teeth placed upon
a stationary wheel, are not included within the terms of
the Perkins claim.
3. That the No. 2 form of defendant's switch has no
insulating teeth, and is not, therefore, an infringement. 10
The errors assigned in this Court are as follows:
1. The Circuit Court erred in holding that the de-
fendant's switches represented by Complainant's Exhibit
Defendant's Switch No. 1 did not infringe the com-
plainant's patent in suit.
II. The Circuit Court erred in holding that the de-
fendant's switches represented by Complainant's Ex-
hibit Defendant's Switch No. 2 did not infringe the
complainant's patent in suit.
III. The Circuit Court erred in holding that by the
prior art the complainant's patent in suit was so far
limited as not to include as infringing devices the said
two switches or either of them shown by Complainant's
Exhibit Defendant's Switch No. 1 and Complainant's
Exhibit Defendant's Switch No. 2.
IV. The Circuit Court erred in holding that the
essential features or any of them of the invention
described and claimed in claim 1 of the patent in suit
was known or described in the prior art.
V. The Circuit Court erred in not holding that the
complainant was entitled to an injunction restraining
the defendant, its servants, attorneys, workmen, em-
ployees and representatives from further infringing the
first claim of the patent in suit, and an award of profits
derived by defendant and damages sustained by com-
11
12
4
13 plainant arising from the making, using or selling of
switches shown by Complainant's Exhibit Defendant's
Switches Nos. 1 and 2, or either of them, and to receive
from defendant the costs in such suit, to be taxed.
The Electric Arc at Switch Contacts, and
the Necessity for its Suppression.
One of the prime necessities in every system of elec-
14 tric distribution, where large currents are employed,
is the switching apparatus for closing and opening
conducting branches leading from the central station
to lamps, motors or other translating devices. In fact,
it is apparent from the attention which the subject has
received at the hands of engineers and inventors that
no other feature is more critical or fruitful of difficulty
in the operation of electric systems than is the switch
by which users may at will bring into action or arrest
the operation of lamps or motors.
15
16
Superficially, there might seem to be little room for
the exercise of invention in the construction of appa-
ratus for opening and closing electrical circuits. No
problem could be simpler if only small currents like
those used in telegraphy were in question; but in the
breaking of conductors carrying heavy charges the dif-
ficulties become great and oftentimes insurmountable
from the fact that a strong current will continue to
flow across the open space until it has been greatly
widened.
The space by which it may be necessary to separate
the ends of a conductor to disrupt the arc may be no
more than one-fourth of an inch, or it may be several
inches, depending upon the volume of current and the
pressure by which it is impelled; but at any less dis-
tance the current would make the jump, and, if the
flow were permitted to continue an appreciable length
of time, an arc would appear, not merely as a few
sparks, but as a consuming stream of fire flowing from
point to point across the break. The importance of
this difficulty cannot be doubted when it is remembered
5
that nearly every patented invention in the several 17
large classes of circuit-breaking devices is addressed to
the one purpose of suppressing or avoiding the electric
are or flame. It is not pretended, however, that Per-
kins was the first to deal with the suppression of an
arc, although, as is well known, most of the inventions
comprising this large art are of a date subsequent to
the patent in suit.
In many cases the cost of apparatus for suppressing
the flame would not preclude its use; but clearly such
a device, when applied to so simple an apparatus as an
18
incandescent lamp or a small group of such lamps,
must possess the element of cheapness to the last de-
gree. An air-blower, with bellows, fan and pipes, or
any other equally expensive device, might, with reason-
able economy, be used to suppress the flame at the com-
mutator of a dynamo or motor; but, in the case of an
incandescent lamp, such an apparatus would cost far
more than the lamp itself, and its maintenance and op-
eration would cost more than the production of the
light-giving current.
Perkins had before him the problem of making an
electric switch whose simplicity should be commen-
surate with the simplicity of the incandescent lamp;
and to this end he carried into his circuit breaker that
19
cheapness of construction and durability which
characterizes the cock of a gas-burner. He
adopted the finger button of the gas-cock, and
this he employed to turn a circuit-breaking
wheel whose periphery was provided with insulating
and conducting teeth, alternately arranged, in such 20
manner that a circuit would be broken and closed as
the wheel was rotated. But such a device, without
material modification, would not have answered the
purpose; for, by the employment of a finger-button to
give the wheel rotation, its movement would be so slow
that it would either be burned up or injured by the arc
or flame at every break of the circuit. Perhaps, if the
contacts of a circuit breaker were separated quickly
enough, no arc at all would be established; but how-
ever this may be, it is obvious that its capacity to burn
6
21 would be lessened by reducing the time of its duration,
and that if the break were quick enough, appreciable
heating or burning would be avoided. This is what
Perkins did, and his invention consists in the employ-
ment of an automatic device for greatly quickening the
breaking of contacts in small, slow-moving hand
switches.
The Patent in Suit.
The accompanying cut, Fig. 1, which shows the spe-
22 cific form of switch illustrated in the Perkins patent,
represents a ratchet having two metallic projections at
opposite ends of an S-shaped metal piece D, and inter-
mediate insulating teeth, which are formed by notched
disks D¹ D¹ of non-conducting material, between which
the metallic piece D is clamped.
23
24
M
S-
D'
Fig. 1.
+
Dynamo
7
25
The metallic piece D is electrically connected with
spindle E, and the ratchet thus formed is in rubbing
contact with one end of a contact-arm F, which is
pressed upwards by spring S in such manner that as
the ratchet teeth are turned the free end of arm F will,
in each instance, act as a detent and be forced into the
succeeding notch of the wheel. As is shown by the cut,
the metallic projections have overhanging points like
saw teeth, and are so arranged, with reference to disks
D¹ D¹, that as the end of the detent snaps from the
crown of a metallic tooth it will be shielded therefrom 26
by the radial faces of the insulating notches. It is by
this means that it is impossible for the user to re-es-
tablish metallic contact by incautiously turning the
ratchet backwards.
The necessity for such a device is obvious: No one
learns to turn a gas-cock in one direction rather than
the other, and in the daily use of a device like this it
would be turned backward as often as forward. Thus,
if at each turn it were possible to re-establish contact,
snap-separation of metallic contacts would be possible 27
only half the time.
As will now be seen, the switch circuit is established
through spring S, detent F, the metallic teeth of D,
metallic spindle E to which D is fixed, and thence by a
rubbing contact and wire to the filament of the lamp.
That is to say, the separation of contacts is auto-
matically accomplished by the snap-action of a spring
which causes the free end of a detent to quickly fall
through an air-space from the crown of a conducting
tooth, over which it has rubbed, into an insulating 28
notch; and by this means not only are the contacts
first rubbed clean and next rapidly separated, but, from
the fact that the end of the detent falls into an insulat-
ing notch, the wheel cannot be turned backward to re-
establish electrical connection. The importance of the
insulating notches is manifest, for, without them, if the
wheel were incautiously turned back, the end of the
detent would strike the root of a conducting tooth,
when re-separation could only be effected by the normal
movement of the hand. In other words, re-separation
8
29 could not be quickly effected, as a snap-action would be
impossible, for, in turning the wheel backward, the
spring would not be put under tension, as its end would
merely abut against the radial surface of an insulating
notch and would not be raised to the crown of the
tooth from which it must spring, if at all.
30
The first claim of the patent, which is the only one
in suit, is:
"1. The combination, in an electric-light switch,
"of a ratchet having metallic projections and insu-
"lating-teeth in the intervals between the same and
"a pawl or detent for engaging with the insulating-
"teeth when released from contact with the me-
"tallic projections, as and for the purpose speci-
"fied."
The one feature made prominent in this claim is the
quickened separation of metallic contacts in a rotating
ratchet switch. Of course, the claim designates a com-
31 bination of devices, but it specifies no more parts than
are essential to automatically and invariably insure a
quickened separation. The language of the claim
omits all mention of a rotating ratchet wheel. It
merely specifies "a ratchet having metallic projections
"and insulating teeth in the intervals between the
'same," and by its terms, therefore, is no more limited
to a rotating than to a stationary wheel.
66
It cannot be doubted that Perkins considered himself
a pioneer in this field. He knew that notched circuit-
32 breaking wheels had been used to open and close tele-
graph circuits for sending messages, and he doubtless
conceived of the plan of using these simple devices to
open and close circuits carrying heavy currents; but,
as his patent shows, he equally knew that such a device
would not answer his purpose unless the ratchet were
so constructed that the end of the detent should always
be given a pronounced snap-movement on leaving a
metallic tooth. He also doubtless knew from the art
that an arc could be disrupted by a quickened separa-
tion; in fact, in his patent he says (lines 7-12) that :
9
66
My invention relates to improvements in that class 33
"of switches for incandescent electric lamps in which
"the break is effected by the snap or instantaneous re-
"action of a spring when released from contact with a
conducting point or plate."
66
But it is important to note that this statement does
not refer to a rotating ratchet switch having an alter-
nately arranged series of conducting and insulating
teeth. Obviously, it only refers to a switch such as
that shown in Fig. 4; and, when read with those parts
of the specification describing the insulating notches of 34
the wheels, it shows the invention which he was obliged
to make to adapt the feature of snap-separation of other
circuit-breakers to the ratchet-wheel.
If, as shown in Fig. 4, a circuit were closed through
g, lever a, stop d and wire h, the contact would be
broken by a snap-action if lever b were attracted by
magnet c, for hook ƒ would then release e, and lever a
would be suddenly left to the influence of spring i.
g
Fig. 4.
d
Such circuit-breakers, it is admitted, were known prior
to the Perkins invention; but, so far as is shown by the
record or the art, there is no prior instance of a
ratchet-wheel switch in which contacts were broken
by a quickened movement of a detent or other device.
Clearly, the following parts of the specification show
that it was Perkins' intention to import into a circuit
wheel the snap-action of a simple lever circuit-breaker.
After reciting that his invention relates to that class of
switches "in which the break is effected by the snap
or instantaneous reaction of a spring when released
35
36
10
10
37 from contact with a conducting point or plate," he says
(lines 12-22) of his invention that:
38
39
66
"It consists in mechanical details for effecting
this, the principal features of which are a ratchet-
"wheel having both conducting and insulating
"teeth combined in operative relation with a
66
spring pawl or detent, which acts as a contact-
"maker with the conducting portions of the
"ratchet, and by engagement with the insulating-
"teeth prevents the ratchet from being turned
"backward when the pawl has been released from
"contact with the said metallic portions."
And again, in outlining the advantages of his inven-
tion, he says (lines 67 to 77):
"The principal advantages secured by the con-
"struction above described are, first, that the cir-
"cuit cannot be completed by turning the key
"backward, so that when the circuit is broken it
"must be accomplished by an instantaneous snap
66
66
or reaction of the spring-pawl as it leaves the
conducting portion of the ratchet; secondly,
"that the contact-spring cannot be injured by the
attempts of incautious persons to turn the key
"backward, as might be the case with the lamps.
"now in use."
66
We submit that these statements leave no ground for
40 the supposition that Perkins regarded his invention
only as an improvement upon prior ratchet-switches for
breaking circuits by instantaneous snap-action.
Defendant's Infringing Switches Compared
with the Perkins Patent.
Defendant's two switches, against which infringe-
ment is charged, are fully described and illustrated in
the testimony of Stockbridge (Rec., pp. 28-38). Their
11
construction and operation with reference to the Per- 41
kins claim will, however, be more readily understood.
by first referring to accompanying Figs. 2 and 3, in
which, for convenience of illustration, some of the de-
tails are modified and others wholly removed. The
exhibit drawings and the exhibit sketches show trailing
springs at the end of the cross-bar 10 of these illus-
trative diagrams; but this omission does not change
the operation of the apparatus. It does, however,
enable a much clearer disclosure of the essential
features of the invention.
42
3
14
11
10
13
Lamp
5
S-
H
3
Fig.2,
15
2
In Fig. 2, representing the outlines of defendant's
switch No. 1, H is a porcelain ring or disk, from the
top of which are raised four ratchet teeth, 12, 13, 14
and 15, two of which, 12 and 13, are covered with
metallic strips. Above these teeth is a metal cross-bar
10, which is turned by a finger-button in a direction.
opposite to the hands of a clock; and at each ascent,
as the ends of the bar are forced up the inclined faces
of the upwardly projecting ratchet-teeth, they are
43
44
12
45 raised against the tension of a spring S. By this
means power is stored in spring S, and as the ends of
the cross-bar, (or the springs at the end of said bar, as
actually used in the switch), are turned beyond the teeth
of the ratchet, they are quickly forced within succeeding
notches. When the ends of cross-bar 10, or their
springs, as shown in the complete drawing (Rec., p.
30 A), are in contact with the metallic teeth of the
switch, a lamp circuit is closed, but upon a quarter
turn of the bar the springs will have passed from the
46 points of the metallic teeth 12, 13, and, by a snap-
47
48
action, will have dropped upon the insulating notches
14, 15. If from this new position of cross-bar 10 it
were turned backward, the ends of the spring would
abut against the vertical surfaces of the porcelain teeth,
and could not, therefore, reach the metal strips from
which they had fallen.
As to mere form, defendant's construction is unlike
that of Perkins; but, with reference to the substantial
features of the invention, one is a Chinese copy of the
other. They are not even different in form, except
that the ratchet teeth of one are stationary, while in
the other they are movable. In both, self-cleaning
ratchet contacts are equally present; in both, there is
an invariable snap-action at the separation of metallic
contacts; in both, snap-action results in a widened
separation of contacts for the one purpose of avoiding
burning effects at the moment of breaking a large cur-
rent; and in both it is equally impossible to restore
metallic contact by a backward turn of the button.
Both are button switches, and, alike, they are subject
to the slow movement of the user's hand.
These are the essential elements of Perkins' claim,
and they are equally found in defendant's switch No. 1.
Perhaps better results might be obtained by modifying
Perkins' form; but, whatever the change, whether to
adapt the switch to other uses, or to render it cheaper
of manufacture, or more efficient, the defendant cannot
evade the Perkins patent so long as its apparatus con-
tains these salient features.
13
-3
Lamp
15
Lamp
18
19
S
12
Fig. 3,
-13
2
49
50
In defendant's switch No. 2, as shown in Fig. 3, a
continuous strip of metal, 14, is represented as cover-
ing teeth 12 and 13, while teeth 10 and 11 are covered
with separate pieces of metal which are insulated from
each other and equally from strip 14. Here, also,
the feature of conducting and intermediate insulating
teeth is preserved, for one tooth is wholly insulated
from the other; and, as in switch No. 1, there is a
snap-separation as the cross-bar 8 is turned from 14 to
10, from 10 to 11 and from 11 to 14. The same ex-
pedient is also employed to prevent re-establishment
of metallic contacts by a back turn of the detent bar.
In this instance, however, there are two lamps, 15, 16,
controlled by the one switch, which are alternately
brought into circuit; but as a lamp is turned out, its
current is broken by a snap movement, notwithstand-
ing the fact that the detent arm falls upon a metallic
strip, for in descending from the crown of a tooth the
detent bar falls upon a strip which is electrically
isolated from the preceding one by a vertical wall of
insulating material. Of course, if tooth 11 were only an
insulating surface, no circuit would be closed with the
51
52
14
53 contact-arm in the position shown in the cut. In other
words, if tooth 11 were not provided with a conduct-
ing strip, the switch at each quarter turn would merely
serve to light and extinguish lamp 16; but by employ-
ing metallic strip 11 and lamp 15, the switch is given a
double function and will, at one-quarter turn, light 16
and extinguish 15, and, at the next, extinguish 16 and
light 15. But the operation of each lamp remains the
same as though the other were entirely removed; nor is
it of the slightest importance to the operation of lamp
54 16 whether the metallic strip 11 be present, so long as
the latter is insulated from strip 10 by the verticle wall
of the notch; and, equally, the presence of the strip
10 in no way affects the operation of lamp 15.
It is not essential that strips 12 and 13 be metallic-
ally united at the switch base, although obviously, if
the switch must be capable of alternately lighting and
extinguishing the two lamps, strips 12 and 13 must, at
all times, be connected with one pole of the dynamo.
This, however, could equally be done by separating
55 strips 12 and 13 at the switch base if they were joined
with conductor 2 by separate wires.
The Decision of the Court Below.
In the Circuit Court it was contended by complainant
that the claim of the patent in suit should be construed
to cover both a rotating wheel and a stationary detent,
and a stationary wheel and a rotating detent. The
56 Court, however, held that, in view of the state of the
art, the patent was not susceptible of a sufficiently
broad interpretation to include defendant's switches, in
which the ratchet and not the detent was the stationary
element. It was also held that while Perkins' switch
was arranged in the base of the lamp, defendant's
might be placed on a wall or other support; and,
further, that defendant's switch, owing to its diameter
of three inches, could not be adapted to a lamp base.
Of course, so large a switch could not be placed in the
neck of an ordinary lamp, but a smaller one could, and
15
even this size of switch could be placed in the neck of 57
a larger lamp.
Obviously the language of the claim is not limited to
a rotating wheel more than to one which is stationary,
nor does the specification itself contain such a limita-
tion. It is true that the drawings of the patent show
only a rotating wheel. The patentee, however, was not
obliged to show a stationary wheel and rotating detent
in order that his claim might cover both forms, for so
long as one form was the equivalent of the other it was
enough if the claim were sufficiently comprehensive to 58
cover them both. No proposition of law is better
known than that a description of the one best method or
means known to a patentee for carrying his invention into
effect will entitle him to claim it in all its breadth and to
cover all equivalents of the specific form (post, pp. 84–
89). Perkins certainly did not need to describe two,
four or a dozen different species to lay a foundation for
a broad claim. Having described the best form known
to him, it was only necessary that he should formulate a
sufficiently broad claim, and at the same time avoid such 59
statements of limitation as, under the doctrine of
estoppel or dedication, would make the patent nar-
rower than the invention.
The important question before the Court, therefore,
was whether the claim had been incautiously restricted
by the use of unnecessary terms of limitation, or
whether, under the terms used and the state of the art,
it was necessary to give it such a narrow interpretation
that it could not fairly include defendant's switches.
The Court said (Rec., p. 333) :
66
"Snap-action circuit-breakers used in connec-
"tion with alternating insulating and conducting
"material were old. So were switches, having a
wiping contact and a turn in one direction only.
"This being so it certainly did not require a pro-
found knowledge of electrical science to produce.
"the patented structure.
"In 1871 Gilliland obtained a patent for cer-
"tain improvements in dial telegraphs in which
60
16
61
62
63
66
"he describes a disk having marginal notches
"and intermediate smooth portions which serve,
" in connection with a spring conductor, alternately
"to make and break the circuit. When the spring
66
snaps off from a conducting tooth it rests in an
"insulating notch, and the circuit is broken.
"Backward movement is prevented by a pawl
"bearing against a collar. The mechanical con-
"struction is, of course, different, but the principle
"is the same as in the Perkins patent.
"The patents to Guest, Rogers and Floyd show
"different means of accomplishing the same result,
viz., the quick making and breaking of an elec-
"tric circuit.
""
(6
"It is perfectly clear, therefore, that the Perkins
patent does not cover all snap-action circuit-
"breakers and that it is confined both by the
"prior art and its own language to the device de-
"scribed. At least it is clear that it cannot be
expanded to cover devices differing in size, shape,
material, situation, mode of operation and ob-
"ject to be attained; devices whose only points of
"resemblance are features open alike to defendant
" and complainant."
66
(6
We are unable to understand upon what part of the
record Jude COXE arrived at the conclusion that "Snap-
"action circuit-breakers used in connection with alter-
nating insulating and conducting material were old.”
Certainly nothing of the kind is in evidence. If the
64 Court had omitted from the sentence the word “ snap-
action" the statement would accord with the facts;
but as it stands it is essentially wrong.
It is true that the various patents of Gilliland, Guest,
Floyd and Rogers show circuit-breaking wheels with
contact strips, improperly called springs; but in each
case the springs are so mounted that their free ends
cannot spring or snap as the teeth of the wheels are
turned beneath them. A light rubbing contact was
wanted, and to this end the strips or springs were
made to bear upon the teeth of the wheel with just
17
66
enough pressure to secure a good electrical connection, 65
but a snap-action was distinctly not wanted. Perhaps
there would be a slight spring-movement at the points
of these springs; but this action, if present at all,
was undesirable and unavoidable, and was reduced to
the least amount, consistent with the purpose of
making a circuit contact. All of these patents show
that the springs were constructed to avoid snap-
action as far
as possible-and for the best of
reasons, for, as our testimony shows, the presence
of such snap-movement as would disrupt the arc
of an electric-light current would equally cause
false signals in telegraph apparatus. Not only would
such a spring vibrate upon the crowns of the teeth, but
its end would reach the bottoms of intervening shallow
notches, causing a false signal at each contact thus
made. But, as will presently be shown, with teeth
as shown in the telegraph devices, even if there were
a snap-action, it would not result in a materially
widened separation, as the free end of the spring, in
most of the constructions shown, would simply 67
scrape down the radial surface of a tooth.
More than a suap-movement was necessary. To
effect a widened separation, not only was a snap-
action necessary, but the metaliic teeth had to have
overhanging points. Neither feature, however,
is present in these telegraphs, except by accident,
if at all. Certainly, neither feature is present by de-
sign. In fact, as appears from the necessities of the
case, and from the apparatus itself, the design was that
they should be absent. But whether the telegraph 68
patents contained the snap-action feature of a Perkins.
switch or not, it is impossible to understand upon what
theory they can be held to limit the Perkins claim to cover
a rotating and not a stationary ratchet. All of the
telegraph patents cited by the Court show rotating and
not stationary circuit wheels. If they showed stationary
wheels that contained the snap-action feature they might
afford reason for confining Perkins' claim to a rotating
wheel; but showing, as they do, only rotating wheels,
they must either wholly anticipate the patent or leave
18
69 it broad enough to cover each of the two forms. As to
such limitation and its exclusion of defendant's switches
the Court said:
70
71
66
66
"The defendant's switches. are made under
"Letters Patent No. 436,122, granted September
"9, 1890, to Howard H. Crowell. They are snap
"switches, it is true, and they cannot be turned
backwards, but in other respects they are much
nearer several structures found in the prior art
than to the Perkins switch. They are mounted
on a large stationary china base three inches in
diameter, and are intended to be screwed on a
"wall or other support. They cannot be used in
"a lamp socket.
66
66
66
6.
"Neither of the defendant's switches has a
"ratchet wheel, and No. 2 has no insulating teeth
or any equivalent therefor. Neither has a pawl
or detent,' unless a very broad construction is
"given to these words. Both belong to a differ-
"ent type of switch from the patented switch.
66
"The Court cannot avoid the conclusion that
"it would be doing injustice to the defendant and
"others to give the Perkins patent a construction
"so broad as to suppress improvements like those
embodied in the Crowell switches."
66
(The italics are ours).
We cannot assent to the proposition that "Neither
"of the defendant's switches has a ratchet wheel" or
72 that" Neither has a pawl or detent, unless a very broad
"construction is given to these words." It certainly
does not require a broad interpretation to find a ratchet
wheel and detent in defendant's two forms, for the art,
as presented by defendant in this case, clearly makes
use of the term "ratchet and pawl" as applied to a
stationary wheel and movable pawl.
The Gilliland patent for "dial telegraph" (Rec. p.
238) is relied upon both by defendant as the most im-
portant of all the defenses offered (Lass, 68, Rec. p. 199),
yet near the end of the first page of the specification
19
appears the following point blank reference to a
stationary ratchet wheel:
66
66
I am aware that transmitting devices, consist-
ing of revolving toothed disks bearing against
"circuit-closing springs, have before been made.
"with pawls and STATIONARY RATCHET-
"WHEELS to prevent reverse motion. My pawl X,
"bearing by friction on the collar Y, is superior to
"the above in that it arrests the motion more in-
stantaneously at any point."
66
(The italics are ours.)
Obviously Fig. 5 represents this STATIONARY RATCHET
WHEEL and lock, to which Gilliland referred in describ-
ing his own improvement.
Fig. 5.
Τ
73
74
75
If ratchet teeth were placed on the inner surface of
Gilliland's stationary collar Y, the wheel Q could only
be arrested in positions corresponding with the inter- 76
vening notches, but by employing collar Y, having a
smooth surface and rotating pawl or clutch, the wheel
may be arrested in all positions of rotation and there
locked against retrograde movement.
In half the instances throughout the arts ratchet
wheels are stationary, and the pawls movable. Some-
times, however, it is desirable to rotate the wheel rather
than the pawl, but in principle of operation, so far as we
can ascertain, there is no substantial difference between
the two.
20
77
The record as presented by defendant shows that
rotating circuit wheels with stationary contact springs
and stationary wheels with rotating springs have been
alternately used. In fact, in telegraphy and electric
lighting, one form seems to have had no preference over
the other; and doubtless the merest whim of the
constructors has led to the selection of one form rather
than the other.
78 The Prior Art Relied Upon by the Court
Below to Limit the Perkins Claim.
Defendant does not profess that the Perkins patent is
wholly defeated; the contention is that the first claim
must be limited. But it is suggested by defendant that
the limitation must extend far enough into construc-
tional details, which, by the way, are obviously no part of
the invention, to relieve its switches from the charge of
infringement. It will presently be seen, however, that
79 the defenses presented do not combine any of the
essential features of a ratchet switch having self-clean-
ing contacts, a snap action to supplement the slow
movement of the user's hand, or means for preventing
a back turn of the wheel to avoid contacts which
could only afterwards be broken by a slow hand
movement. As already noted, several telegraph pat-
ents have been cited in which metallic circuit wheels
with peripheral notches are shown, but in these de-
vices, as will now be shown from the evidence, a
80 snap movement at the point of the contact strip was
not present, nor was it needed. On the contrary, it
was positively necessary that there should be no such
movement; moreover, if in these constructions there
were a chance snap-action, it would not result in such
a quickened separation of contacts as would cause the
arc to be broken. It will also be shown that the one
electric light patent (Sawyer, 237,608) to which de-
fendant's expert referred in his deposition bears no
relation to the patent in suit, and, at most, only pro-
vides an expensive and cumbersome system of resistance
21
coils to accomplish no more, nor as much, as is done by 81
the quickened movement of separation.
If defendant were using the telegraph wheels or the
Sawyer device, or anything of like character, it might
ask the Court to so limit Perkins as not to cover a switch
like them; but defendant does not use Sawyer's re-
sistance-coil method, or plain notched circut wheels, or
any method other than the Perkins plan as claimed.
The Sawyer Patent.
Defendant's expert, Laass, in answer to question 4
(Rec., p. 178), testified that the Sawyer patent discloses
an organization which precludes a broad construction
of Perkins' claim:
66
"Still another prior patent to W. Sawyer, No.
'237,608, dated February 8, 1881, shows the con-
"struction and combination of parts which limit
"the Perkins patent to the mechanical details de-
"scribed and shown therein. This prior patent
"shows a switch for electric lamps, in which a
"series of segmental metal plates are secured
stationary upon an insulating base, and disposed
"concentric to the axis of an arm designated the
"movable switch A, which arm or switch is
66
66
adapted to traverse the aforesaid segmental
"metallic plates, and, in so doing, it makes and
"breaks the circuit. It is evident from this patent
"that the Perkins patent cannot be construed
"to include a switch in which a series of me-
"tallic faces, arranged stationary in an annular
form, and a switch arm is pivoted in the centre
"of the annulus and traverses the aforesaid
"metallic faces to make and break the circuit
"thereby."
66
Laass here says that an arm A "is adapted to
traverse the aforesaid segmental metallic plates, and,
"in so doing, it makes and breaks the circuit; " but he
does not pretend that the rotating arm is ever separated
82
83
84
22
85 from the metallic plates with a snap-action, either to
break a spark, to reduce the time of burning, or for
any purpose whatever.
No one for complainant has said that Perkins'
first claim covers a circular series of segmental con-
tacts, combined with a centrally pivoted contact arm.
On the contrary, complainant has, at all times, said
that the Perkins patent only includes a certain organi-
zation of a switch for effecting a snap-action to quicken
the separation of metallic contacts on breaking a cir-
86 cuit.
87
Sawyer evidently understood the difficulty that must
arise from burning (his patent, Rec., p. 307, lines 58-
68, p. 1); but the admission of this fact in no way af
fects the validity or scope of the Perkins patent. The
bare fact that Sawyer was aware of the difficulty, and
that he tried to cure it in the manner he did, affords
strong evidence of the importance and value of Perkins'
improvement. Sawyer's plan for extinguishing a lamp
was to first form a by-path, the resistance of which should
be gradually lowered till all of the current was carried
through the shunt, and little or none through the lamp
(Vansize, 16 Q., Rec. p. 149; Stockbridge, 88 Q., Rec.
p. 106; Laass, 120 x-Q. Rec., p. 207).
By the first movement of his switch he closed a shunt
circuit around the lamp, including two resistance coils
of one and two ohms respectively, and, by further
movement, the resistance coils were dropped, one after
the other, from the shunt until the lamp was wholly
short-circuited. This plan was obviously imprac-
ticable for incandescent lamps, not only because
of the expense of resistance coils, but more par-
ticularly because it required the formation of a
a new circuit of low resistance wherever a lamp
was extinguished, and a consequent large loss
of power.
In fact, the same power would be con-
sumed in the system whether the lamps were extin-
guished or left burning. Perkins, however, avoided this
waste by at once breaking the circuit; nor did he in
accomplishing this result either burn the switch or add
to the expense of construction.
23
In the early days of electric lighting the gas jet was a 89
formidable competitor, and an electric switch combining
the simplicity and durability of the gas-cock became a
prime necessity (Vansize, 5 Q., fol. 547, Rec. p. 137).
This Sawyer did not have, and it is with great reason that
Vansize and Stockbridge have testified that incandescent
electric lighting could hardly now exist as a com-
mercial industry if the art were dependent upon the
switch shown in Sawyer's patent No. 237,608 (Vansize
16-19 x-Qs, Rec. pp. 148-150; Stockbridge, 88 Q.,
Rec. pp. 106, 107).
Stockbridge (88 Q., Rec. p. 107): "The Sawyer
"switch could not be generally used in modern
systems of electric lighting. The expense would
"be prohibitive."
66
Vansize (16 Q., Rec. p. 149): "The Sawyer
"device would be prohibitively expensive, cumber-
"some and complicated."
The business of incandescent electric lighting ob-
viously would not stand a five-dollar switch at each
lamp.
It is significant that Sawyer's patent is one of the
two out of fifteen, set up in the answer, which were re-
garded as important enough by defendant to be pre-
sented to its expert. Certainly in this fact we find
proof that Sawyer's patent is substantially the only
one that was entitled to consideration as a defense.
The other was Guest's, which, as will presently be seen,
is of no moment. But as a substantial defense, Sawyer
amounts to nothing at all, for Laass admits that there
is not even the snap-action at the separation of
contacts, as the rotating arm is moved from one
segment to the next :
66
Laass (Rec. p. 207). 117 x-Q. In the switch
"shown in W. Sawyer's patent No. 237,608, do
you find any snap-action involved when contacts
66
are broken in the switch?
"A. There is a spring action in this instrument
90
91
92
24
93
"which serves to maintain the switch-arm in con-
"tact with the metallic face of the switch.
61
"118 x-Q. But, as the switch-arm A moves from
one segment to the next of the switch, there is no
breaking of contact by snap-action, is there?
"A. No, sir."
These facts clearly appear on the face of the Sawyer
patent, and they are illuminated by the testimony of
Stockbridge (Qs. 88, 89, Rec. p. 106) and Vansize (Qs.
94 16, 17, Rec. p. 148). They also testify that there is no
snap-action under any circumstances in the separation
of contacts in the Sawyer switch.
95
96
Laass, in answer to cross-question 117, called at-
tention to the fact that Sawyer had a spring, but
this is of no importance, for he admitted that it was
only used to hold a switch arm in firm contact with the
circular range of plates, and not at all to cause snap-
action; and, again, he admitted that, if the Sawyer switch
were incautiously turned backward, metallic contact
would be re-established if the circuit had already been
broken.
Laass (Rec., p. 207): "119 x-Q. And if the
"switch arm were rotated from one segment
"to the next, and were then incautiously turned
"backward, there is nothing here to prevent re-
"establishing metallic contact with the first seg-
ment, is there ?
66
66
A. No, sir."
If these admissions were not enough, there is an-
other by Laass which cannot fail to dispose of the
Sawyer patent as a reference to Perkins:
"120 x-Q., Rec. p. 207. Now, please look critically
"at this W. Sawyer patent, No. 237,608, and tell me
"if it does not show an arrangement of graduated
"rheostats for breaking the spark as the current is
"turned on and off from lamps. In fact, does not
"the snap action of Perkins, at the moment of
"separating contact, take the place of the elaborate
25
"rheostatic arrangement of Sawyer as shown in
"this patent?
"A. The Sawyer patent does show a rheostat
"to prevent sparking in breaking a circuit and
"in the turning off of the lamps, which Perkins ac-
complishes by the peculiar construction of his
"switch."
97
If Sawyer's patent could be called a defense, it is
doubtless the best that has been presented. It shows
a device in which burning might occur. But defend- 98
ant's expert fails to claim that the device acts to cause
either a quickened separation of contacts, or that it
contains a single essential feature of the Perkins claim;
on the contrary, under cross-examination, he, in words,
admits that none of the features claimed for Perkins by
complainant is found in the Sawyer device.
There can be no force in Mr. Laass' contention that
Perkins' claim must be limited because of Sawyer, for
a circular range of contacts with a centrally pivoted
arm is not in question. The introduction of Sawyer's 99
patent, however, has served a useful purpose-not to
show a defense-but as evidence of the novelty and
utility of the Perkins apparatus.
The Gilliland and Rogers Patents are said by Defendant
to be the Most Important Defenses.
It would be difficult for one skilled in the art of
dial, district or fire telegraphy to understand in what
sense notched circuit wheels, used in such systems,
are relevant to defeat or limit Perkins, yet the Court
below attached great importance to the patents of
Gilliland, 116,429, of 1871 (Rec., p. 238), and Rogers,
139,690, of 1873 (Rec., p. 249); and to them doubtless
it was due that the bill was dismissed. Moreover,
these patents, with that of Bradley, 204,708, of 1878
(Rec., p. 299), have been selected by defendants' expert
as the most important of the defenses set up against
the Perkins claim :
100
26
101
Laass (Rec., p. 199): "68 x-Q. Do you, or do
"you not regard the Gilliland patent 116,429,
the Rogers patent 139,690, and the Bradley
66
patent 204,708 as the most important defenses
"which have been presented by defendant in this
"suit?
"A. I believe they are."
Defendant cited none of these patents in the answer,
but they were offered in evidence with models purport-
102 ing to represent telegraphic trausmitting devices de-
scribed in them; the patents, however, show nothing
of an anticipating nature; nor for that matter do the
models, although they are inaccurate and misleading
copies (Stockbridge, 73 Q., Rec. p. 91; Vansize, 6 Q.,
Rec. pp. 143-144; Laass, 8-45 x-Qs., Rec. pp. 188-195).
The points of similarity are that these patents show
notched wheels and contact strips or springs; also, in the
Gilliland device, which is copied by Rogers, a lock is
used to prevent backward rotation of the wheel. The
103 defendant now contends that Gilliland's teeth are
Perkins' metallic projections; that Gilliland's friction
lock to prevent back rotation, and air spaces between
teeth, are the equivalent of Perkins' insulating notches
for preventing a reverse movement of his button switch;
that Gilliland's gliding contact strip or spring is the
pawl or detent of Perkins. But it should be enough
for our purposes to show that these patents were ob-
tained upon devices which were adapted to carry only
small currents having no appreciable burning capacity,
104 and that there was present no snap movement either
to avoid burning or for any other purpose. Upon these
points there is no question.
Lauss (Rec., p. 198): "61 x-Q. Now, with
"reference to the Gilliland patent 116,429, the
Rogers patent 139,690, and the Bradley patent
66
66
204,708, they are simply for telegraph devices,
are they not?
"A. They are.
"62 x-Q. Do you know about what strength of
27
"current is ordinarily used in such telegraph 105
66
systems as are shown in these patents?
"A. I do not remember.
"63 x-Q. But they are very light, small or at-
"tenuated currents, are they not?
"A. They are.
"64 x-Q. They are so small in fact that they
"have not capacity to burn or even to make a dan-
66
66
gerous spark, are they not?
"A. That is so.
"65 x-Q. In electric lighting apparatus, how- 106
ever, the switch by which current is turned on
"and off invariably and always has a capacity to
"burn, has it not?
"A. It certainly has.
"66 x-Q. And it was these burning currents
"that Perkins was attempting to handle with
"the switch covered in the first claim of his pat-
66
ent, was it not?
"A. It was.
"C
'67 x-Q. And he was trying to make a device 107
"that would avoid burning while he was hand-
"6
ling these heavy currents, was he not?
"A. Yes, sir."
Clearly Perkins was attempting to break heavy elec-
tric currents without unduly burning the contacts at
separation (Laass, 66, 67 x-Qs.); and to this end, as
Laass says, he employed in a hand switch such an
organization that metallic contacts were never broken by
the slow movement of the operator's hand (Laass, 107 108
x-Q.; Rec., p. 205). To this end be employed not
merely a snap-action, but enough of it to meet the re-
quirements of the case. A small accidental snap move-
ment bearing no predetermined relation to the volume
of current in the circuit would have amounted to nothing
for his purposes, for the snap-action of an efficient
switch must continue for a distance proportioned to
the volume and strength of current. Laass says that if
two contacts in a circuit carrying one hundred volts
(less than the ordinary pressure used in an incan-
28
109 descent electric lamp) were separated by only a hun-
dredth of an inch, an arc would be drawn and main-
tained (Laass, 90, 91 x-Qs., Rec., p. 202); but if the
points were pulled far enough apart the flame would
be broken (92 x-Q.). In other words, Laass says that
there must be a snap-action and that the snap-
action must take place through a distance exceed-
ing the capacity of the current to maintain an arc,
because a shorter snap movement would not suffice to
break the flame (Laass, 97-99, 116 Qs., Rec., 203, 206).
Everybody agrees that there must not only be
110
a
snap-action to separate contacts in a slow-
moving hand switch, but that the snap-movement
must continue over a predetermined distance.
The importance of a substantial snap-movement is
made apparent by the small switches presented as ex-
hibits in this case. Mr. Laass says they show means
for effecting a quickened separation through a space of
an eighth of an inch (111-113 x-Qs.; Rec., p. 206); he
also says that, in switches for larger currents a wider
111 break would be necessary, and that it might be desira-
ble to increase the distance of snap-action to half an
inch or even more (114, 115 x-Qs.; Rec., p. 206).
It is true that Gilliland, Rogers and others were en-
gaged in breaking electric circuits to send telegraph
messages, but the breaking of such circuits raised no
question as to how one would break a large current
to avoid a flame (Laass, 101, 102, 121 x-Qs.; Rec., pp.
204, 207). But, even if small accidental snap breaks
would sometimes occur in the use of telegraph wheels,
112 their patents afforded no real information; for, if
they showed any design, it was that the snap action,
which is the foundation of the Perkins invention,
must, in such apparatus, be avoided (Vansize, 6 Q.,
46 x-Q.; Rec., pp. 143, 160; Stockbridge, 73 Q.,
Rec., p. 94).
Stockbridge (73 Q., Rec., p. 94:) "With
the rise of the electric light industries.
(6
46
a
new problem presented itself, and it was this
new problem which the Perkins invention was
29
66
"intended to solve. That Gilliland had no notion 113
of preventing the burning of his contacts is to be
presumed, not only from the fact that he says
66
66
nothing about it in his specification, but that
"there was no special call for any provision of this
"sort."
66
Now, his object (which he had for that matter,
"in common with all inventors and manufacturers
"of telegraph transmitters) of preventing the mu-
"tilation of the message to be transmitted would
"have been inevitably interfered with if he had 114
"allowed the spring conductor, T, to drop to the
"bottom of the notches. It is manifest, therefore,
"that he could not have had such a design, as it
"would have destroyed the utility of his appa-
"ratus."
66
(Rec., p. 93, fol. 370:) "It is a fact, and this
"fact is admitted by Mr. Laass, that if Gilliland
permitted the free end of the spring T to touch
"the bottom of the notches, the message designed
"to be sent by the transmitter would be mutilated 115
" and unintelligible. The entire usefulness of the
"instrument would be destroyed."
(Rec., p. 93, fol. 371:) "And, second, that the
"notches in the disk Q are very shallow, and
"that a heavy spring would necessarily do just
"what Gilliland was obliged to avoid, namely, re-
"establish contact after the point of a projection
had been left and mutilate the entire message.'
(Rec., p. 93, fol. 391:) "But, granting that it
"were strong enough to strike the bottom of the 116
notch, the circuit would be re-established by
.6
66
"its contact with the metal, which is precisely
"what Gilliland wanted to avoid, and which would
66
also be fatal to the proper action of a switch
"for electric lights."
(Rec., p. 93, fol. 399, again referring to Gillil-
and :)" In the second place, from the construction
"and necessities of his apparatus, he did not have
"and did not want any snap-action on the separa-
"tion of the metallic contacts."
30
117
118
119
An inspection of the patents and this testimony
should be sufficient; but if it were not we yet have
the admission of Laass.
66
Laass: "16 x-Q. Did you ever see any of these
"circuit-breaking wheels in practice where there
were metallic teeth and deep notches cut between
"them where the end of the circuit spring was
"permitted to drop to the bottom ?
"A. I did not.
"17 x-Q. If the end of the spring were per-
"mitted to reach the bottom of the tooth the cir-
"cuit in fact would not be broken, would it, and
"signals would not be transmitted?
"A. It would not if the intervening surface was
"of metal."
"19 x-Q. So it is entirely fair to say that in
"the Gilliland patent the free end of the spring T
"did not and must not reach the bottom between
"the teeth?
"A. That is so.”
Stockbridge (74 Q.; Rec., p. 103) again says there is
no indication in any of these patents of a device or
arrangement by which a snap action is effected to
quicken the separation of metallic contacts. The
same view is expressed in Vansize's fifth answer, and
again in answer to question 8 (Rec., p. 147) Vansize
says:
66
No; there is no snap-action in the transmitters de-
120"scribed and illustrated in either of the three patents.
referred to."
But it is said by defendant that while Gilliland,
Rogers and Bradley were met with no such difficulty
in transmitting telegraph pulses, they did, nevertheless,
patent the Perkins apparatus, and that Perkins, there-
fore, merely applied their devices to a new use; and
that in so doing he made no new invention, except to
modify details of construction. In view of the testi-
mony already cited, it is no longer a debatable ques-
tion whether in telegraph apparatus the contact-spring
31
should bound upon a tooth or vibrate when its free 121
end is in midair over a notch: If the end of the spring
were to vibrate upon the crown of a tooth, a false signal
would be made with each coming together and each
departure of the contacts; and, if the spring were suffi-
ciently elastic, its point on descending from a
tooth would strike the bottom of the adjoining notch
and thereby also send two false signals-one when the
contact was made and another when it was broken.
Each vibration, either upon the crown of a tooth or at
the bottom of a notch, means two false signals to 122
mutilate the message sent. It is therefore apparent
that the spring point of such a transmitter should, as
Vansize says (Q. 5, Rec., fols. 568, 569), ride or glide over
the teeth of the wheel. Gilliland and Rogers, in their
patents, show shallow notches, and this construction,
coupled with the necessity for avoiding vibrations
that would cause false signals, conclusively shows
that their contact springs must never act under a snap-
action. In fact, any degree of such movement would
manifestly tend to a mutilation of signals and a falsifi- 123
cation of the message.
It is also important to note that if, in the arrange-
ments of the Gilliland and Rogers patents, there were,
by mischance, a snap movement at the point of a con-
tact-spring, it would not result in a materially quick-
ened separation. As shown in the Gilliland and
Rogers patents, the teeth of the circuit wheel
have radial sides, while the spring is so arranged that
the movement of its point from the crown of a tooth
towards the bottom of a notch will be nearly parallel 124
with the radial face, thus rendering a widened sepa-
ration impossible, even if there were a snap-action. In
fact, the point of a spring would scrape or slide down
the radial face and still be as close to the tooth as be-
fore, except for the slow, uniform movement imparted
to the wheel by the hand of the operator. It is quite
possible that the point of the spring might be arranged
to clear the radial face in dropping from the crown,
but with the construction shown in the patent there
would be little or no separation from the snap move-
32
125 ment. The drawings and specifications of the Gilliland
and Rogers patents make clear these assertions, as do
the models which were offered by defendant to repre-
sent the Gilliland arrangement.
Fig. 6 shows a Gilliland wheel with the point of the
Fig. 6.
126
127
spring in the position it would occupy after leaving the
crown of a tooth, assuming that there were a snap
action, while Fig. 7 shows the modification that
Fig. 7.
128 would be necessary to make effective a snap action.
Clearly, these cuts show that there is no quickened
separation where radially faced teeth are used (Stock-
bridge, Rec., 97).
The Models Offered by Defendant to Illustrate Circuit-
Breaking Wheels of the Gilliland and Rogers
Patents.
These models are conspicuously unfair representa-
tions of the devices shown in the patents. The two
33
Gilliland models, however, do serve to show: (1) That 129
the spring point in its descent, as in Fig. 7, scrapes
the radial faces of the metallic teeth, and (2) that a
spring with
could not be em-
a snap action
ployed with the Gilliland wheel, shown in the
patent, without materially modifying its construc-
tion by covering the bottoms of the notches with in-
sulating material. The merest inspection of the first
Gilliland model shows that the point of the spring would
actually scrape down the radial face of each tooth as
the wheel was slowly turned. Defendants were at 130
first satisfied to depart no further from the Gilliland
patent than to supply a snap action at the end of the
spring where, obviously, no such movement had been
contemplated, for evidently they did not then realize that
the model would still fail as a likeness of the Perkins
switch from the fact that the point of the spring would
scrape the radial surfaces of the teeth. The teeth to
make a quickened separation should be overhanging,
and their points should reach out over the notch.
After the cross-examination of its expert Laass, 131
however, it became apparent to defendant
that the main feature of the Perkins device
was yet absent, and that another model must be
made. As a result of this discovery, Defendants'
Exhibit Second Gilliland Model was produced during
complainant's rebuttal. No objection, however, is
made by complainant to the introduction of the new
model, for it is believed that it is useful to show the
difficulties that defendant encountered in its effort to
make a Perkins switch out of a Gilliland telegraph 132
wheel. The second Gilliland switch was, in fact,
defendant's third effort in this direction, (Vansize,
68 x-Q., Rec., pp. 166, 167; 71 Re-d. Q., Rec.,
p. 168). Defendants, in making the Rogers model,
should have reproduced the Gilliland wheel, inas-
much as it is stated in the Rogers patent that his
circuit-breaking wheel is that of the Gilliland patent
116,429. Laass says the Rogers model should have
been a copy of Gilliland's (Laass 30 x-Q.; Rec., pp.
192, 193). But the Rogers model omits even those
34
133 faint resemblances of Gilliland's patent that are found
in the latter's model. Both patents have projecting
metallic teeth with intervening spaces, but
the first Gilliland model shows a wheel with
metal teeth, while the Rogers model shows pro-
jecting teeth of insulating material (Laass, 32, 33
x-Qs. Rec., p. 193). In the Gilliland model,
having metallic teeth, there might be a snap action
at the point of the spring; but in the Rogers model,
where the projecting teeth are of insulating material,
134 there could never be a separation, except by
a slow movement, for, in turning the wheel, the in-
sulating teeth would wedge the point of the spring
away from the metallic bottoms of the notches (Stock-
bridge, 74 Q., Rec., p. 103; 83-87 Qs., Rec., p. 105;
Vansize, 7 Q., Rec., pp. 146, 147). Rogers' model is,
of course, absurd, as is admitted by Laass (35, 36 x-Qs.,
Rec., p. 193). He says, however (37 x-Q., Rec. p. 193),
that Rogers' substitution of insulating projections for
metallic teeth is
135
66
simply a substitution of one well-known material
"for another, and they produce substantially the
"same effect when in operation."
But this is a preposterous statement. The defend-
ant was trying to show a snap separation of contacts
to anticipate Perkins. The Gilliland model with
metallic teeth might have been changed to include this
action; but in the Rogers no such movement could be
136 possible. It certainly is preposterous to produce
devices, to defeat Perkins, in which metallic contacts
could by no possibility ever be separated by a snap
movement. The first Gilliland model was provided
with metallic teeth having radial faces with shallow
intervening notches, the bottoms of which were covered
with insulating material. The insulation was made
necessary in order that the point of the spring, when
given a snap action, in imitation of the Perkins device,
should not strike the bottom of the notch, thereby
causing a false contact.
35
Defendant's second Gilliland Model, No. 2, omits the 137
insulating strips; but the notches in No. 2 have
been deepened, and the vibrating range of the contact
spring has been so far reduced as to prevent contact
at the bottoms. The metallic teeth of the wheel are
also here cut with overhanging points, as in Fig. 7
(ante, p. 32), while the heel of the spring is so mounted
that, when the point passes from the crown of a tooth,
the snap action must result in a quickened separation
of contacts. Thus changed, however, the No. 2
model is more of a departure from the Gilliland 138
patent than is the first. In fact, this model is
in substance substantially the modification of the
Gilliland patent that Mr. Stockbridge had already
said would be necessary to give it the substantial
characteristics of the Perkins switch (72 x-Q., Com-
plainant's Exhibit, Stockbridge Gilliland Sketch,
Figs. 1 and 2; Rec., p. 97 A). An exposition of this
subject requires very little testimony. It may be
noted, however, that Vansize has stated (68 x-Q., Rec.,
pp. 166, 167) that the faces of the circuit-wheel of the 139
Gilliland Model No. 2 are no longer radial so that the
point of the spring might scrape down the faces of the
teeth. As he says, it is obvious that by cutting the
teeth away below their crowns a greater separation
by snap movement is made possible.
When Laass was cross-examined, (Laass 20 x-Q.,
Rec. p. 191), the point of the contact spring T of
the Exhibit Gilliland Model No. 1 rested heavily
upon the insulating strip at the bottoms of the
notches; but, subsequently, this was changed. Dur- 140
ing the rebuttal, Stockbridge (140 x-Q., Rec., p.
131) was asked by defendant's counsel "whether the
"brush or spring conductor bears at its tip on the in-
sulating portions." A like question was also asked
Vansize (80 Re-x-Q., Rec., p. 171).
unimportant whether the point of
touches the insulating strip or not.
did, and these questions, therefore, only show that,
since the model was put before Laass, defendants had
found that it must be modified.
66
Of course, it is
the spring now
Laass said it once
36
141
In the first Gilliland model the insulating strips were
an indispensable feature, because the notches in the
patent were very shallow, and if the spring had been
given a range of movement necessary to show the snap
action of an electric light switch the wheel would have
been spoiled as a telegraph transmitter. In other
words, with shallow notches Gilliland had to have
either no material snap-movement or the bottoms of the
notches had to be covered with insulation. It is
agreed by all of the witnesses that in the Gilliland
142 wheel the end of the spring must never reach
the bottom of a notch. It is also agreed by Laass that
in supplying the insulating strips at the bottom of the
notches defendants did depart from the description of
the Gilliland patent (Laass, 17, 19, 20, 25 x-Qs., Rec.,
pp. 190-192). Stockbridge's testimony is the same
(Rec., p. 92, fol. 368).
The misleading character of the first Gilliland model
is at once apparent from these considerations. The
patent does not contemplate that the spring T shall
143 drop to the bottoms of notches, but the model does;
and all because it was desired by defendant to make the
model show a sufficient snap-action to resemble the
Perkins switch. Gilliland's patent shows no insulation
at the bottoms of his shallow notches, because, as he
wanted no snap-action, the presence of such insulation
would have been an incumbrance. A model could
easily enough have been made without the insulat-
ing strips, and with a spring that would remain in
air above the shallow notches of the patent; but this
144 construction would have revealed the fact that the
spring of Gilliland's patent had no snap-action, and
thereby have shown that the device had no bearing to
limit or defeat Perkins.
Gilliland's Lock.
Gilliland professes to employ a lock to prevent the
back turn of the notched circuit wheel Q after it has
been turned to a position to transmit any desired char-
acter on the dial; but, as is shown in the patent draw-
37
ings (Rec., p. 238), the device is inoperative, for, 145
while pawl X would lock the wheel against forward
clockwise rotation, it would be impotent to arrest
a back movement. This is apparent from the fact
that pawl X must move with Q, if at all, but in so
doing the outer point of X would clutch the inner
smooth periphery of stationary collar Y and arrest
further rotation. It is not said in so many words that
friction ring Y is stationary, but that this is so is ap-
parent from a statement at the end of the first page of
the patent, where Gilliland compares his lock with prior 146
well-known devices having "pawls and STATIONARY
RATCHET WHEELS to prevent reverse motion."
The lock shown in the Rogers patent is a copy of
Gilliland's, and, of course, contains the same defect.
Little importance, however, should be attached to this
obvious feature of inoperativeness; for, whatever the ca-
pacity or incapacity of the lock as a means for preventing
the back turn of a notched circuit wheel, it is in no sense
used to prevent the burning of contacts in an electric
switch: It is merely designed to prevent the mutila- 147
tion of telegraph signals, which would often occur if
the wheel could be turned back after having been
rotated to its proper place. For example, if the wheel
were first moved to position to transmit letter J, and
were then turned back so that the last tooth were
again brought into contact with spring X, the letter K
instead of J would be sent. Likewise, the lock will
prevent a back turn when the wheel is arrested at
points where the spring rests upon the crowns of the
teeth, and, as before, it is useful to prevent false 148
signals, for in this apparatus false signals are caused
equally by breaking and closing contact after the wheel
has been properly set, from the fact that the indicator
at the receiving station is moved a step each time the
circuit is closed, and a step each time it is broken.
We have not far to go for proof that the Gilliland
lock was only intended as a means for preventing false
telegraph signals. This is shown by Laass as well as
Vansize and Stockbridge.
38
149
150
151
Laass (Rec., pp. 196, 197): "52 x-Q. But there
"is not a word or suggestion that Gilliland would
"avoid turning backward to prevent sparking or
"burning?
"A. The specification does not contain any
66 statement to that effect.
66
"53 x-Q. Nor any inference?
"A. No, sir.
"54 x-Q. What, then, would be the advantage
obtained by Gilliland in having a device to pre-
"vent turning the wheel backward, as shown in
"his patent 116,429?
"A. It is to prevent making false signals.
"55 x-Q. That is to say, if the circuit-breaking
"wheel had been turned to a point where the end
66
66
of spring T was between the teeth and the
"wheel were turned backward into contact with the
spring, there would be a mutilation of the mes-
sage or signal which had just been transmitted;
" is not such the case?
66
"C
"A. Such is the case.
"56 x-Q. And Mr. Gilliland had no notion of
preventing his wheel from moving backward for
any other reason, so far as his patent shows, had
he?
"A. I presume that this is the only reason he
"arranged his transmitter as shown."
The Perkins detent, his overhanging metallic teeth
and the radial faces of the insulating notches serve, in
152 combination, to automatically cause any desired extent
of snap-action break. In other words, his detent and in-
sulating notch insure a sufficient movement, even if they
do not act to positively throw the switch into a position
where the arc will inevitably be broken. But Gilliland's
spring and lock have no such capacity. Wherever
Gilliland's wheel is first arrested by the hand of the
operator there it must stay until again moved by the
same slow agency. There is no organization of a spring,
insulating notches or other means that will insure a pre-
determined movement or force the wheel on to a point
39
where the arc must be broken. In other words, as 153
Vansize says (5 Q., Rec., p. 141), Gilliland locks his
wheel in one position as well as another; and if it were
used to control heavy currents and were stopped with
the point of the spring T near a tooth, the arc would
remain unbroken.
The Floyd Patent, No. 186,819, January 30, 1877 (Rec.,
p. 283):
This is one of the patents which Judge COXE referred
to in limiting the Perkins claim. The device is a fire- 154
alarm telegraph, and naturally contains none of the
characteristics of the Perkins invention. Especial at-
tention, however, is called to this patent from the fact
that it conclusively shows that it was not the intention.
of the inventor to have other than a gliding contact
between the teeth of the circuit wheel and a contact
strip. In this arrangement, as the drawings show, the
point of the spring never rests upon a tooth of the
circuit wheel. In fact, the spring is bellied or
rounded at its point in such manner as to rest on 155
two teeth of the wheel at once. This construction is
entirely consistent with the purpose of the apparatus,
and clearly shows gliding contacts and not a snap
action.
up
In the Court below defendant's counsel has devoted
nearly three pages of brief to the Floyd patent (De-
fendant's Brief, pp. 11-13), yet it only shows a contact
strip with a rounded-up end, at which a suap break
could by no possibility occur.
Guest's Patent 193,650 as a Defense.
The patent of J. H. Guest, No. 193,650, July 31,
1877 (Rec., p. 287), with a model illustrating the trans-
mitter shown in Fig. 14 of the drawings, was cited by
the Court below as a further reason for limiting Per-
kins' claim. This is one of the two patents of the fif-
teen set up in the answer, to which Mr. Laass referred
in his deposition; but, if it were possible to find an
156
40
157 electric device less like the Perkins switch than are
those of Gilliland, Rogers and Sawyer, the Guest wheel
would be the one.
The Guest model is an unfair rep-
resentation of the patent, as the contact spring is too
stiff and has too much movement at its point for a
telegraph transmitter. Guest only had a fire-telegraph,
and only used a very light current (Laass, 77 x-Q., Rec.,
p. 200), nor did he contemplate the difficulty of burning
(Laass, 121 x-Q., Rec., p. 207), nor does he show means
to prevent making metallic contact, either in the patent
158 or otherwise, if the device were incautiously turned
backward (Laass, 87 x-Q., Rec., p. 201; 145, 146 Re-
x-Qs., Rec., p. 213). As a matter of fact, Guest's
wheel would never be turned backward because it is
driven by clockwork. Moreover, the wheel moves only
at a slow, uniform rate. Guest shows metallic teeth
and adjoining insulating sections; but an inspection
of the model discloses the fact that the point of the
spring, in only one instance out of four, where a tooth
is followed by an insulating section, could snap from a
159 metallic tooth upon an insulating piece. As to the
other three metallic teeth, the periphery is smooth, the
notches next to the teeth being filled with insulation,
so that the point of the spring would glide from metal
to insulation over an unbroken surface.
Stockbridge (92 Q., Rec., p. 110): "There are four
"insulating pieces on the periphery of the wheel, but
"three of them are so arranged that the brushes pass
directly from a conducting portion to the insulating
portion without any snap whatever, the parts being
160 flush with each other."
66
Stockbridge also shows (90 Q., Rec., p. 109) that, in
the one instance where the spring point descends from
a metallic point into a notch, there is no widened sep-
aration by snap action; and, further (93 Q.), that the
Guest model could not possibly be used as an electric-
light switch. These views are set forth by Vansize.
Vansize (13 Q., Rec., p. 148):
"There is no snap action like that forming a
41
"characteristic feature of the Perkins invention, 161
"and, in my opinion, the Guest device does not
"bear any substantial relation to the
"invention."
Perkins
He also says that in the one instance out of
four where snap-action might occur, it would not result
in a widened separation of contacts, because even then
the spring point would remain near the metallic tooth
(15 Q., Rec., p. 148).
162
Guest's device, so far as it bears upon Perkins' in-
vention, is typical of all telegraph devices employing
circuit-wheels; but this casual review shows that it has
not a single characteristic feature in common with the
Perkins switch. Burning currents are not in question;
there is no possibility of a snap-break oftener than once
in four times, and then such movement could not effect
a quickened separation. Nor is there any means to
determine, force or insure a sufficient break. In fact,
as Stockbridge and Vansize testify, the device is at all
163
times incapable of snap-action.
Guest, like Gilliland, wanted a gliding movement as
the teeth of his wheel passed beneath a contact point,
and not a vibrating action that would cause false signals
in his telegraph messages.
In comparison with Perkins, Guest is only in point
to mark a strong antithesis.
Circuit wheels in which the Notches are Filled with 164
Insulating Material to Form Smooth Peripheries, and
Other Arrangements for Avoiding Snap Action in
Telegraphs.
With the exception of the patents of Gilliland,
Rogers, Floyd and Guest, most of the others cited by
defendant show circuit-wheels as represented in figures
8 and 9 with the intervening notches filled with insulating
42
165
Fig. 8.
166
Fig. 9.

167
material. Of course, there could be but one object in
thus filling the notches-namely, to prevent vibration
or snap action at the point of the contact spring.
The roof of a house may be taken as evidence that
rain is not wanted in the rooms below, and, equally,
the filling of notches in a telegraph wheel with insula-
tion shows that the contact spring should glide and not
jump in passing over its periphery, and that the Per-
kins snap action is neither needed nor wanted.
It
In fact, it shows that the prime necessity in tele-
graphs is to avoid such spring or snap movement.
was with full knowledge of these facts that Messrs.
Vansize and Stockbridge said that, where circuit wheels
were used for transmitting telegraph messages, the
spring contact must "glide," and not jump, in passing
over the teeth; that it must not vibrate on leaving a
metallic tooth, and that its point must never reach the
168 bottom of a notch.
The reason for not filling the notches in Gilliland's
and Rogers' wheels is that a wheel with unfilled notches
is lighter, cheaper to make and less liable to get out of
order. A gutta-percha filling for the notches might
also become covered with metal by the dragging of the
brushes. Doubtless Rogers and Gilliland would have
preferred wheels with notches filled flush to the peri-
phery with insulating substance, and, most likely, in
practice, they so constructed them.
The notched wheels, however, were good enough to
43
illustrate a rotating circuit-breaker in their patents; nor 169
was the device wholly inoperative for it was then known
that a contact spring could be made to rub or glide over
teeth and open notches without serious vibration ;
though no one had thought of aggravating or increas-
ing this action to prevent burning or for any other pur-
pose prior to Perkins.
Some of the patents cited in which the circuit-wheel
notches are filled with gutta percha or other insulation
are:
69,503, J. H. Stevens, October 1, 1867.
111,394, W. D. Smith, January 31, 1871.
168,058, H. W. Spang, September 21, 1875.
169,514, R. K. Boyle, November 2, 1875.
204,708, J. J. Bradley, June 11, 1878.
251,234, J. O. Jeffries, December 20, 1881.
170
It should be noted that defendant referred to the
patents of Gilliland, Rogers and Bradley as its most
important defenses (Laass, 68 x-Q., Rec., p. 199).
Bradley, however, filled his notches with insula-
tion, and could by no possibility have had a snap 171
action of the contact spring, as his trailer neces-
sarily glided over a perfectly smooth surface formed
of alternately arranged insulating and conducting
strips, thus making it obvious that the Bradley patent
could have no bearing either to limit or defeat Perkins.
The omission of insulating filling from the Gilliland.
and Rogers patents should give them no additional
weight as anticipations. At most, their notches were
left open merely for convenience of illustration, or to
avoid the expense and difficulties incident to the use of 172
insulation. Of course, in avoiding the expense of
filling their notches, their wheels may have become
subject to minor snap movement; but, while they may
have been willing to burden their apparatus with a
small defect, it cannot be assumed that they wanted to
aggravate the difficulty so far as to make their tele-
graphs inoperative as they would have done if the
contacts had been allowed a snap movement like that
of the Perkins switch.
These patents are also important to show that the
44
173 organization of a rotating contact spring and a station-
ary circuit wheel in telegraphs was as common as that
of a stationary spring and a rotating wheel. If, in this
art the two forms were equally common, it is difficult
to see why rotating and stationary wheels in lighting
should not be accepted as equivalent arrangements.
Much other evidence is found in the telegraph pat-
ents showing how unanimously all were attempting to
realize a gliding contact between circuit wheels and
the contact springs. As we have noticed, Floyd (Rec.,
174 281) bent the spring so that only a convex or rounded
surface near its end should rest upon the periphery of
a notched wheel, while Sawyer (Rec., 259, 268), Floyd
(Rec., 281) and Guest (Rec., 288) all show a spring, b,
Fig. 9º
175
a
as in Fig. 9a, mounted on a broad support, c, with
such short a projecting end that only the merest vibra-
tion would be possible as the teeth of wheel a passed
beneath its point.
Gilliland's spring, being only diagrammatic, looks as
though its point might have a snap action; but the
form of his teeth, the shallowness of the notches and
176 the purpose of the apparatus show that he, like others,
required that construction of spring which is illus-
trated in Fig. 9a and in the various patents that it
represents. In fact, throughout the whole art of tele-
graphy, where springs and notched wheels are shown,
otherwise than diagrammatically, they are mounted as
in the drawings of these Sawyer, Guest and Floyd
patents, and as shown in accompanying Fig. 9a.
Little's patent No. 115,966, although not specifically
for a telegraph, is even more instructive than are those
having wheels with the notches filled with insulating
45
material to make a smooth surface or periphery, for he 177
shows how to use notched wheels without producing a
snap movement at the point of a contact spring. Here
is a wheel with deep notches and friction springs, but
Little specifically says, as appears from the following
part of his specification, that the springs are to rest
upon the teeth of the wheel with "but very little
force:"
66
"The periphery of the wheel c may be covered
with platina; and I remark that the springs 77 178
"and bars n n¹ can be bent from time to time so
66
66
as to cause the ends of the springs l l¹ to bear
with but very littte force on the wheel c."
In other words, he shows a contact which is so
light that a snap action would be impossible. Of
course, there was nothing new in this idea. Every-
body before him for thirty years had made telegraph
wheels with just such gliding contacts; and manifestly
Gilliland and Rogers intended to do the same. But 179
they were not as loquacious as Little, and upon their
omission to say what Little had said their patents are
brought forward as defenses. Little's patent was set
up in the answer; but, as it clearly showed that there
was only a gliding contact, defendant discreetly omit-
ted to question its expert about it.
Complainant has been surprised by the ruling that
the Gilliland and Rogers patents disclosed a snap
action. If it had been conceived that the Cir-
cuit Court could have fallen into this error,
a 180
large number of other patents like the Little would
have been cited to show a design on the part of tele-
graph patentees to make the springs of notched wheels
glide over the teeth either with no snap action what-
ever or with the least pressure that the construction of
such an apparatus would allow. But the patents
already offered by defendant establish our point.
A chance snap action in telegraph wheels, which
every one in the art wished to suppress, is no more
like the Perkins invention than a leaky house is like a
46
181 well. Houses and wells have enclosing walls, and a
bad roof that would let in rain would perhaps add
another feature of similarity. But as a means for
catching water the house should not anticipate the
well. A chance action, which has been expunged from
a different art where it was not wanted, should not
prejudice the invention of one who employs it as the
substance of his method.
182 The Patents Cited in the Answer and Those Offered
in Evidence in this Suit.
Fifteen patents were cited in the answer, two of
which were considered in the direct deposition of
defendant's expert, to wit: Sawyer, 237,608, and Guest,
193.650. The others to which reference was made
were:
Gilliland, 116,429; Smith, 129,867; Rogers, 139,690;
Bradley, 204,708; Gilliland, 241,963, and Jeffries,
183 251,234.
Thus, there are thirteen patents, out of fifteen,
cited in the answer to which Laass did not refer,
while six to which he did refer were not cited.
Two other patents-Floyd, No. 186,819, January
30, 1877, and Little, No. 115,966, June 31, 1871-
were offered in evidence, but not referred to by the
defendant's expert. Eleven of the fifteen patents set
up in the answer, however, were not even offered
184 to show the state of the art. And, further, out of
a list of twenty which were presented to show the
state of the art, seventeen were brought into the
record without having been cited in the answer.
other words, there are now before the Court four
patents that were cited in the answer and twenty-four
which were not.
In
No objection, however, is taken to these patents or
to the method of their introduction, although it is
understood that the courts will not review patents in
evidence if unaccompanied by explanatory testi-
47
mony (Waterman vs. Shipman, Circuit Court of Ap- 185
peals, 55 F. R., 982; Miller vs. Smith, 5 F. R., 359;
Jennings vs. Kibbe, 10 F. R., 669; Robinson Tobacco
Co. vs. Philips et al., 12 F. R., 670). Nor has com-
plainant objected to the introduction of the six patents
among the eight to which Mr. Laass' deposition is
addressed, because they were not set up in the answer.
Particular consideration of these patents, aside
from those of Sawyer, Gilliland, Rogers, Guest and
Floyd, is believed to be unnecessary. Two of them are
for gas-lighting devices-Gardiner, No. 124,126 (Rec., 186
p. 241), and Sanford, No. 232,304 (Rec., p. 302). In
these arrangements there are rubbing contacts, and
electric sparks are produced, but they are in no way re-
lated to the Perkins invention. In these patents are
shown two fingers which snap past each other for
drawing sparks to ignite gas, as a cock of a burner is
turned; a word, however, will show how different such
an apparatus must be from a Perkins switch. Perkins
has a device for alternately opening and closing an
electric circuit in such manner that the circuit may be 187
permanently closed or permanently opened to light or
to extinguish lamps. This neither Sanford nor Gardiner
had, and it alone shows the wide difference between the
electric light switch and a device for lighting gas by
an electric spark. It is thus seen that the electric gas-
lighting device has for its purpose the creation of a
spark, which it was the purpose of Perkins to suppress ;
and that Sanford and Gardiner sought to accomplish
what Perkins wished to avoid.
No less than eight of the remaining patents which 188
were offered to show the state of the art are for non-
electric devices in no manner involving the use or
application of electricity. Some are for augers, some
for monkey-wrenches and some for call-bells. Com-
plainant's counsel has some familiarity with such
devices, but what bearing they can have upon the
Perkins patent he cannot say.
If these augers
and wrenches were offered to show that there
many ratchet wheels in the art prior to
Perkins, they serve a purpose not to defeat Perkins,
were
48
189 but to broaden his claim; for, if stationary and movable
ratchet wheels were alternately employed in the various
arts, as these patents show they were, it would show
that, at the date of his patent, his means for breaking
an electric arc might be applied to all wheels, whether
rotating or stationary.
Why the electric arc in telegraphs, as
shown by patents already considered, is
190 unimportant, and why it must be overcome
in systems of lighting and power transmis-
sion.
If, as in Fig. 10, a conductor carrying a large current
is broken at c, the space between ends a and b will be
Fig. 10.
191
a
filled by an electric flame, commonly called the arc,
whose burning capacity will depend upon the amount
of current flowing and the resistance encountered by
the current in jumping from a to b.
If these points were slowly drawn apart the resist-
ance would at first be but slight, and the current would
flow as freely as before; nor would the flow of current
be materially diminished until a break of considerable
192 length had been effected. But, as the points are pulled
further and further apart, the resistance will increase
with the distance, thus developing a degree of heat
depending upon the length of the open
break. Mathematically the heat is determined
by multiplying this resistance by the square
of the current flowing, thus showing that the
heat of the arc is represented by a product, and not
at all by the electromotive force or number of cells.
of the generator from which the current is derived
(Stockbridge, Qs. 143-145, Rec., 132). Defendant has
49
assumed that there must be a large spark in telegraphs, 193
because batteries of large electromotive force, or
many cells, are sometimes used; but this is not so,
from the fact that a large electromotive force can
induce only a small current over lines of such great
length and resistance as are employed. The number of
cells employed is proportioned to the length of line
(Vansize, Q. 79, Rec. 170). If the line is long many
cells must be used; but, if short, only a few. In fact,
the great number of cells used in a telegraph has
nothing to do with the amount of spark, for the num- 194
ber is increased only to maintain a certain strength of
current upon an increased length of line.
Laass has ventured the opinion that a high volt-
age or tension and a current of small volume would
develop a greater burning effect upon breaking a cir-
cuit than would a low tension of large volume (Laass,
x-Q. 138, Rec., p. 212); but this is ridiculous.
Stockbridge (143-145 Re-d. Qs.; Rec., p. 132) ex-
plains that, as a circuit is broken, a resistance is inter-
posed at the point of disruption, and that the burn- 195
ing effect is represented by the product of the voltage
multiplied by the current flowing. This is Joule's law,
and it is better known perhaps than any other prin-
ciple in electrical science. More commonly it is said
that the heat developed in a part of a circuit, as in the
arc between a and b, Fig. 10, is represented by the
square of the current multiplied by the resistance; or,
that the heat developed in a fragment of a circuit is
equal to the difference of voltage or pressure at its two
ends (a and b) multiplied by the amount of current 196
flowing; and, again, that it is equal to the square of the
difference of pressures in the arc between the two points
(a, b) divided by the resistance of the intervening section
(Ganot's Physics, Atkinson, 13th Edition, Secs. 830, 831).
But, however stated, the result is the same, and it is
seen that heat or burning effects are due, not to high
voltages, nor alone to large currents; but, instead, to
the product of the two, and to this product only. It
is not, however, to be misunderstood, as defendant
imagines, that the voltage, which is a factor of this
50
197 product, is the entire voltage of the generator used. If
the generator developed two hundred volts, this press-
ure would be distributed over the whole outer circuit;
while between any two points of the circuit the differ-
ence of pressure would be to the whole voltage as the
resistance between such points is to the resistance of
the whole circuit. Thus, if two points of the conductor
were taken, one would be found to have a higher electric
pressure than the other, and it would be to this differ-
ence of pressure that a current would be forced to
198 flow. If a circuit fed by a 200-volt generator were
broken, and an arc were drawn at the break, one
terminal would, perhaps, show 100 volts and the other
90; and current in this small part of the circuit
would flow, not under 200, but 10 volts pressure, and
the heating effect would be represented by the
product of the ten volts (not 200) multiplied by the
amount of current passing. The voltage or pressure
multiplied by the amperes of current flowing expresses
the heat developed in watts, of which there are about
199 746 to each horse-power. Thus, if the contacts of a
switch carrying ten amperes were separated until one
point showed a pressure twenty volts greater than the
other, the heat developed between contacts would
equal 200 watts, or more than one-fourth of a horse-
power. There are many familiar examples showing the
great volume of heat that may be developed in the act
of rupturing circuits carrying large currents: As
is well known, one carbon point in an ordinary arc
lamp is about fifty volts above the other, while the
200 flow of current is usually ten amperes, thus showing a
development of heat in the arc represented by fully
two-thirds of a horse-power.
Every electric charge has a striking potential
or a tendency to burst forth from its receptacle ;
but the striking capacity of currents carried by
lighting switches is too slight to require attention;
and, in comparison with the necessity for a quick
break, the quick closing of a circuit is relatively
unimportant (Stockbridge, 86, 87 Qs., Rec., p. 105).
Defendant's model-makers, in producing the Rogers
51
and Bradley exhibit models, evidently thought that a 201
snap-action, to quickly close a circuit, was as important
as a quick movement at disruption (Stockbridge, 87
Q., Rec., p. 105); and, absurd as it may seem, defend-
ants made these models with projecting teeth of in-
sulating material set into metallic bases. By this
construction, as the contact spring is moved it must
snap from a tooth against conducting material; but
the metal contacts can only be broken by the slow
movement of the operator's hand (Stockbridge, 83-85
Qs., Rec., p. 105; Vansize, 5 Q., Rec., pp. 137-38; 202
Laass, 32-40 x-Qs., Rec., pp. 193, 194). Of course,
this was a gross perversion of the Rogers and Bradley
patents; for in these patents the Rogers teeth are
clearly of metal, while Bradley's Patent shows no
projections whatever (Laass, 32-40 x-Qs., Rec., pp.
193, 194).
The danger from burning, the destruction of switches
from such cause and the remedy applied by Perkins,
are clearly explained in the following part of Stock-
bridge's answer to question 4 (fols. 90-92, Rec., p. 23): 203
"The chief danger to which an electric switch
"or circuit controller is exposed in being oper-
"ated properly is that arising from the pro-
"duction of an electric spark or arc when the con-
❝tact pieces are separated. Such a spark or arc
produces a burning effect, which is the more
"serious the longer the time is during which the
rupture of the circuit takes place. In general
"it may be said that the burning caused by the 204
"spark or arc produces a disintegration, oxidation
66
66
66
or charring of the contact surfaces, and in this
"way brings it about that the surfaces are too
"much roughened to admit of intimate contact, or
"else that non-conducting or resisting elements
"are introduced which lessen the carrying capacity
"of the switch. Inasmuch, therefore, as the dele-
terious effects of the spark or arc are increased
by the prolongation of the time of rupture, that
"is to say, are increased by a slow separation
66
66
52
205
206
207
208
"of the contact surfaces, it has been found neces-
66
sary to resort to a more rapid movement than
"that of the hand alone for effecting the desired
"separation."
In folios 120-122 (Rec., pp. 30, 31) he has referred
to the subject by comparing the are drawn at switch
contacts with the flame produced between the carbons
of an arc lamp:
66
66
Continuing my answer to question 4, it has
"occurred to me that the necessity for the use of
a source of power other than the hand for oper-
"ating the electric switch can be readily explained
"by comparing the action of such a switch with
"that of an electric are lamp. When an arc lamp
"first begins to operate, the carbons are in con-
" tact, but are immediately separated from each
other, the separation resulting in the formation
"of an arc. It is the function of an arc lamp to
"utilize the are thus formed for light-giving pur-
66
poses. It is true, however, that under the in-
"fluence of the intense heat of the arc the posi-
"tive carbon is disintegrated and wastes away
rapidly.
66
"A similar arc is formed every time the points
"of a switch are separated, the intensity of the
"are depending upon the strength of the electric
"current. But in any case, if the arc is main-
66
66
tained, or if the points are separated slowly,
"there is liable to be a disintegration, oxidation,
wasting or charring, which has a bad effect upon
"the switch. The arc lamp can afford the waste;
"the switch is ruined by it. This danger is over-
"come by both Perkins and the manufacturers of
Complainant's Exhibit Defendant's Switch No. 1
by the use of substantially the same means.”
66
66
The phenomena of drawing an electric arc explains
the necessity for a quick separation of contacts. As
the points draw apart, electrical resistance is interposed
53
and heat is developed in proportion to the resistance 209
of the path across the break, thus rendering the sur-
rounding air, with the stream of particles which are
disintegrated and carried from one contact to the other
by the current, a fairly good conductor. But the length
of an arc cannot exceed a space which is determined
by the electro-motive force of the source and the
amount of current flowing in the circuit. Obviously, a
good switch must have a range of snap movement
exceeding this distance (Stockbridge, 105 Q., Rec., pp.
116, 117; Vansize, 30 Q., Rec., p. 154).
Stockbridge says (105 Q., Rec., pp. 116, 117) that:
210
"The moment a sufficient separation takes place
"to pass the limit of the arc, the switch has done
"its work of breaking the ci cuit; in other words,
"the work for which it was constructed. It is,
"therefore, apparant that every switch should
"have a snap action capable of carrying the mov-
"ing terminal far enough to break the arc. If the
"contacts were separated only half far enough the 211
snap-action would not serve to disrupt the spark
or prevent burning, as the arc would then con-
tinue."
66
66
Laass agrees that the snap-action of the contact
should exceed the length to which the current to be
broken can draw an arc, and that if there were
a less
snap-action the switch would fail of its purpose (Laass,
95-99 Qs., Rec., pp. 202, 203).
In answer to question 4, complainant's witness Ham- 212
mer says of "Complainant's Exhibit Defendant's Switch
No. 1," which has been put in evidence to prove in-
fringement, that it is a 10 ampere switch, and carries a
current which is sufficient to maintain large arc lights.
If, now, the contacts of such a switch in the ordinary
lighting system were slowly opened an eighth of an inch,
the electric flame would remain unbroken, and heat
represented by perhaps one-fourth or one-half a horse-
power would be developed. Clearly, this switch, which is
54
213 within the dimensions of a tea-cup, would soon be fused;
but, by resorting to snap-action at each break of the cur-
rent, either no arc at all is drawn, or the duration of
the flame is so short that the operation might be re-
peated a dozen times a minute without injury to the
apparatus.
It is important as a matter of evidence that telegraph
currents are so light that they have no appreciable
power to burn. The heat of an are being proportional
to the square of the current, the heat developed by the one
214 ampere used for an incandescent electric lamp would
be 10,000 times that developed in an arc of the same re-
sistance by a telegraph current, if it were only the 100th
part of an ampere. This fact leads to the conclusion that
Gilliland, Rogers, Bradley and others, who employed
the lightest of all telegraph currents, did not intend
to apply the Perkins invention to their telgraphs
where they needed no such device, particularly if its
adoption must mutilate signals and destroy the system
(ante, pp. 28-31). Doubtless this consideration had
215 its weight with Laass when he reached the conclusion
that, on the one hand, Gilliland had no spark and did
. not need the Perkins switch, while, on the other, to
save his telegraph, he needed not to have it.
Many questions were asked complainant's witnesses
on cross-examination respecting currents and pressures
on telegraph lines, apparently with a view of showing
that, because large voltages have sometimes been used,
serious burning effects must have been encountered.
It is true that quite high voltages or electro-motive
216 forces are used in some systems of telegraphy, and
particularly on long lines, but as the currents are
small the effect of burning is insignificant (Vansize, 78,
79 Re-d. Qs., Rec., p. 170).
If, in a supposable case, a telegraph current of one-
hundredth of an ampere were flowing, and contacts
were separated until one were ten volts above the other
in pressure, the heat developed, as we have seen from
other examples, would be practically nothing. But in
telegraphs, like the Gilliland, Rogers, Bradley, Guest
and others there are no high voltages employed (Stock-
55
bridge, 146, 147 Re-d. Qs., Rec., p. 132; Vansize, 78, 217
79 Re-d. Qs., Rec., p. 170). Mr. Vansize has had large
experience with such telegraphs and he says that there
were never more than from ten to sixteen volts used on
any such circuit. Clearly, this testimony disposes of
questions of high potentials and the possibility of any
degree of burning in telegraphs, particularly of the
class from which defendant has selected its defenses.
But if burning effects were present in telegraphs, other
means than a snapping detent to overcome them would
have to be employed.
A Summary of the Principal Defenses to
Perkins' First Claim.
218
The Perkins invention relates to a slow-moving hand
switch which is as likely to be turned in one direction
as the other; moreover, the claim specifies a switch of
the ratchet class, which is so constructed that the de-
tent or pawl shall make a scraping, self-cleaning con-
tact as it bears upon the metallic teeth-an essential 219
feature of the claim (Stockbridge, Q. 4, fol. 103, and 148
Re-d. Q., Rec., p. 133; Vansize, 12 Q., Rec., p. 147, aud
59, 60 x-Qs., Rec., p. 164).
It is not represented that self-cleaning contacts were
new with Perkins, or that he was the first either to
rotate metallic teeth under a contact point or to rotate
a metal strip in contact with stationary teeth. Self-
cleaning contacts were old in the Sawyer patent, in
which the spark was avoided by the use of resistance
coils, and also in circuit wheels; but Perkins was the 220
first to adapt a snap action to circuit wheels, or to
rotating switches. Such wheels are of great simplic-
ity, and it was Perkins' object to make a switch by
adding to such wheels the feature of snap action,
and to do so without materially adding to the cost of
the simple wheel.
Perkins so constructed the apparatus that contacts
were never broken by the slow movement of the
operator's hand (Laass, 107 x-Q., Rec., p. 205).
By avoiding complicated apparatus, Perkins did his
56
221 work so well that Laass professes to be unable to under-
stand what was accomplished by him over what had
already been done by Gilliland, Rogers and Bradley.
Nevertheless, Laass says that he knew of no electric-
light switch, before Perkins', having the snap action;
but he artfully couples this admission with a statement
that the wheels of Gilliland, Rogers and Bradley did
have springs" capable of producing this effect." This
contention is the entire groundwork of the defense, for
he says that these patents are the most important of all
222 the defenses (Laass, 68 x-Q., Rec., p. 199). Laass says
in answer to 108 x-Q. (Rec., p. 205):
223
"I know of no switch for electric lighting prior
"to the Perkins patent that had the snap action
"referred to in the question, but there are prior
"switches which are capable of producing the
"same effect.
"x-Q. 109. You mean such switches as the
"Gilliland, Rogers, Bradley, etc.?
"A. Yes, sir."
The testimony shows, however, that these patentees
were not dealing with currents that were strong enough
to burn (Laass, x-Qs. 61-64, Rec., p. 198), and that
they did not even contemplate the necessity for a
switch to avoid burning (Laass, x-Q. 121, Rec., p. 207).
Mr. Laass' idea that the Gilliland, Rogers and Brad-
ley circuit wheels were capable of producing this effect
is clearly unfounded. Our review of these patents
224 shows that there was no snap action whatever (ante, pp.
28-32), and, further, that, even if they had described an
elastic spring, they would not then have had a
snap action, for, as the drawings of the patents
show, the point of a spring would only scrape down
the radial face of a tooth (Fig. 6, ante, p. 32); or, with
the greatest allowance, in case of the teeth shown by
Gilliland and Rogers, the point of the spring in its
descent, would remain. at the end of the snap move-
ment, almost as close to the tooth as before; and what-
ever snap movement there might be, would not result
57
-
in a materially quickened separation. Contacts then, 225
as before, would only be broken by the slow movement
of the operator's hand (Stockbridge, Q. 73, fols. 397-
400; Vansize, Q. 5, fol. 561). To quicken separation
the point of the spring should snap directly away from
the tooth (Fig. 7, ante, p. 32) and as far therefrom as
possible.
Not only does the Gilliland patent show that the
spring point would scrape the radial faces of the teeth,
if it were to snap, but so does "Defendant's Exhibit
Gilliland Model," which was presented by defendant. 226
This difficulty with the No. 1 Gilliland model, however,
was afterwards corrected by the production of a No. 2
Gilliland model, in which the point of the spring must
fly away from a tooth on descending into an open notch
(ante, p. 35). The fact that no snap action at the
point of the spring was contemplated or wanted is
conclusively shown by the necessities of a telegraph
transmitter: If the spring could vibrate upon the crown
of a tooth or snap to the bottom of a notch it would
send a false signal every time it so touched or 227
separated from the metallic surface of the wheel.
To avoid this difficulty most makers filled the notches
with insulation to make a smooth periphery or
a smooth disk, for then the spring could not possibly
vibrate (ante, pp. 41, 42). The Bradley patent (Rec.,
p. 299) is a conspicuous case in point, and the Boyle
(Rec., p. 278) as well.
It is said by Lass that Gilliland, Rogers and Brad-
ley had a snap action, though in a much smaller de-
gree than Perkins. But these patentees had no snap 228
action at all. If they had any, it was precisely
what they did not want, for every oscillation of the con-
tact spring meant the transmission of two false signals;
and, in place of sending two pulses by Gilliland's wheel
to indicate B, there might be thirty or fifty currents
transmitted if the spring could bound or vibrate enough
to break an electric-light arc.
To prevent burning in electric light switches
break must be
snap
be made wide in propor-
tion to the current used (Laass, 90-99 x-Qs.,
the
Rec., p. 202); that is to say, there must be a
58
229 substantial snap break. It is seen that in "Complain-
ant's Exhibit Defendant's Switch No. 1" the snap break
is about an eighth of an inch, and that if the switch
were required to carry more current the break should
be increased (Laass, 111-116 x-Qs., Rec., p. 206).
Perkins' invention does not stop with ratchet teeth,
and a snap detent to make quick breaks as the detent
and metallic teeth are separated. If he had used ordi-
nary ratchet teeth, a back turn of the ratchet, after the ex-
tinguishment of a lamp, would have brought the detent
230 in contact with a metallic tooth. This, of itself, would do
little harm, but the points could then only be separated
by hand motion, and, in consequence of so slow an
operation, a spark of long duration would be drawn.
The switch was liable to be turned back half the time
by unskilled users, and, as a result, there would, with
the ordinary ratchet, be snap separation only half the
time in its daily use. Some means to avoid this difficulty
was obviously important; and it was supplied by Perkius'
insulating tooth for engaging the detent against such a
231 back movement. But, more important than all, Perkins,
by employing a suap detent, overhanging metallic teeth
and notches with radial walls of insulating material, was
able to bring about more or less snap movement as the
case required. In other words, his detent, in falling
from a metallic tooth, could not fail to effect the
required snap separation.
Gilliland shows a locking device to prevent back
movement; but his apparatus is a telegraph, and his
long rotating arm which is carried over a scale of letters
232 and figures can hardly be rated as a button switch in
which there is no guide to show the right direction of
rotation. Gilliland's locking device, however, shows no
means for forcing a substantial snap separation. His lock
only holds the circuit wheel where it is first stopped;
and thus if the switch were stopped with a tooth near
the point of spring T, an are would burn until the wheel
were again turned by the operator's hand.
But Gilliland's lock was never intended to avoid the.
burning of contacts. Laass (54-58 x-Qs., Rec., p. 196)
says the lock was adapted only to prevent a mutilation of
59
telegraph messages. This he says, and further that 233
the device could not have been contemplated as a means
to prevent the difficulty of burning (Laass, 121 x-Q.,
Rec., p. 207).
But in no view could the Gilliland lock be regarded
as the equivalent of Perkins' insulating notch. Perkins
uses the point of his detent, pawl or spring as a part of
the device both to insure sufficient suap separation
and to prevent back rotation; that is to say, the point
of the detent forces its way down the radial face of an
insulating notch and then prevents back rotation of the 234
ratchet. But Gilliland's spring is entirely independent
of the lock.
If Gilliland had a snap-movement at the end of his
spring, or if this snap-movement could act to insure
a sufficient suap-separation before the wheel were
locked, his device might have a bearing upon Perkins.
But Gilliland had no snap-separation, either by acci-
dent or design. Nor was a widened separation insured
by his contact finger and lock. To approach Perkins'
invention, the spring and lock of Gilliland should at 235
least so co-operate that the lock would only arrest
the wheel after a sufficient suap-separation had
been effected.
It is unimportant whether the claim be strictly lim-
ited to a ratchet having notches with insulating walls,
yet, if its validity were in peril from Gilliland
or Rogers, it might be so narrowed, for the insulat-
ing notch, as described by Perkins, is of itself new,
and, if necessary, the novelty of the claim might rest
wholly upon the newness of this element. It is not 236
pretended by defendant, so far as this record shows,
that an insulating notch to prevent a back metallic con-
tact is old.
Under the broadest interpretation, Perkins' claim
might include the Gilliland lock as an equivalent of the
insulating notch if other necessary devices could be
added so as to make the lock arrest the wheel only
after a sufficient snap separation to break the arc
had occurred; and it is believed that the claim is enti-
tled to such a construction. So construed, it certainly
60
237 would be valid, for all of Gilliland, as he neither had
nor wanted a snap action (Stockbridge, Q. 73, fol. 399
Vansize, Q. 5, fol. 562). Nor did he contemplate any
of the many other features of a switch which are in-
dispensable for the control of heavy currents. But
whether construed broadly enough to cover the Gilli-
land lock, or so narrowly as to be limited to an insulat-
ing notch, it would equally include, as infringements,
defendant's two forms of switches, for the infringing
switches contain the insulating notch under the
238 narrowest interpretation of the Perkins claim. When
a snap switch with the Gilliland lock is made
by defendant, it may then be determined whether
it is within the Perkins claim, but this ques-
tion is not likely to arise. The defendant does
not want to make the lock, for an inspection of the
Gilliland model and patent will show that the lock
alone would cost more than a dozen Perkins switches,
and that the lock, to be operative at all, must be made
with the skill and care that are necessary to bore gun
239 barrels and make instruments of precision.
The general purposes of a machine usually carry many
peculiarities that preclude its use in a widely different
art. The present instance is a good example of the kind,
for, while there is a superficial resemblance in parts, it
is at once seen that the snap action that was indispens-
able to Perkins would spoil a telegraph, and it is further
seen that the devices are so different that no Perkins
switch could be worked over into a Gilliland telegraph,
nor could a Gilliland telegraph be worked into a Perkins
240 button switch. Certainly it would be difficult to sup-
ply a device in the Gilliland arrangement that would
automatically insure a sufficient snap break before
locking the wheel. Gilliland, instead of having
two metallic teeth, has fourteen, and fourteen
notches, there being either notch or
a
a tooth
for each letter of the alphabet. It is necessary
to avoid back movements in both devices, but
in one the precaution is to avoid false telegraph
signals, while in the other it is to avoid burning up the
apparatus. In Perkins there must be open insulating
61
notches, but in Gilliland it would be better to fill the 241
notches so as to make a smooth periphery.
Guest's patent shows nothing one way or the other
except to make clear the fact that, in operating tele-
graph signal wheels, there must be no snap action as
the contact spring passes from a metallic to an insulat-
ing tooth. Bradley and Boyle are not defenses :
they even make for complainant, and show that the
patentees considered it necessary to have a smooth sur-
face so that the contact spring might pass from a me-
tallic to an insulating section without vibration. These 242
patents also furnish evidence that even Gilliland and
Rogers would have preferred smooth peripheries, ex-
cept for the expense and complication involved in such
a construction. The telephone patents of Jeffries and
Gilliland have nothing to do with the subject, but they
are, perhaps, as pertinent as the others.
In these sys-
tems, as Laass says, it is designed to carry only
shadows of currents (Laass, Qs. 79-83, p. 200).
Perkins' First Claim should not be
Limited to Details.
243
Laass, in his fourth answer (Rec.,, p. 18), says he
thinks Perkins' first claim should be limited to a mass
of immaterial parts which had been described to show
a form of apparatus involving his invention. But Per-
kins nowhere said that his invention was no broader
than these specific details; and he, like other inventors,
having fairly described his best form of the invention, 244
is entitled to formulate a broad claim, without limiting
himself to those insignificant parts to which Laass refers.
In his attempt to impose such restrictions upon the
claim, Laass, in words of his own, and contractions to
suit the case, has enumerated these details as follows
(Answer to Q. 4, fol. 22, Rec., p. 181). He says:
"In view of this patent it is obvious that the
"Perkins patent cannot be construed to include
"the combination of a stationary break wheel
62
245
246
247
248
"with a switch arm pivoted thereto and traversing
"the alternate making and breaking points of the
"wheel. In fact in my opinion the Perkins
66
66
66
66
patent must be limited strictly to the construc-
"tion described in the specification, that is to
say, in order to comply with the terms of the
patent, the metal shaft E must be journaled
"in opposite sides of the insulating base B, and
carry an S-shaped metal piece B, on each side of
"which insulating ratchet disks D1 of a diameter
"less than the length of D are fixed. The teeth of
"the disks D¹ must project beyond the narrow
portion of the piece D. Below the ratchet D¹ in
"the chambered base the V-shaped coil F is to
"be pivoted and have one of its arms widened.
"A spring S is to actuate the said pawl and keep
"it in engagement with the ratchet. The lever or
"pawl F must be connected with one of the line
"wires through the spring S, and when it is de-
66
pressed by the contact of one of the projections
"D the circuit is completed to the shaft E and
"from thence to one of the terminals of the lamp.
"The only deviation from the aforesaid con-
"structions is suggested in the specification as
"follows:
666
"Instead of a swinging pawl, I sometimes em-
ploy a spring-seated contact stop with a broad-
"ened end, as shown at Fig. 4, which acts as a
"detent with the ratchet D1 when not depressed
66 6
by projections D, and thus prevents the shaft
"from being turned in both directions.'
"This is the extent of the entire description of
"the Perkins invention, and with this construction
"the Perkins patent must, in my opinion, be
"limited in view of the state of the art prior to
"said patent."
If this were the correct test of novelty, is there a
patent in existence that would not be defeated? It
would not leave to the patentee the ashes of his inven-
tion.
63
Laass' interpretation is based upon (1) the prior art 249
as shown by the eight patents reviewed in his answer
to question 4; and (2) Perkins' statement in his patent
(lines 13-23) that his invention
66
"consists in mechanical details for effecting this,
"the principal features of which are a ratchet
"wheel having both conducting and insulating
"teeth combined in operative relation with a spring
pawl or detent, which acts as a contact maker
"with the conducting portions of the ratchet, and 250
"by engagement with the insulating teeth prevents
"the ratchet from being turned backward when
"the pawl has been released from contact with the
said metallic portions.'
The preceding part of the specification shows that
this organization had for its one purpose a snap-break
at the separation of contacts, and it discloses a plan by
which this object in a ratchet switch may be accom-
plished.
This description, of itself, is sufficient to sustain all
that complainant has claimed; but if there were a
doubt as to the breadth of invention which Perkins
intended to claim, it is set at rest by the statement
preceding the claims, to wit:
"The principal advantages secured by the con-
"struction above described are, first, that the cir-
"cuit cannot be completed by turning the key
66
66
backward, so that when the circuit is broken it
"must be accomplished by an instantaneous snap
"or reaction of the spring pawl as it leaves the
conducting portion of the ratchet; secondly, that
"the contact spring cannot be injured by the at-
'tempts of incautious persons to turn the key
"backward, as might be the case with the lamps.
66 now in use."
66
and by the claim which is:
"1. The combination, in an electric-light switch,
"of a ratchet having metallic projections, and in-
251
252
64
253
66
"sulating teeth in the intervals between the same,
"and a pawl or detent for engaging with the in-
sulating teeth when released from contact with
"the metallic projections, as and for the purpose
specified."
(6
If the eight prior patents to which Laass has re-
ferred disclosed a ratchet switch provided with means
for effecting a snap-action to invariably break the elec-
tric flame at separation, they would be in point; and it
254 might then be a question whether Perkins' first claim
could be sustained as covering even the worthless
organization specified by Mr. Laass. The only fair
question for consideration, therefore, is whether de-
fendant has produced in evidence such a ratchet circuit-
breaker as is liable to be turned backwards as well as
forwards by the user, and in which contacts are always
broken by a snap-action to prevent burning; and one
in which a metallic contact cannot be formed by a back
movement.
255
Unquestionably, in only one of the eight patents
cited is there a device described which would ever
be subject to the danger of burning; and that is the
patent of Sawyer, No. 237,609, for an electric-light
switch. Sawyer, however, has no snap-action whatever
(Laass, 117, 118 x-Qs., Rec., p. 207; Stockbridge, 88,
89 x-Qs., Rec., p. 106; Vansize, 16, 17 x-Qs., Rec., p.
148); he has a means to prevent burning, but it is a
cumbersome and expensive arrangement of resistance
coils for short-circuiting lamps, which, if employed
256 wherever a Perkins switch is needed, would, to this
day, render incandescent lighting impracticable (Stock-
bridge, 88 Q.; Vansize, 16-18 x-Qs.).
This patent is certainly useful to show what Sawyer
had not accomplished, and what remained for others
to do.
Of the remaining seven patents, that of Gilliland,
241,963, and of Jeffries, 251,234, are for telephone
switches. The currents to be controlled are not cur-
rents in a substantial sense. As Mr. Laass admits (79-83
x-Qs., Rec., p. 200), they are only shadows of currents;
65
nor would the apparatus shown, under any circum- 257
stances, be capable of effecting metallic separation by
a snap action (Stockbridge, 101, 102 Qs., Rec., p. 113;
Vansize, 23, 24 Qs., Rec., p. 151). Guest's patent, 193,650,
is not more in point, for it shows no means by which a
snap separation of metallic contacts would be possible.
Figs. 1 and 2 of Bradley's patent, 204,708, are im-
portant to show that snap separation was never con-
templated in telegraph systems: He filled the notches
of circuit wheels with insulating material to make a
perfectly smooth surface, and in so doing virtually 258
said that contact springs should glide over the metallic
teeth of a circuit wheel, and that vibration and snap-
action were not wanted.
The main reliance of defendant is Gilliland's patent
116,429, the transmitter of which, as Rogers says in
the specification, has been copied in his patent 139,690.
Gilliland shows a circuit wheel with open notches, and
vaguely describes a lock to prevent a long actuating
arm from being turned backward. But, obviously,
Gilliland's actuating arm, the movement of which 259
is guided by a dial or lettered chart, is not the
thumb button of the Perkins switch with no guide.
to indicate the right or the wrong direction of
rotation; nor is his open-notched wheel with a
gliding spring the equivalent of Perkins' ratchet
wheel and snap detent. It has already been shown
(ante, pp. 26-28) that Gilliland did not contemplate
burning currents because he had no currents that could.
burn (Laass, 121 x-Q.), and that for this plain reason
he wanted no snap movement. It has also been shown 260
that if a suap contact were used, Gilliland's telegraph
would fail because of the false signals that would be
produced to mutilate his messages (ante, pp. 28-32).
In other words, Gilliland did not want a snap move-
ment, because it was not needed; and more particularly
was it not wanted because it would have destroyed the
operativeness of his telegraph. These, certainly, are
good reasons why Gilliland did not and should not
have a snap-action circuit breaker; but, if other reasons
were necessary, they are to be found in the drawings of
66
261 his patent. If his contact spring T had a snap action,
the point would reach the bottoms of the shallow
notches, or in leaving one tooth its point would strike
another, and thus make false contacts when the cir-
cuit should be left open (Vansize, 5 Q.). But, aside
from the patent drawings, the Gilliland Model No. 1
shows that, if the spring T were strongly resilient, the
point would only scrape down the radial face of a
tooth at separation; and that for this reason the spring
action, however pronounced, would not result in a
262 widened separation of contacts, for, after the descent
of the spring, its point would still be close to or in
contact with the tooth.
All of the eight patents reviewed by Laass only
show the novelty of Perkins' work and that he was
broadly the first to apply snap action in ratchet
switches. Perkins has added details of improvement
to a circuit wheel for opening and closing an electric
current; and in so doing he has applied a snap action
to such a wheel not only to invariably quicken the
263 separation of ratchet contacts, but to definitely effect a
sufficiently wide separation. It matters little whether
the invention be referred to as details or not, for the
commercial importance of what he accomplished cannot
be doubted. He certainly hit upon the one plan that is
likely to survive all others. It is true that in his speci-
fication he referred to details, but he is to be given the
full benefit of those details. It is immaterial whether
he called them details or methods. It is the thing and
not the name that is to control. In this case the details,
264 as they are called, are indispensable features in an elec-
tric light switch, and as such are as important as though
the invention had been patented as an art, method or
process.
His claim is broad, and, in the absence of limiting
statements, it cannot be restricted to cover less than
the real invention. There are no such limitations in
the claim.
The contention that Perkins must be limited to a
rotating circuit wheel is without merit. We have
shown that ratchet wheels were sometimes station-
67
ary and sometimes movable, and that the term 265
ratchet in Perkins' claim was at the date of his patent
as applicable to one form as to the other. The idea in-
volved in the patent had nothing to do with such
a distinction, and that he wished to avoid such a limi-
tation is obvious from the fact that he wholly omitted
the term wheel in his claim when speaking of the
ratchet. But even if he had employed the word wheel
in the claim he should not be limited to the rotating
type, for one form is obviously the equivalent of
the other. In fact, not a single substantial difference 266
between the two can be pointed out. Of the many
telegraph patents which have been put in evidence half
show rotating and half stationary wheels, and the same
is equally true in the art of electric switches. Whether
stationary or rotating, all are circuit wheels, and an im-
provement like that of Perkins, is obviously as appli-
cable to one form as to the other.
The contention that Perkins' first claim must be
limited to the details suggested by Laass, or that it can
cover only a rotating ratchet, means that it must be 267
wholly defeated; for the limitation suggested would
narrow it to the scope of the second. Of the two claims,
one is generic and the other specific; but, as the art
shows, one was as properly allowed as the other.
But, if rotating and stationary wheels were not equiva-.
alents, Perkins' claim should still not be limited to the
one form. A patentee may claim an entire organiza-
tion of mechanism, or he may claim sub combinations,
or, if new, he may claim the elements singly. Perkins'
arrangement of ratchet teeth, insulating notches and a 268
detent were new, and he very properly claimed his
combination as such.
If patentees may ever claim a single element of an
organization, it was Perkins' privilege to claim his
ratchet teeth and insulating notches without bringing
either a stationary or a rotating wheel into the combi-
nation.
Defendant's counsel would have it believed that
Perkins must enjoy the benefits of only the one-tenth
part of his invention, whereas if he were a pioneer he
68
269 might have everything in a broader field. But the
humbler principles of reason are as applicable to the
interpretation of patents as they are to other questions.
Of course, it is a just rule that precludes the inventor
of details or a small invention from claiming more than
he has given to the art. But the small inventor, no
less than the pioneer, is entitled to protection for all
that he has done.
270
Accidental
Similarities,
Misconceptions
and Imperfect Disclosures will Never
Defeat the Patent of a Subsequent In-
ventor.
A similarity of apparatus or method will not consti-
tute a defense, if the prior use was accidental and of a
character to exclude the design of a subsequent in-
ventor; and still less will a mere appearance of simi-
larity ever constitute a defense if the patent has some
271 broad purpose which is wholly absent in the alleged an-
ticipation. These, as the cases say, are of no avail as
defenses, and are but accidental similarities. Green's
patent for a driven well sets forth the plan of driving
an air-tight tube, perforated at its lower end, into the
earth to a water-bearing strata, and of pumping the air
from the tube. By removing the pressure of the at-
mosphere by a pump from the interior of the tube, the
action of the air upon water in the surrounding earth
forces it towards the partial vacuum of the tube, thus
272 accelerating the supply; whereas, in a bored well such
action would be impossible. At least, the making of a
vacuum in the well to enable the atmospheric press-
ure from without to force a water supply into the tube
had never been contemplated (Eames vs. Andrews, 122
U. S., 49, 50). In this litigation many publications
were offered as defenses, showing "bored" wells which,
in fact, were not bored at all, but were driven (Eames
vs. Andrews, 122 U. S., 67, 69). One reference from
the "Mechanics' Magazine" (Vol. 2, p. 16) cited by
Justice MATTHEWS (pp. 68-69) is:
69
66
Boring wells.
273
66
65
"Answer to question.
'LEEDS, March 15, 1824.
"Drive a cast-iron pipe through the gravel, i. e.,
by means of a weight hung at the end of a spring
pole, used in boring; and should the pipe meet
"with any loose stone to obstruct its passage, put
"the boring rods into the pipe and bore until the
"stone is broken to pieces or driven sideways, then
"drive the pipe as before. I have had the man- 274
"agement of a great many bore holes for water
"in this neighborhood, some above 100 yards deep,
and many contrivances I have used on account
"of difficulties met with in different strata. I
"shall be happy to give your correspondent every
"information in my power on the subject, and, if
"agreeable to you, will send a list of a few holes,
66
66
stating the different strata gone through and the
"several springs of water met with.
"Yours, &c.,
T. T. 275
"N. B.--The shell-borer must be used at times
"to bring out the gravel that gets into the pipe,
<<
and the pipe must have spigot and faucet joints,"
But if the law were such that these bored wells
might have defeated Green's driven-well patent, even
then Gilliland's patent could not be held to have any
standing as a defense against Perkins; in other
words, the bored-well here cited was a stronger defense
than Gilliland can possibly be. Other cases more 276
nearly resembling the one at bar will be found, but
there is none that better shows the irrelevancy of the
Gilliland patent as a defense in this suit. The descrip-
tion in the "Mechanics' Magazine " described a driven-
well, but it did not contemplate a driven-well as dis-
tinguished from a bored-well; and, for this reason, it
was held to be no more an anticipation of the Green
Patent than if boring rather than driving had been de-
scribed. In dealing with this and other similar de-
ferses, Judge MATTHEWS said (p. 69):
70
277
278
279
"There is nothing in these extracts to suggest
"the peculiarities which distinguish the driven-
"well as described in the reissue patent, and it
"may be said, in general, of all the extracts con-
"tained in the record, including these, that so far
as they undertake to describe anything in actual
66
66
' and practical use, they point merely to the ordi-
"nary bored artesian well, or the instruments and
implements to be used in its construction."
66
In the American Bell Tel. Co. vs. Wallace Electric
Tel. Co., 37 F. R., 672, the House telegraph patent was,
for the first time, presented as a defense to Bell. Judge
WALLACE said :
"The House patent *** may be disposed
"of by quoting a single remark in the opinion of
"the Supreme Court in regard to the Reis ap-
paratus. His [Bell's patent would be quite as
good if he had used that apparatus in develop
ing the process for which it was granted.'”
66
66 6
66 6
Reis had an apparatus which more closely re-
sembles a Bell telephone than Gilliland's circuit
wheel resembles a switch to break heavy currents;
yet with undoubted reason Chief-Justice WAITE
said that Bell might have used Reis' apparatus
without endangering the validity of his patent. House's
telegraph instrument was also more like a telephone
than Gilliland's circuit wheel is like Perkins' switch,
but Judge WALLACE held that such resemblances did
280
not amount to defenses.
The following are a few of the many authorities
showing how little importance the Courts attach to ap-
pearances of similarity, accidental similarities, miscon-
ceptions and imperfect disclosures as defenses :
66
Re Fultz, 1 MacArthur, Patent Cases, 192:
"Chief-Justice MARSHALL, in the case of Davis. vs.
Palmer, 2 Brock., 310, says: It is not every
change of form or proportion which is declared
"to be no discovery, but that which is simply a
66 6
71
66 6
change of form and proportion, and nothing 281
66 6 more. If by changing the form and proportion
"a new effect is produced, there is not simply a
change of form and proportion but a change of
"principal also."
66 C
66
799
Tilghman vs. Proctor, 102 U. S., 711: "We do
"not regard the accidental formation of fat acid in
Perkins' steam cylinder from the tallow intro-
"duced to lubricate the piston (if the scum which
rose on the water issuing from the ejection pipe.
"was fat acid) as of any consequence to this inquiry. 282
"What the process was by which it was generated
66
66
or formed was never fully understood. Those
"engaged in the art of making candles, or in any
"other art in which fat acids are desirable, cer-
66
tainly never derived the least hint from this
"accidental phenomenon in regard to any practic-
"able process for manufacturing such acids."
Atlantic Giant Powder Co. vs. Rand, 16 Blatch.,
295: “The prior description, to invalidate the
patent, must be such as to show that the article 283
"described in the patent can be certainly arrived
"at by following the prior description; and it is
"not enough to show that, by the lucky accident
"of taking gunpowder of the proper quality, a
compound may be obtained which is unlike that
"indicated by such description."
66
Andrews vs. Carman, 13 Blach., 323: " It is, of
"course, true, that prior to Green's invention, water
"had been pumped from a hole in the ground,
"and from a small hole. Doubtless it is also true, 284
66
that, in some such case, where a pump had been
"inserted in a small hole, for the purpose of rais-
ing therefrom the water found therein, the prin-
66
66
ciple of Green's invention may at times have
"been called into operation. No such case is
"here proved; but, if such fact were proved,
"Green's right to a patent would not thereby be
"defeated. A chance operation of a principle,
66
unrecognized by any one at the time, and from
"which no information of its existence, and no
72
285
286
287
288
66
knowledge of the method of its employment, is
"derived by any one, if proved to have occurred,
"will not be sufficient to defeat the claim of him
"who first discovers the principle, and by putting
"it to a practical and intelligent use, first makes
"it available to man."
Maxheimer vs. Meyer et al., 9 F. R., 461: "The
" evidence tends to show that in shaping some of
"these cages the cross-bands out of which the key
"had been left were flattened, and a firm connec-
"tion thereby made between them and the upright
"wires. That, if done, would show the construc-
"tion of the plaintiff's second patent. But it is
doubtful whether that was done. If done, it
was not for the purpose of making a better con-
"nection between the bands and wires, nor known
"then to have that effect, but was accidental and
"incidental to the process of shaping the cages.
"Neither does this effect appear to have been
observed before the date of the plaintiff's inven-
tion, if it existed."
66
66
Clough vs. Barker, 106 U. S., 175, 176: "Any
"further raising of the tube was accidental, and
"not a part of the law of the structure. The ob-
"ject of raising and lowering the tube was, by
"less or greater pressure on the cone, to open or
"close the slit in the burner. The specification
"of Horace R. Baker, in his rejected application,
"shows that the only object of his burner was to
"control the flow of gas through the slit in the
"burner, instead of controlling the flow at the
"cock or further back. The spring of the two
parts of the burner was intended to carry them
66 away from each other and open the slit when
the pressure of the tube against the cone was
"relieved, while the increased pressure of the
"tube against the cone closed the slit. Any
raising of the tube unnecessarily high, so as to
"admit of a flow of gas through an orifice be-
"tween the tube and the cone to the flame, can-
"not be regarded as amounting to an invention of
66
66
73
66
"what Clough invented. The structure was not 289
designed for the same purpose as Clough's, no
"person looking at it or using it would under-
stand that it was to be used in the way Clough's
"is used, and it is not shown to have been really
"used and operated in that way."
Justice BLATCHFORD here said that if the invention,
which was set up as an anticipation, were used in a
way that it was never designed to be used, and as it
was shown never to have been used before Clough, it 290
might be made to furnish a supplementary supply of
gas. But it was not designed for that purpose, and no
person looking at it, or using it, would understand that
it was to be used in the way it had been used by
Clough. In this instance the identical device seems to
have been used before Clough's invention, but it was
held not to defeat Clough's patent.
66
66
66
Consolidated Valve Co. vs. Crosby Valve Co., 113
U. S., 171" Likeness in them, in physical struct- 291
ure, to the apparatus of Richardson, in impor-
"tant particulars, may be pointed out; but it is
only as the anatomy of a corpse resembles that
"of the living being. The prior structures never
"effected the kind of result attained by Richard-
"son's apparatus, because they lacked the thing
"which gave success. They did not have the re-
tarding stricture which gave the lifting opportu-
"nity to the huddled steam, combined with the
quick falling of the valve after relief had come.
Taught by Richardson, and by the use of his
apparatus, it is not difficult for skilled mechanics
"to take the prior structures and so arrange and
66 use them as to produce more or less of the
"beneficial results first made known by Richard-
"son."
66
66
66
Stewart es. Mahoney, 5 F. R., 304: "The ques-
"tion of novelty, including in that word the dis-
covery or invention which will be sufficient to
66
66
support a patent, is often a very difficult one to
292
74
293
294
295
296
66
decide.
Invention often involves a new result,
first thought of by the patentee; and in such
"cases the fact that the mechanical changes he has
"made are not difficult, is often unimportant."
Waterbury Brass Co. vs. Miller, 9 Blatch, 90:
"It was a pertinent and quite plausible suggestion
"of the counsel for the complainant, that the in-
"ventor of a machine should be presumed to know
"not merely its purpose, but its capacity; that
"when the product sought was in great demand,
"the art of spinning upon a lathe well known,
"the best mode of producing kettles and like
"articles the subject of attention and study, the
"C
66
66
objections to the process of stamping known and
"appreciated, the fact that an inventor of a ma-
chine, contrived expressly for the making of such
articles, should have made a machine, and had
no suspicion that it could raise the disk which
"he used to the required form by spinning, is no
'slight evidence that it had no such capacity; that
"the wisdom which comes to an alleged infringer
"after another inventor has perfected a similar
machine by which the operation can be usefully
"performed, is not to destroy the claim to an orig-
"inal invention; and that an alleged example of
66
(6
66
66
a machine claimed to produce an effect which the
"original never did produce, and which its inventor
never claimed for it, is to be looked upon with
some distrust of its actual likeness to such
original."
66
6:
66
Consolidated Bunging Apparatus Co. vs. Woerle,
29 F. R., 452: "None of the devices referred to as
anticipatory of this patent show this feature as a
"part of their construction. The old 'relief
"valve' with which water may have been used,
66
as I have before said, as an experiment after the
"complainant's device had become known, and
"the utility of water, or some liquid, to pre-
serve the fluidity of the hop tar had become
"known, was evidently not designed or intended.
"for the use of water. That to some extent it
75
6
approximates to the form of complainant's device 297
"is obvious, but it is equally obvious that, had
"the idea of using water in connection with the
"valve for the purpose designed by this patent
"been in the mind of the constructor of this old
"valve, the form and arrangement of some of its
'parts would have been materially changed. As
"constructed and used to regulate the pressure of
"steam or water in a boiler or tank, it did not
66
66
66
require a water chamber; and the suggestion
"that it becomes the complainant's device by fill- 298
ing the escape pipes with water is one that only
comes after the utility of the complainant's water
"chamber is shown by this patent."
66
(6
Eames vs. Cook, 2 Fish., 148: "If the mode of
operation be different, it is evident that the
"mechanism is different; or if the result be
66
different, then reasoning from effects to causes,
we may presume that some new instrumentality
"has been introduced."
66
66
(6
Roberts es. Dickey, 4 Fish., 543: "What was 299
attempted in the Boltze operation (viz., that of
What
"Mansfelt mine), was the destruction of the bore
by blowing out its side, thus rendering it in-
capable of gathering and retaining water.
"is sought and attained by the Roberts process
"is, not the destruction of the well, but an
"increase of its capacity to gather and hold oil
"from the reservoir surrounding it. And the
66
เ
modes of operation are also unlike. To say
nothing of the structure of the flasks or torpe- 300
"does containing explosive material, and nothing
"in the mode of ignition, the tamping contem-
66
plated and used in the Roberts invention is en-
"tirely novel. In the Mansfelt mine operation
the tamping made use of was an iron rod and
66
66
66
66
66
ram weighing nine hundred pounds, the ram fit-
ting the bore tube, and the whole weight dropped
a quarter of a fathom upon the cartridge. It is
true there was also water in the bore, in depth
"thirteen fathoms, but the water does not appear
76
301
302
303
304
"to have been relied upon for tamping. The
"bore was not filled, as it is in the Roberts inven-
66
tion, and the presence of water was accidental,
"unavoidable and plainly undesired. It Was
"apparently no essential element of the process
"in the mind of the operator. Certainly it was
"not consciously employed as such, and there is
"nothing in the description that suggests the
probability of using efficiently mere water tamp-
ing for blasts in deep bores, much less anything
"that can serve as 6
a direction for doing or prac-
"ticing the thing,' which the Roberts process
"does accomplish through the agency of filling
"the wells with water."
66
66
Boyd vs. Cherry, 50 F. R., 282, 283: "It only re-
"mains to consider the defense of prior use. The
"proof undoubtedly shows that, before the date of
66
Cooley's invention, several other persons had
"been in the habit of occasionally submerging
"vessels containing milk during the process of
"raising cream therefrom, and in some instances,
"at least, such use was public But it also
clearly appears that none of these persons pro-
"ceeded so far as to discover the utility of the
process, or were aware of the fact that by it the
(6
66
66
important and valuable results since achieved by
"Cooley could be secured. It is beyond doubt
"that Cooley was the first to discover and to
"make known to the public the fact that by this
"process the cream could be raised in a much
"shorter period of time than by any other known
means, and that by it a better quality of butter
was to be secured at a reduced cost. The others
" doubtless came very near to this discovery, but
they overlooked it, as is apparent from the fact
"that no other one of them thought enough of the
66
66
66
66
"C
process to permanently adopt it, or to apply for
a patent upon it, until after the Cooley patent
had come into use and its great utility had been
"demonstrated. It follows that the controlling
question upon this branch of the case is whether
66
77
"it is necessary for the defendant, in order to 305
"sustain the defense of prior use, to show, not
66
only that the process was publicly used before
"Cooley's discovery, but that it was used by
some person or persons who perceived the fact
"of its utility, and who knew what could be ac-
complished by it, and who communicated this
information to the public.
66
66
66
'But, upon authority and upon principle, I am
"constrained to answer this question in the affirm-
❝tive.
66
In Tilghman vs. Proctor, 102 U. S., 711, 306
"the Supreme Court, through Mr. Justice BRAD-
"LEY, held an alleged prior use not sufficiently
proved, for the reason, among others, that the
"result had been accidentally and unwittingly
produced, while the operators were in pursuit of
"other and different results, without exciting at-
"tention, and without its even being known what
66
66
66
66
was done, or how it had been done. In Pelton
vs. Waters, 7 O. G., 426, the rule is distinctly
"recognized that the prior discoverer or inventor 307
"must have had such conception of the invention
"as would enable him to give it to the public. Said
Emmons, speaking of the alleged prior inventor
"in that case he not only did not give and could
"not give it [the invention] to the public, but he
did not possess it himself.' The same rule is
recognized in Andrews vs.
66 6
66
Carman, 9 O. G.,
“1011, where it is declared, in effect, that the per-
"son who first discovers the principle, and by
"putting it into practical and intelligent use first 308
"makes it available to man,' is the first in-
"ventor.
"If the alleged prior use of the process was
"under such circumstances that the public ob-
"tained no knowledge of the mode of its opera-
Ition or of the results to be obtained by it, there
"is no prior use within the meaning of the patent
law.
66
"In other words, if the parties who made the
"combination, although seeing with the eye per-
78
309
66 6
310
ceived not, and hearing with the ear under-
"stood not, * *
they added nothing to
*
"their own stock of knowledge; and the fact, if
66 6
66 6
observed by other men (if they understood it
"not), added nothing to the science on that sub-
'ject. Therefore the invention was not made
"until the parties contriving, or others observing
"the existing combination, saw that it could be
made available for the purpose of producing a
result similar to the one which the plaintiffs
have mentioned in their specification,' Ran-
"som vs. Mayor, 1 Fish. Pat. Cas., 267."
66 6
666
66 6
In the cases noted, the defendants had attempted
to escape the charge of infringement by citing acci-
dental similarities, misconceptions or imperfect dis-
closures. But from these authorities it is manifest that
such defenses have no weight, either to defeat a patent
or to limit it to less than the invention, which is fairly
disclosed. In Roberts es. Dickey, the fact that cart-
311 ridges had been exploded under water in oil wells did
not excuse an infringer, who, following the patentee's
plan, had exploded cartridges under a deep-water
tamping to open crevices and to thereby increase the
production of oil. The Court said that if cartridges
had before been exploded to destroy the bore of a well,
the presence of water as a tamping" was not an es-
sential element of the process in the mind of the in-
ventor and was "accidental, unavoidable, and, plainly.
"undesired."
312
66
If in the Gilliland circuit wheel there were a snap-
action present, it would be "accidental, unavoid-
"able and plainly undesirable," in a still greater de-
gree; but there is no such snap-action present in
Gilliland, as the points of his spring must clearly make
only a gliding contact. The gliding contact is adopted
by him, because it suits his purpose, and because it
would defeat his purpose if the spring were given the
snap-action of Perkins' switch.
In many of the cases cited the alleged anticipation
has disclosed an effort to accomplish the result subse-
79
quently attained by the successful patentee, thus pre- 313
senting a higher order of defense than is found in an
accidental similarity of apparatus. Reis, like Bell, was
working to make a telephone; but Gilliiand did not
even appreciate the necessity of a snap-break at the
separation of contacts, to say nothing of the fact
that no device capable of this result is present in his
apparatus.
Reis, in his efforts to send musical sounds, had made
an instrument closely resembling the modern telephone
transmitter; and with this apparatus he was attempt- 314
ing to transmit speech. Thus, he not only had a ma-
chine closely resembling the telephone, but he was
trying to use it as a telephone. Moreover, after Bell's
invention, it was found that by the adjustment of a
screw, Reis' musical instrument could imperfectly trans-
mit speech; but the resemblance of Reis as a defense,
either to defeat or limit Bell, has been rejected by
nearly every Federal Court in the country.
If the Perkins patent could be limited by the art as
presented in this suit, it is clear that Bell's patent 315
must have been destroyed by Reis. But Reis
has not even served to limit Bell; in fact, Reis
has been no more potent to limit Bell's patent than
to wholly destroy it; for the history of the
telephone litigation shows that, notwithstanding the
close resemblance of Reis, all mankind has not in eight-
een years been able to devise an electric telephone that
would escape the charge of infringement. Reis wanted
to do what Bell afterwards accomplished, but it can-
not be said that Gilliland wanted to do what was after- 316
wards done by Perkins. In fact, a snap-action in Gili-
land's telegraph would have defeated his entire pur-
pose and rendered the transmission of messages im-
possible.
The advantages of a driven well would be realized
in a bored well if a tube were tightly forced within the
shaft; and, as the Court said in Andrews vs. Carman,
it was doubtless true that in some instances bored wells
had possessed the essential features and mode of oper-
ation upon which the success of the driven well de-
80
317 pended. The Green patent was often reviewed in the
lower courts, and finally by the Supreme Court, but
the bored-well defense, like that of Reis, was always
rejected. Clearly the bored well was far more perti-
nent than Gilliland, but the decisions show that it was
never seriously considered or given the slighest weight.
Cooley's patent for a plan of submerging vessels con-
taining milk, in water was sustained. Others had often
submerged such vessels, but without knowledge that
cream would be raised in a shorter time, or that by
318 such method a better quality of butter could be made.
If the essential feature shown in a subsequent pat-
ent would destroy or impair the operation of the ap-
paratus of a prior patent set up as a defense, it should
be ample proof that the defense did not contain or an-
ticipate the invention of the later patent. Such is the
case at bar, for Perkins' snap switch would destroy
Gilliland's telegraph. Most of the cases cited present
actual similarities, and they are, therefore, only indi-
rectly pertinent, for Gilliland and Rogers do not show
319 similarities, accidental or otherwise; but they are in
point to show that, if defenses containing similarities
will not be accepted as defenses, those in which simi-
larities are wholly absent certainly should have no
such force.
An element of a combination may be
separately claimed if new; claims of vary-
ing scope may be included in one patent;
320 and all may be based upon a description of
one form of apparatus.
Perkins has made two claims of different scope; and
in so doing he has followed the one practice which has
prevailed from the foundation of our patent system.
The law imposes upon a patentee the duty of disclosing
the best means known to him of practicing the inven-
tion, but he is not obliged to describe more than one
form. By describing his best form he becomes entitled
to claim the invention generically as well as specifically ;
81
and in no sense is he obliged to narrow his claims to 321
the precise construction shown. Judge CURTIS, in
Furbush vs. Cook (2 Fish, 669, 670), said:
66
66
Nor is it requisite to include in the claim for a
"combination, as elements thereof, all parts of the
"machine which are necessary to its action, save
"as they may be understood as entering into the
"mode of combining and arranging the elements
"of the combination. If inclined wires are neces-
sary to the action of the combination specified, 322
"so are many other parts of the machine, and all
parts necessary to the action and combination
"specified might be said to enter into the mode of
combining and arranging the elements of the
combination, but need not be, and ought not to
"be included in the combination claimed."
66
66
66
In Union Paper Bag Machine Co. vs. Pultz and
Walkley Co., 15 Blatch., 160, Judge SHIPMAN, following
Winans vs. Denmead, 15 How., 342, said that, as the 323
patentee had described his invention and shown its
principles in that form which most perfectly embraced
it, he was, in contemplation of law, deemed to have
claimed every form in which the invention might be
copied, unless he had manifested an intention to dis-
claim some of them.
The case of Murphy vs. Eastham, 5 Fish., 309, clearly
shows that a description of the best form is sufficient
to carry all forms, and that the claim will not be
limited to the one description. Judge SHEPLEY (p. 309) 324
said:
66
"The patentee, in his specification and claim,
has only described one geometrical form of
"groove or furrow, and three geometrical forms
"for the rubber ring-i. e., the parallelogram,
"rhombus and triangle. Perhaps a strict construc-
"tion of the language would exclude the triangle
"from the list of forms of the rubber ring in the
claim. The patentee does not, as is sometimes
66
82
325
326
327
328
66
done, claim in terms the thing patented, how-
"ever its form and proportions may be varied;
"but the law so interprets his claim without the
"addition of these words. In contemplation of
66
law, after he has fully described his invention
"and shown its principles, and claimed it in a form
"which perfectly embodies it, unless he disclaims
"other forms, he is deemed to claim every form in
"which his invention may be copied.
"Undoubtedly, in some cases, the letters pat-
"ent include only the particular form described
"and claimed, not for the reason that the patentee
"has described and claimed that form only, but
"because the invention consists in form only, and
only in that form can be embodied, so that when
"the form is not copied the invention is not
"used."
66
Winans vs. Denmead, 15 How., 342, 343:
"It is generally true, when a patentee describes
"a machine, and then claims it as described, that
"he is understood to intend a claim, and does by
"law actually cover, not only the precise forms he
"has described, but all other forms which embody
"his invention, it being a familiar rule that to
"copy the principle or mode of operation de-
"scribed is an infringement, although such copy
"should be totally unlike the original in form or
"proportions."
"Why should not this rule he applied to this
"case?
66
"It is not sufficient to distinguish this case to
say that here the invention consists in a change
"of form, and the patentee has claimed one form
"only."
66
* * *
Patentees sometimes add to their claims an
"express declaration, to the effect that the claim
"extends to the thing patented, however its form
"or proportions may be varied. But this is un-
66
necessary. The law so interprets the claim with-
"out the addition of these words. The exclusive
83
66
66
right to the thing patented is not secured, if the 329
public are at liberty to make substantial copies
"of it, varying its form or proportions. And,
"therefore, the patentee, having described his
"invention and shown its principles, and claimed
"in it that form which most perfectly embodies it,
"is, in contemplation of law, deemed to claim
"every form in which his invention may be copied,
"unless he manifests an intention to disclam some
"of those forms."
A process or method claim may be broad enough to
cover all forms of apparatus by which it may be carried
out; yet it is enough to describe one particular mode,
and one particular apparatus by which the process may
be performed with some beneficial result (Tilghman vs.
Proctor, 102 U. S., 728; Telephone Cases, 126 U. S.,
381).
330
But underlying these decisions is that broad prin-
ciple, which has been stated in very many cases, that
patents will be construed liberally, and, if possible, in 331
a manner to confer upon an inventor the benefits of his
whole invention.
In the light of hundreds of such authorities, Laass'
suggestion that Perkins' first claim should be limited
to one form of apparatus, because only one form was
described, accentuates the fact that, by presenting such
a defense, the defendant had none that was better to
offer.
It is said by Laass that Perkins' first claim is entitled
to enlargement only by virtue of the presence of a 332
second form shown in Fig. 4, which illustrates a spring
and pawl somewhat different from the one shown in
Figs. 1 and 3. If Perkins had shown only the one
form, his patent would, under the authorities just cited,
include that one and all mechanical equivalents as
well; and it is not to be assumed that a description of
a second form will deprive him of anything that he
might cover under the one alone.
The argument of the defense is that, while a pioneer
inventor may claim broadly, a claim of such scope can-
84
333 not be based upon mere improvements, and that, as
Perkins has referred to details for effecting a certain
result, his claim must be limited to a narrow construc-
tion. But a patent for details will still cover the simplest
equivalents of those details, and, above all, will be
given a construction, if possible, that will protect the
invention and give the inventor the full benefit of all
he has done. This is all that Perkins wants. If he is
given the full benefit of what he has done, it is seen
that his patent must cover a ratchet and pawl switch
334 in which there are rubbing contacts and means for
uniformly effecting a snap action to quicken the sep-
aration of contacts each time a pawl leaves a metallic
tooth. His claim in terms covers a device which in-
cludes these features; this was his invention; and a
liberal or any other interpretation awarding him what.
he accomplished could lead to no limitation that would
make his claim cover less than these characteristic
parts.
Under the most rigid rule of interpretation, defend-
335 ant's device is clearly an infringement, for it has every
feature, including ratchet teeth, a detent, rubbing con-
tacts, a snap-action at the separation of metallic con-
tacts, and means for preventing a back movement, to
make such a contact as could only be broken by the
slow action of the hand; moreover, each device is a
slow-moving hand-switch, in which the quickened sep-
aration of contacts is of the highest importance.
It has been said by the Court below that Perkins
shows a lamp in close proximity to his switch, while
336 the infringing exhibits are independent of lamps, and
include only circuit-breakers; but such a position
cannot be maintained, for the reason that the first claim
is for a switch, and does not include a lamp as an ele-
ment. Nor need the claim include the lamp as
an element. Whatever the invention, the whole
organization may be claimed as one combination or as
a series of sub-combinations; and, in fact, any part of a
combination that is new may be claimed by itself as an
element, and without regard to other parts which are nec-
essary to give the organization commercial value .Nine-
I
1
85
tenths of all the patents granted include separate claims 337
for the different parts of the machine or elementary steps
of the method involved; and under a practice that
has never been varied the patentee has been permitted
to make one claim or fifty as he liked.
This proposition is fully supported by the preceding
citations from Furbush vs. Cook, Union Paper Bag
Manufacturing Co. vs. Pulz et al., Murphy vs. East-
man, Winans vs. Denmead, Tilghman vs. Proctor, and
the Telephone Cases (ante, pp. 81-83).
The following are a few more among the great num- 338
ber of cases of the kind which might be cited:
66
Hogg vs. Emerson, 11 Howard, 587: "Again, if
one set of letters patent is permissible for one
"combination consisting of many parts, as is the
daily practice, surely one will amply suffice for
"two or three portions of that combination."
66
Stevens vs. Pritchard, 4 Cliff., 417; 10 O. G., 505:
"Cases arise where a patentee having invented 339
"a new and useful combination, consisting of sev-
"eral elements which, in combination, comprise
"an organized machine, also claims to have in-
"vented new and useful inventions consisting of
"fewer elements, and in such case the law is well
"settled that, if the several combinations are new
"and useful, and will severally produce new and
"useful results, the inventor is entitled to a patent
"for the several combinations."
666
"Holly vs. Vergennes Machine Co., 4 Fed. Rep., 74:
"In Prouty vs. Ruggles, 16 Pet., 336, and like
cases, where it is held that a patent for a combi-
""nation of several parts to accomplish a result is
""not infringed by a combination of less of the same
parts, alone, or with others substantially differ-
ent, to produce the same result. That case was
put expressly upon the ground that neither any
"of the parts, nor any portion of the combination.
"less than the whole, was new. The patentee
666
666
6.66
340
86
341
342
343
344
""is entitled to the exclusive use of the whole of
"his patented invention; and if it is of a combi-
""nation of numerous parts, including in it other
"new and useful combinations of less of the parts,
"" he seems to be entitled to the exclusive use of
"the lesser combination, as well as the exclusive
use of the whole' (Sharp vs. Tifft, 18 Blatch.,
"132; 17 O. G., 1282).
6.66
Buckan vs. McKesson, 7 Fed. Rep., 102: The
patent" describes three ways of making the in-
"corporation" [of carbolic acid with or in soap]
"in order to show how the invention is to be
practically carried out. But in order to show
66
86
66
infringement it it is not necessary to show that
some one of those three methods of incorpora-
"tion was employed.
X * It is sufficient if
66
*
the soap has carbolic acid in the body of it."
Bates vs. Coe, 98 U. S., 31; 15 O. G., 343 :
"Combination patents may be mentioned as ex-
66
amples where more than one invention may be
"secured by a single patent, and in such a case
"the patentee may give the description of each
"combination in one specification."
66
66
Jenkins vs. Ferguson, 32 Fed. Rep., 400: "A
subcombination may be claimed in a reissue if it
was shown in the original as performing the same
function, even though it was claimed only as
"part of a larger combination.".
66
66
*
*
Roberts rs. H. P. Nail Co., 53 Fed. Rep., 920:
"In a combination patent it is permisiable for the
patentee, after claiming his whole machine, to
"claim also the combination of fewer parts than
"the whole.
* This is fully established in
"the decision of Judges McKENNAN and NIXON in
"the case of Wells vs. Jaques, 5 O. G., 364. In
"that case the patent was for a combination of
"elements making up a hat-body machine.
"The combination embodied a great many
different parts, and the patentee made quite a
"number of claims, of which one only embodied
"the whole machine. It was objected that only
66
87
0
"
1
66
66
one claim for the whole machine was valid, 345
"because the devices in combination in the
"other claim could not be employed alone for
any useful purpose, and only be useful when
"combined into a complete machine. The patent
"should have been for the unit, and not for the
"different combination. To this objection Judge
"NIXON says: 'I cannot yield assent to that
proposition. The separate claims of a patent
"must be construed in reference to the speci-
"'fication.' *- * * 'In 2 Robb. Pat. (530), 346
"the principle is stated thus: Claims for each
"subordinate piece of mechanism may be
'joined with those for the principal machine,
"though not capable of use in any other
"known connection." "
66 6
66 6
66
Wheeler vs. McCormick, 6 Fisher, 551: "In
"this case, then, it was competent for the
patentee to amend his original specification,
so as fully and minutely to describe all that
"was shown in the original, or in its drawings or 347
"model, and receive patents for each separate
66
66
device shown therein, or each separate and sev-
"erable combination of devices, capable of distinct
"use, and, while such specification might be an-
nexed, in totidem verbis, to each reissued patent,
"define and claim, in each, such separable and
"distinct part of his original aggregate invention,
"the specification in each case showing, as it
"should, the construction of each separate pat-
"ented device, or combination of devices, so as to 348
"give the required information to the public, and
"illustrating the application of each device or
"combination to actual use, in the construction of
"an aggregate machine. This does not make one
"reissue include all that is described in the speci-
fication. All that is included in a specification
"is not necessarily included in the patent. What-
"is claimed in and secured by the patent is secured
"not only when used in the mode illustrated, by
"the description of other devices with which it
.6
88
}
349
350
351
352
may be used, in the specification, but it is se-
"cured against its use in connection with other
"devices of an entirely distinct character."
NOTE--In considering this reissue the Court
regarded the new claims as patentable upon the
theory that they would have been allowable in the
original patent.
Pitts vs. Whitman, 2 Robb's Patent Cases, 202,
203: "In the summing up of their invention they
"claim four distinct improvements in the ma-
"chinery as their invention. The words are:
66
"
666
66 6
66 6
66 6
66 6
66 6
666
We claim as our invention: (1) The construc-
"tion and use of a endless apron divided into
troughs or cells in a machine for cleaning
grain, operating substantially in the way de-
"scribed (i. e., in the specification). (2) We
"claim also the revolving rake for shaking out
the straw, and the roller for throwing it off the
machine, in combination with such a revolving
apron, as set forth (3). We claim the guard-
slats E, in combination with a belt constructed
substantially as above described; and, (4)
"The combination of the endless sieve and shoe,
with the elevator for carrying up the light
grain in the manner and for the purpose herein
"set forth.' It is plain, therefore, that the
patentees not only claim the entire machinery in
combination, but also for four improvements
"above enumerated, as their invention. And if
they are their invention, there is no objec-
tion, in point of law, to their claim. And
a violation of any one of the specified im-
"provements, without any violation of the others,
"by the defendant, is sufficient to entitle the
"patentees, or their assignees, to an action for the
infringement."
666
66
66
66
66
""
The feature of a rotating wheel is not contained in
the first claim, and it is most doubtful whether the
Court would import into it such a limitation even to
save the patent if a stationary wheel with the teeth and
89
notches of Perkins were found in the prior art; and 353
still less would it endow the claim with novelty by
construing a lamp into the combination; nor would
the Court think of saving Perkins' claim by limiting it
to a small switch which could be placed within the neck
of a lamp if one as large as defendant's had before
been known in the prior art. The courts have often
refused to go to the specification for limitations that
were obviously never intended to be in the claim.
66
Holliday vs. Pickhardt, 29 Fed. Rep., 853: "It 354
"is unfortunate that the claim caunot be limited
"without violence to its language, and without dis-
"regarding well settled rules of construction, to one
"for the efficient process which is described as
preferably to be employed. But a method or
feature which is mentioned only by way of recom-
"mendation, in describing an invention, must gen-
erally be considered as a subordinate or sec-
ondary, and not an essential part of the inven-
"tion, and, in the absence of apt language in the 355
claim, it cannot be read into the claim, even to
"limit the claim to the real invention of the
"patentee."
66
:6
66
In Roemer vs. Neumann, 26 Fed. Rep., 102, as is
shown in the head note, it was held that, "Details
"of construction will not be construed to be
"essential features of a claim in order to sustain
"its validity where the claim does not in any way
I refer to such details, and the references thereto
"in the specification are merely recommendatory." 356
Again, in Bradley & Hubbard Mfg. Co. vs.
Charles Parker Co., 25 Fed. Rep., 907, as is shown
in the head note, it was held that, "Peculiarities
"of construction will not be construed to be dis-
tinctive features of claims in order to sustain
"their validity, where neither the specification
"nor claims suggest that such peculiarities are a
"distinctive feature of the invention."
66
See, also,
White vs. Dunbar, 119 U. S., 47.
90
357
Wisner vs. Grant, 7 Fed. Rep., 922.
Wilkin vs. Covel, 46 Fed. Rep., 925.
Howe Machine Co. vs. National Needle Co.,
134 U. S., 388.
Ashton Valve Co. vs. Coale Muffler & Safety
Valve Co., 52 Fed. Rep., 314.
In the Court below, the defendant criticised the
Perkins patent upon the assumption that it did not
show the wire connections from the switch to the lamp.
As a matter of fact, the description is sufficient and
358 can be understood to mean nothing else than what is
shown in our illustrative diagram, Fig. 1 (ante, p. 6). But
even if the description were imperfect the criticism
would have no force. Perkins was only claiming a
circuit breaker at that time. He was not trying to
claim a specific method of joining a switch with a lamp,
nor even the combination of his switch and a lamp,
or to claim the wire connections from the switch to the
lamp; but was claiming a snap circuit breaker inde-
pendently of a lamp, motor or other translating device.
359 He did not even claim the lamp as an element, and for
this reason, if for no other, he could be under no obli-
gation to describe its wire connections in detail. It is
true, however, as Vansize and Stockbridge testify, that
Perkins' description of circuits in the lamp base is
ample (Vansize, Q. 31, Rec., p. 155; Stockbridge, Qs.
106-107, Rec., p. 117), and that it would be a sufficient
description if the specific connections had been made
part of the claims. Nor has Laass expressed more
than a faint doubt of the sufficiency of that description
360 (Laass, 128-131 x-Qs.). In fact he has expressed no
substantial doubt at all (Laass, 128 x-Q.).
91
The switches referred to by defendant to 361
show that the Perkins invention does not
cover all commercial forms of snap
switches, and that the Perkins form has
been superseded.
The defendant has referred to several modern
switches to show that the Perkins device has been su-
perseded by forms that would not infringe his patent.
One is the Van Gestel switch, in which two leaf
springs, isolated from each other, tend to come together.
When pressed away from each other by turning a finger-
button, which turns an oblong piece of insulating material
between them, they are forced against metallic contacts
to close a circuit, which is in turn broken when
the button is again turned to permit the springs
to approach each other. As the springs are at one
turn merely forced against and at the next removed from
the stationary stops, a self-cleaning rubbing contact is
impossible (Stockbridge, 104 Q., Rec., p. 115).
Such a switch may be cheap to make, but it is abso-
lutely useless, since switches are to be had at a few
cents apiece that may be used indefinitely without
change or repair.
The testimony of Vansize shows in few words why
these switches are unreliable and of no practical value
(Vansize, 28, 29 Q., Rec., p. 152).
362
363
Defendant does not represent that these switches
are presented as anticipations of Perkins. They could
have no such bearing, for, as the record shows, they 364
were not known until 1886 or 1887 (Stockbridge,
156-158 Re-d. Qs., Rec., p.
p. 134). Stockbridge
says (x-Q. 125, Rec., p. 127) that Perkins bought
Van Gestel's patent, and that, after making a
few switches, he gave them up because the non-
wiping contacts could not be kept clean. The inferior
Van Gestel switch, which came before the public several
years after the patent in suit was granted, certainly
can now have no bearing either to show that Perkins'
patent is anticipated or that it has been superseded.
92
365
Weston's patent 277,640 of May 15, 1883 (Rec,, p.
323) shows a switch of the Perkins type, in which the
ratchet teeth are stationary. But the patent, owing to
its later date, can neither limit nor anticipate Perkins;
it does, however, show that Weston appreciated the
feature of snap-action in such devices.
As Weston's patent was issued to the United States
Electric Lighting Company (the same company to
which the patent in suit was granted), it was doubtless
regarded by the owner as an improved form of what
366 was already controlled under Perkins.
367
Crowell's patent 436,122 of September 9, 1890 (Rec.,
p. 326) also shows a Perkins snap-switch; but it is
limited to the smallest details and is only a modifica-
tion of Weston's form. Of course, Crowell has no
bearing as an anticipation, as he was nine years later
than the patent in suit.
The Large Price Paid by Complainant for
the Patent in Suit.
In this transaction complainant paid $17,500 cash
for the patent, when it had but little more than
six years to run (Dustin, 13, 14 Qs., Rec., p. 70);
and even after paying this large amount complainant
was obliged to accept it subject to several out-
standing licenses, of which one was reserved by Per-
kins himself, who is a large manufacturer of electrical
appliances, while another was held by the United
368 States Electric Lighting Company (Dustin, 14-17 Qs.,
Rec., pp, 71, 72). These were serious incumbrances,
and, as Dustin says, a much larger price would have
been paid for the patent if it could have been bought
without them (Dustin, 14, 15 Qs.), for it was believed
that its exclusive ownership would control the switch
business. The circumstance that so large a price
was paid for so short a term, with the several outstand-
ing licenses, is certainly entitled to consideration. The
Schuyler Company was engaged in the manufacture
of electrical apparatus (Dustin, 8-12 Qs., Rec., p. 70)
93
and wanted to make devices such as are shown in the 369
Perkins patent; but upon investigation it was advised
by counsel that the patent was valid, and that, for this
reason and for no other, it must refrain from making
such switches. Thus the company first refrained from
making such switches, and next, when, for the success
of its business, it was obliged to make them, it paid
Perkins $17,500 for such part of the patent as could be
bought.
Prima Facie Proofs.
Only Perkins' first claim is in question, and as is
alleged in the bill, and as is shown by the deposition
of Stockbridge, who was produced as a witness by
complainant, it has been infringed by the manufacture,
use and sale of switches, such as are shown in "Com-
plainant's Exhibit Defendant's Switch No. 1" and
"Complainant's Exhibit Defendant's Switch No. 2"
(Depositions, Rec., pp. 19–64; Exhibits, pp. 21, 33).
370
At the time the two exhibits were offered in evidence 371
a stipulation was made admitting that defendant had
made, used and sold the No. 2 switch before the com-
mencement of this suit (Rec., p. 33, fol. 131), but no
such admission was made respecting the No. 1. Sub-
sequently, however, defendant (after witnesses had been
subpoenaed) agreed to a like stipulation as to switches
of the No. 1 type (Rec., p. 68, fols. 271-273). It may
also be noticed that defendant's witness, Hinds, says
that the No. 1 switch was made by defendant as early
as and after the year 1890 (Hinds, 3 Q.; Rec., p. 216). 372
This switch was compared with the patent in suit
prior to the latter stipulation, but with the under-
standing that complainant should take further testi-
mony to connect the defendant with the manufacture,
use and sale of such apparatus.
Defendant's answer admitted the organization and
existence of both complainant and defendant company
(Rec., p. 8, fol. 31); the answer also admitted the
grant of the letters patent in suit, but denied their
validity and regularity of graut, or that they had been
ཐི༽ ༽
94
373 duly assigned to complainant (Rec., p. 8, fols. 32, 33).
No evidence, however, was offered in support of these
denials except as to the prior art. As to such proofs
as were offered by way of anticipation or to limit
the Perkins patent, the rebutting depositions of Stock-
bridge and Vansize have been presented (Rec., pp.
90-171).
The grant of the patent is proved by the production
of certified copies from the files of the Patent Office
(Rec., pp. 77–89), and ownership in complainant by
374 certified copies of the assignments together with a
stipulation giving them the force and effect that the
originals would have if they had been produced
(Rec., p. 19, fol. 74).
C. L. BUCKINGHAM.
375
376
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UNIVERSITY OF MICHIGAN
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