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Opinion—Circuit Court.
–-º- *—3- -*—
Baker Regulator Case.
(Baker Patents No. 684, 165–684,340.)
Manhattan General Construction Company,
:- Complainant,
VS,
Helios-Upton Company,
Defendant.
Judge Archbald's Opinion filed in the U. S. Circuit Court,
Eastern District of Pennsylvania, February 6, 1905.
=\;=
c. G. Burgoyne, walker and Centre Streets, N. Y.
FEBRUARY 6, 1905.
- h the Gir(Ilit (m Of the United StatCŞ
FOR THE EASTERN DISTRICT OF
PENNSYLVANIA.
MANHATTAN GENERAL CONSTRUC-
TION CO.
WS. In Equity
No. 6 April S. 1902
HELIOS-UPTON CO. On final hearing.
THOMAS B. KERR and RICHARD N. DYER for com-
plainants. Joseph C. FRALEY for defendants.
ARCHBALD, District Judge.”
The difficulty in the use of the alternating current
for electric lighting, in a circuit with arc lamps in
series, lies in the fact, that, the potential of the current
having necessarily to be kept constant, at the maxi-
mum required for the full number of lamps, as these
are severally turned off one by one, there is an accu-
mulation of pressure, due to the varying decrease of
resistance, which is destructive to the apparatus em-
ployed. The means proposed to meet and obviate this
in the patents in suit is the insertion in the circuit in
series with the lamps of a reactance device, consisting
of an induction coil and core, which are drawn together
by the varying magnetic pull, as the energy of the cur-
rent is increased by the cutting out of lamps,
this being counterbalanced by an opposing
mechanical force, consisting, as portrayed in the
patents, of a lever and weight, the whole
*Specially assigned.
2
being so co-ordinated and arranged by means of a
critical angle given to the lever (empirically determined
according to the number of lamps and the amperage of
current employed) that the core is always in position
to successfully choke off or release the current to the
extent required. The defendants make use of a simi-
lar core and coil, but the latter is hung vertically on a
rigid arm like a pendulum, and operates as a counter-
balance by its own weight, an equilibrium between the
magnetic pull and the force of gravitation being found
in the increasing effect of the latter as the coil is drawn
upwards away from the perpendicular in the arc of a
circle. It is denied that this infringes either of the
complainants' patents except as they are given an
unwarranted breadth of construction; and the novelty
of the invention which they cover is also contested,
outside at least of the special and peculiar features
which are there described. These, then, are the issues
presented for determination. º
The patents relied upon were both granted to the
complainants, as assignees of Malcolm H. Baker, the
inventor, October 8, 1901; one being for the method
of regulation, and the other for the mechanical appara-
tus or means by which it is accomplished, the specifi-
cations of the two being substantially the same, the
result of a divided application. The method patent
has four claims, differing somewhat in phraseology and
breadth, but with no practical distinction between
them, of which the first may be taken as sufficiently
representative : -
“1. The method of maintaining a constant
current in an alternating-current circuit includ-
ing translating devices in series and also in-
cluding a reactance-coil in series with the trans-
lating devices, which consists in opposing to
the magnetic pull of the coil a mechanical force,
and so correlating the said mechanical force
and the magnetic pull that the choking effect
of the coil will vary automatically to compen-
sate for changes in the resistance of the circuit.”
If this is valid the defendants clearly infringe, the
device which they put out making use of the exact
3
method so described. As just stated, they have a re-
actance coil in series with the lamps, in an alternating
current circuit, the coil being hung like a pendulum,
and the magnetic pull between it and the core, which
is set above and in juxtaposition to it, being opposed
by the weight of the coil and its inclination to swing
back under the force of gravity to an approximately
vertical position, the two opposing forces being so ad-
justed by previous experiment, as to the proper
weight of the coil and the distance and angle at which
the core is to be set, that the choking effect of the two
will compensate automatically for the changes in the
resistance of the circuit in which the device is to be
employed. This is not to be disposed of by the
suggestion, that the specifications describe a par-
ticular form of apparatus of an essentially dif-
ferent kind from that of the defendants', in which
the opposing mechanical force consists of a
counterbalancing lever and weight not found—
as it is said—in the defendants' device, to which in
consequence the complainants are confined. What is
shown in the patent must be taken simply as illustra-
tive, and not as imposing a limitation, this being a
method patent, and not therefore tied down to any
concrete form. If it is good at all, it covers every
means for the maintenance in the manner described of
a constant current in an alternating-current circuit, in
which there are translating devices in series. Neither
can it be limited by the prior art, no such method be-
ing anywhere there found, the regulating reactance
devices which do appear—as we shall more fully see
in connection with the apparatus patent—differing
materially in principle and mode of operation from
anything we have here. Some which have been referred
to have not the same purpose or scope; while in those
which approach the nearest either a transformer is em-
ployed, or magnetic repulsion is the force relied on,
instead of magnetic attraction, this being not simply a
matter of different polarity, but of strength and conse-
quent action and treatment, as well as results.
These observations however develop the weakness
4
and inherent vice of the patent. It is not limited to
any particular mechanical construction, because it
monopolizes every form of regulation, of the character
specified, in which there is a correlation between the
magnetic and mechanical forces employed, and that
too without indicating except by the broadest
generalities, upon what basis that correlation is to
proceed. We have practically nothing more than the
forces made use of, the fact that they are to be correlated,
and the result to be produced. This carries it beyond
anything which it was the design of the patent law to
secure and protect. To support a method or process.
patent, there must be a tangible product, or a change
in character or equality brought about, and not simply
a principle or result, underlying or involved in certain
mechanical or—as here—electrical means or steps.
O' ſeeilly v. Morse 15 How. 62. Corning v. Burden
Ibid 252. Fuller v. Yemtzer 94 U. S. 288. Cochrane
v. Deener Ibid. 780. Tilghman v. Proctor 102 U. S.
707. Wicke v. Ostrum 103 U. S. 461. New Process
Fermentation Co. v. Maus 122 U. S. 413. Risdon Lo-
comotive Co. v. Medart 158 U. S. 63. As said by Mr.
Justice BROWN in Westinghouse v. Bouden Power
Brake Co., 170 U. S. 337 : -
“These cases assume, although they do not
expressly decide, that a process to be patentable
must involve a chemical or other similar ele-
mental action, and it may be still regarded as an
open question whether the patentability of pro-
cesses extends beyond this class of inventions.
Where the process is simply the function or
operative effect of a machine the above cases are
conclusive against its patentability.” -
Even in the Telephone Cases 126 U. S. 1, 534, in
which the court went to the extreme, it was pointed
out by Chief Justice WAITE, that the claim was
“not for the use of a current of electricity in
its natural state as it comes from the bat-
tery, but for putting a continuous current
in a closed circuit into a certain
5
specified condition suited to the transmission
of vocal and other sounds, and using it in
that condition for that purpose. So far as at
present known without this peculiar change in
its condition it will not serve as a medium for
the transmission of speech, but with the change
it will. Bell was the first to discover this fact,
and how to put such a current in such a condi-
tion, and what he claims is its use in that con-
dition for that purpose.”
This decision lends no countenance therefore to the
idea that the operation of an electric force stands any
different before the law from that of a mechanical
force, or that a method devised for utilizing its peculiar
properties and action can be patented any more than a
method for utilizing those of any other element. In the
present instance it is clear that the so-called method;
which is sought to be patented, is merely the operative
theory which is the basis of the apparatus patent. The
one is the idea or principle of which the other is the
concrete embodiment, the identity of the two being es-
tablished by the specifications common to both. And
if the method patent is sustainable the apparatus pat-
ent is redundant and superfluous, as are also all the
others applied for by the same inventor and simultan-
eously taken out, the method covering the whole
ground. It is thus virtually an attempt to monopolize
the common underlying principle or mode of operation
of them all, and of all others in which it might be em-
ployed, and as such cannot be sustained.
The apparatus patent as originally issued had five
claims; but the third and fifth have been eliminated
by a disclaimer ; and the second has been withdrawn ;
leaving the first and fourth as the ones relied upon as
follows : - - -
“1. In an electric circuit, a regulating react-
ance device having operating parts whose rela-
tive position determines the choking effect of
the device, magnetic means for causing relative
movements of the parts, and mechanical means
for controlling such movements, these mechani-
cal means being adapted to so control the move-
6
ments as to produce definite predetermined
choking effects.” - -
“4. In-an alternating circuit, a series of trans-
lating devices and a regulating reactance-coil
(device) having a moving part adapted when
moved to different positions by the magnetic
pull of the coil, to cause varying choking effects,
the said moving part being acted upon by a
force opposing the magnetic pull, which force is
so adjusted throughout its effective range of
operation as to counter-balance the magnetic
pull when the moving part is in such positions
with respect to the coil as are adapted to pro-
duce constant current.” .
Taken as it reads the first of these is a mere abstrac-
tion. The only approach to anything definite is that
there shall be an electric circuit, with a regulating re-
actance device, having operative parts, whose relative
movements under the control of unspecified magnetic
and mechanical means shall be adapted to pro-
duce certain predetermined choking effects. But
of what, in kind or character, these operative
parts are to consist, or what are to be the
magnetic means for causing relative movement to
them, or the counter mechanical means for controlling
such movement, is not in the slightest respect indi-
cated. There is in other words no concrete conception
to be worked out of the claim, nothing indeed, at best,
but an ill defined principle of construction, the only
key to which is the abstract result to be attained. If
it be said, that it is to be read in the light of the
specifications, it is to be noted, that it goes far beyond
anything which is there suggested, the invention being
there declared to relate, “to improvements in regu-
lators for alternating-current arc lamps arranged in
series”; not a word of which is to be found in the
claim. But more than this it fails to refer in the re-
motest degree to that which is admittedly one of the
distinguishing features of the invention, upon which in
large part its novelty, when brought into comparison
with the prior art, unquestionably depends, and that
is the magnetic pull between the coil and the core of
7
the choking device, as contrasted with magnetic repul-
ision, which is made use of in the General Electric regu-
lators, among others, based on one of the Thomson
patents. Not every “magnetic means”, in other words,
was open to the inventor, which is the virtual reading
of the claim, but only the particular means which ac-
cording to the specifications he was supposed to make
use of, and to which by the prior art he was confined,
which the claim entirely disregards. Passing beyond
the bounds of the specifications as it does, and dealing
in generalities and abstractions, the claim must there-
fore be regarded as inherently defective and invalid.
In order to pass upon the remaining claim a more
particular examination into the character and scope of
the invention in suit than has yet been undertaken
must be made.
“My invention,” it is said by the inventor in
the specifications, “relates, broadly, to automat-
ically varying the reactance in a circuit such as
described that is to say, (containing alternating-
current arc-lamps arranged in series) to com-
pensate for changes in the resistance of the cir-
cuit due to the cutting in or out of lamps or to
any other cause, otherwise expressed, my inven-
tion relates to automatically varying the value of
a variable reactance in the circuit in accordance
with changes of resistance in the said circuit in
such a manner as to maintain the current prac-
tically constant. In carrying out my invention I
include in the circuit in series with the lamps a
reactance device consisting of a coil of wire so
placed as to have a free relative movement with
respect to a laminated core inside the coil. It
is well understood that the current passing
through a coil having such a relation to a mag-
netic core is more or less choked or impeded, ac-
cording to the relative position which the coil
and the core occupy, the choking or impeding
effect increasing with the farther and farther in-
sertion of the core within the coil and decreas-
ing with the gradual withdrawal of the core
from the coil. The relative movements of the
coil and the core may be brought about by va-
riations of the magnetic pull due to the varia-
tions of the current passing through
8
the coil. If now a force could be
discovered which would automatically vary
the choking effect produced in the
coil in correspondence with variations in the re-
sistance of the circuit, which force should op-
pose and vary with the magnetic pull of the said
coil, the value of the current traversing the coil
might be made practically independent of the
resistance of the circuit, so that a constant cur-
rent could be maintained irrespective of the
number of lamps in operation in the circuit. I
have discovered that such a force can be sup-
plied mechanically in several ways. In the
present instance I make use of a compensating
lever carrying a weight, and I attach to the end
of said lever remote from the weight either the
laminated core or the coil, as the case may be,
of a reactance device, and I pivot the said lever
at such a point as to form a critical angle be-
tween the outer part of the lever and the inner
part—that is to say, the two parts of the lever
on opposite sides of the pivot—it being pre-
supposed that the inner part of the lever will be
approximately horizontal when the magnetic
pull of the coil is at its minimum, while the outer
portion of the lever will be in a position of least
effectiveness at the same moment. A simple
way of determining the critical angle for the
lever of the compensating device is to construct
a coil having a sufficient number of turns to
show the proper voltage and amperage under
the condition of no load and then to connect the
moving part of the apparatus containing the
coil with a straight lever pivoted at a
point between its ends and carrying at
its outer end a sliding counterbalance.
Then by cutting into the circuit successively
one lamp after another until the maximum num-
ber of lamps is cut in and at each successive
step sliding the counterbalance into such a
position that the readings of the ammeter will
always show the normal current on the line it
will be found that between the extreme limits of
its movement the sliding counterbalance will
have travelled through a curve which is approxi-
mately the arc of a circle. It is manifest that
the centre of the arc just described lies outside
the pivot of the straight lever. The object
sought in making the lever angular is to utilize
9
this pivot as the centre of motion, so that a
weight attached to the end of the lever by some
permanent means of attachment, such as sus-
pension therefrom, will during the movements
of the movable part of the reactance device from
one extreme of its motion to the other follow
substantially the same curve as that traversed
by the sliding counterbalance already described.
It will be understood that as lamps are suc-
cessively cut into the circuit in the process de-
scribed above, the sliding counterbalance has to
be moved by hand nearer and nearer to the
pivot in order to meet the conditions set forth
above, and it will also be understood that the
counterbalance moves during the same period
through a curve in a downward direction, each
successive change in the position of the counter-
balance representing a single unit of movement
corresponding to the switching in of a single
lamp or other unitary translating device. The
same will be true respecting the action
of a weight of equal amount perma-
nently attached to the end of a bent
lever, provided the angle given to the lever is
selected according to the method above de-
scribed. We may suppose, for example, that
the circuit is to carry a current of two thousand
volts and seven amperes. The first require-
ment is that a coil should be provided having a
sufficient number of windings to meet the de-
scribed conditions and being provided with a
core of sufficient size to prevent undue heat-
ing. These conditions being attained, it is easy
to determine the critical angle for the lever.
3% 3; % % *
It is immaterial whether the weight 9 or any
other counterweight of force is attached to the
coil or the core, the relative movements of these
two parts being the feature upon which the
choking effect depends. When the compensat-
ing lever is attached to the core of the reac-
tion device instead of to the coil, (it being as-
sumed that the coil is arranged above the core,)
the core itself forms part of the mechanical
force opposing the magnetic pull of the coil.”
, Comparing what is so specified and described with
the prior art—which will be regarded as comprised
10
within the reference discussed by the counsel—it will
be found to beset with some limitations. Thus in
United States patent No. 377,217 to the eminent
American electrician Elihu Thomson (1888), a react-
ance device for use in an alternating current circuit is
shown, consisting of a coil and core, arranged to
act either by attraction or repulsion, or by
a combination of both, avail being also
made of the assistance of a counterbalancing
lever and weight. The possibility of utilizing
this for purposes of regulation is distinctly claimed,
the current in the coils being cut down—as it is said—
as the magnetic core is drawn into them. The agen-
cies employed in this device are thus in a general way
common to the one in suit, and the purposes of the
two are to a certain extent the same. But whatever
the limitations so imposed, there is nothing which
amounts to an anticipation, the device being alto-
gether too imperfectly developed for that. The diffi-
culty is that while the inventor claims that it may be
used as a regulator he fails to tell us how. And
assuming that the complainants are confined to a lever
and weight, there is an entirely different-use of these,
the two acting merely as a counterpoise to the weight
of the core, and not as an opposing mechanical force
to the magnetic action between coil and core. Much
less is there any correlation or adjustment between
these forces, in order to vary the choking effect in the
coil, corresponding with the variations in the resist-
ance of the circuit; so as to maintain the current
constant, as in the complainants’ device.
The patent to the same inventor (Thomson) No.
397,616 (1889) comes a step nearer. This, in one
form, is designedly a reactance device for automati-
cally maintaining a constant alternating current with
lamps in series, by relieving from the effect of an
excessive potential when one or another lamp is cut
out. In Fig. 4 is shown a hood or band, envelop-
ing and tending to close down upon a coil in cir-
cuit with the lamps, which coil in turn encircles a
laminated iron ring. The effect of the coil and ring is
11
to choke the current, and it is to regulate this that the
hood or band is designed. Being set, by means of the
counter-balancing weight and spring, at a point where
the current is normal, as the pressure or energy is in-
ereased in the coil, by the cutting out of a lamp or
lamps, the inductive effect on the hood or band is in-
creased, repelling it upwards and uncovering more of
the coil, thereby allowing the latter to exercise greater
self-induction or reactance, and so impeding the cur-
rent. While on the other hand, if for any reason the
current is enfeebled, or its energy taken up, the hood,
gravitating by its own weight and being repelled to a
less extent, moves down over the coil, restricting its
reactive or choking power, and freeing or restoring the
pressure of the current. It will be noted that the
effective thing in this arrangement is the correlation
between the reactive coil and the hood, in which the
weighted arm and spring play a very inconsiderable
part, acting as a mere counterpoise to the hood, and in
no sense as a mechanical force opposed to the mag-
netic force which operates upon the hood, and varying
to meet it as in the device in suit. There is thus a
clear distinction in principle between the two, in
addition to the fact, that the one makes use of repul-
sion and the other of attraction, all that can
be said of them—if indeed that—being that
they belong to the same broad class. It may
be added in passing that the attempt to see
in the relative position of the hood and the arm
of the lever the critical angle described in the
patent in suit requires a decided stretch of the imagi-
nation. And even granting that it can in fact be made
out it is a mere happen so of no practical significance.
The Thomson and Rice patent, No. 413,293 (1889),
is the first attempt to connect with the high potential
mains of a constant potential alternating-current cir-
cuit, a circuit having electric lamps in series, and to
regulate the same by the introduction and withdrawal
of a variable reactness. This is admittedly a practical
device and was nine years earlier than the Baker
regulator, but it was not introduced commercially until
12
about the same time. The reactance is secured by
means of a coil wound in sections upon a circular core,
and is made to vary, according to the resistance in the
circuit, by the connecting up or throwing out of the
different sectional windings. To accomplish this vari-
ation automatically a pivoted switch is provided (Fig.
2), one arm of which is attached to an armature or
core, which, as against the retraction of a spring, is
drawn down into a coil set in the circuit. As the
energy of the current flowing through the mains is in-
creased from any source, the core is drawn further into
the coil, and the other arm of the switch being thereby
moved up over the connecting plates, additional sec-
tions of the reactance coil are thrown in, the reactive
effect being increased with each. It is idle to suggest
that there is anything here in common with the device
in suit except the general idea of reactance regulation,
which it must be admitted was not new with Baker,
even with respect to an alternating-current circuit,
with either arc or incandescent lamps in series, as is
thus shown. But the attempt to find in the electro-
magnet, employed to shift the arm of the pivoted
switch, the movable reactive coil and core of the Baker
invention is far fetched. Granting that, of necessity,
there must be some impedance of the current by this
as well as by the rest of the device, the inventors as-
cribe no such function to it, and it is neither so obvi-
ous nor so considerable that others must be assumed
to have noticed it and been instructed thereby.
A third patent to Thomson No. 516,846 (1894) is
also relied upon with some confidence by the defend-
ants. This is, in terms, an alternating-current regulator
for arc lamps in series, but with an induced current,
the regulation being effected through the arrangement
of the opposing coils of the transformer, which oper-
ate upon each other through the medium of the core
within the magnetic field of both. As one or more
lamps are cut out, and thereby a current of less energy
is required, the excess of current thrown back on the
secondary coil repells the primary, and so lessens the
inductive efficiency of the transformer, by air leakage,
13
reducing the strength of the secondary or induced cur-
rent. A counter-balancing weight and lever are used,
the same as in the last Thomson, and for the same
purpose, that is to say, as a counterpoise merely, to
hinder the downward tendency of the moving part, and
not as an efficient mechanical force, opposed to or
correlated with the magnetic force operating
between the coils. As a variation (Fig. 3) the
movable coil is also shown suspended by
cords or flexible connections (attached at the other
end to retracting springs) over pulleys having eccen-
tric cam extensions. But this arrangement does not
differ in principle or function, being nothing but
another form of counterpoise, the cam surfaces being
simply for the purpose of securing uniformity of action
in the pull of the springs. And although it is de-
clared that the device may be “varied to produce any
desirable variation in the pull,” this seems to be
merely an incidental observation, of no especial sig-
nificance, it being immediately added, that “the action
of this form of counterpoise is of course the same.”
This patent assumes some importance as the substan-
tial basis of the General Electric Constant Current
Transformer to be hereafter more particularly re-
ferred to ; and it is confirmatory of the view taken
with regard to it, that at the outstart there was no
provision in these transformers for varying the coun-
terbalancing which remained constant, that necessity
being subsequently recognized and worked out by the
company's electricians, Baker in the meantime having
solved the problem in his own way.
A further patent to the same inventor (Thomson)
No. 516,847, issued the same day as the last (1894)
shows an interesting modification of it. Here the
coils are in series with each other and with the lamps,
but the regulating reactance is effected in substan-
tially the same way, by the repulsion of the
coils from each other, which increases as the
resistance at the lamps lessens, their several effects
upon the core, which they respectively surround,
being thereby increased, introducing a reactive kick or
14
self induction, which brings the current to its former
value. This increase of inductive effect on the core as
the coils are separated is due to the fact that each
coil is released or freed to a certain extent from the
influence of the other. To this the counterbalancing
pulleys and weights, the same as in the last patent, are
merely incidental helps, and not substantial and effect-
ive forces to be reckoned with. It may be noted in
passing that this patent is in part the basis of the
General Electric Reactive Coil, of which more later.
The Ferranti British patent (1894) also shows a re-
actance regulating device for an alternating current.
It is true that the current after leaving the regulator is
rectified or changed to one that is continuous, it not
being regarded as feasible at that time to operate arc
lamps in series on any other ; but that does not affect
the character of the apparatus or the principle which
is disclosed. Similarly to the Thomson, the regula-
tion (Fig. 7) is effected through a transformer, having
two movable primary coils, hung vertically with a fixed
coil intermediate between them, all of them surround-
ing a common core. From the points where the mov-
able coils are pivoted, extend vertical and horizontal
levers, at right angles to each other, at the extremities
of which are counterbalance weights of different
size. These are so arranged that, as the movable
coils are repelled from the fixed coils by the
increased force of the current, the weights
at the ends of the horizontal arms oppose
this, and tend to force them together again ; but the
weights at the top of the upright arm, being thrown
out of the vertical, and gravitating in the other direc-
tion, work just to the contrary, the diminished repul-
sion between the fixed and the movable coils, as they
get further apart, being thus met by a graduated de-
crease in the gravitational force operating to bring
them together again. To the extent that a varying
mechanical force is thus made use of, in opposition to
a magnetic one, as well as in the way that an equili-
brium is sought to be secured between them, by means
of levers and weights acting automatically, it may be
15
said that the same elements are here as are found in
the patent in suit. But this is true only in the most
general sense, and the gap between the two is never-
theless wide. Not only is there a difference in the
character of the magnetic force employed, which is it-
self distinctive, but there is no suggestion how the
opposing forces—-magnetic and mechanical—are to be
adjusted or correlated, to produce constant current,
without which it can hardly be said to have advanced
beyond the theoretical stage.
The Bruger Swiss patent (1894) is of some import-
ance as showing another kind of mechanical force, em-
ployed for purposes of regulation, in opposition to a
magnetic one. In it an iron core is suspended on a
spring above a series coil into which, as the energy
of the current is increased, it is drawn by magnetic
attraction against the action of a spring, a
counterbalance between the two being supposed
to be secured by the increased resistance as the spring
is extended. It is to be noted that the magnetic force
in this arrangement is not repulsion but attraction, the
same as in the Baker regulator, and the mechanical
force, the reactance of a spring. But the device is of
limited range and purpose, and as was observed with
regard to the Ferranti patent the correlation of the
mechanical force with the other elements involved, if
it is to be regarded as at all in the mind of the inventor,
is very inadequately and unsatisfactorily treated. The
mere hanging of a core on a spring to be drawn down
by the magnetic influence of a coil is not enough with-
out more, and it is a question therefore whether any-
thing practical is shown. Assuming however that the
special combination which there appears would stand
in the way of a similar subsequent one, or even of a
construction of the patent in suit which would extend
to a device having these particular features, that is the
full extent to which it goes. There is certainly noth-
ing in it to anticipate or limit the invention outside of
that. -
The Williams British patent (1883) is a mere side
light. Designed to regulate the speed of a dynamo
16
engine, its significance consists simply in disclosing
(Fig. 3) the use of a variable counterbalance lever, with
bent arm and weight, opposed to the magnetic pull of
a coil and core, varying according to the energy of
the current, which is one of the details of the
present invention, but of course falls far
far short of suggesting it. It was something which
the inventor found at hand in the art for such further
uses as it might be put to, but that is all. º
The Spencer patent No. 588,610 (1897) is another
which is somewhat seriously pressed. This is osten-
sibly for a special style of an arc lamp on an alternat-
ing current, supplied with a reactance regulator in
series therewith, for the purpose of controlling and
steadying the current and so the luminosity, of the
light. To this end there is provided—as it is said—in
electric circuit with each lamp a choking coil capable
of automatic variation as to its magnetic field and con-
sequent variation in its self induction. Suspended
within the coil (Fig. 2) is a movable core having a
weighted end which opposes itself to the upward suck-
ing action of the coil. When the current passing
through the coil is norinal, the parts are so propor-
tional, that the core is retained at a certain height ;
but when for any reason the energy of the current is
diminished, and therewith the magnetic effect of the
coil lessened, the core descends and thereupon the self
induction of the coil is relieved, giving passage to
greater force, and restoring the equilibrium. Here as
it is contended is a reactance device for the regulation
of an alternating-current supply, in which a correla-
tion between magnetic pulls and mechanical force, the
latter being represented by a gravitational weight, is
made use of to secure constant current, thus fulfilling
the terms of the patent in suit. Two much im-
portance however is not to be attached to the
general points of resemblance referred to. The
whole purpose and design of this device is to over-
come the slight variations in the electromotive force
at the are, due to the use of solid instead of cored
electrodes in an enclosed lamp; although it must be
17
confessed that its corrective effect of variations in the
current supply is also recognized. But it is confined
in its range of operation to a single lamp, and there is
no attempted variation in consequence of the mechani-
cal force, such as is necessary to meet changes in the
resistance of a circuit composed of many lamps in
series, which is the feature of the Baker invention that
gives it its distinctive place.
It may be that it was this patent that brought about
the disclaimer”, entered by the complainants just
before bringing suit, by which claims 3 and 5, and a
cognate portion of the specifications were eliminated.
These claims relate to the regulation of a single arc
lamp, in series with the reactance coil and in view of
the terms of the disclaimer, by which it is averred that
the patent is too broad, including that of which Baker
was not the original inventor, it is contended that this
has the effect of making that which is so disclaimed a
part of the prior art ; from which it is further argued
*To THE CommissionER of PATENTs :
Your petitioner, Manhattan General Construction Company, a
corporation organized and existing under and by virtue of the laws
of the State of New York and having its principal place of business
at the City of New York in said State, respectfully represents:
That it is possessed of the full and entire legal right, title and
interest in and to Letters Patent No. 634,340 granted October 8,
1901 to it as assignee of Malcolm H. Baker for Regulating Device
for Arc Lamp Circuits;
That it has reason to believe that through inadvertence, accident
or mistake the specification and claims of said Letters Patent are
too broad, including that of which said Baker was not the first
inventor.
Your petitioner therefore hereby enters this disclaimer to that
part of the specification and claims which is identified as follows,
to wit :
The construction illustrated in figure 5 of the drawings and de-
scribed in the specification and claims in the following words:
“Fig. 5 illustrates diagrammatically my improved regulating-
coil in connection with a single arc lamp.
“I may apply my regulating reactance-coil to a single lamp
structure as well as to a circuit including a series of arc lamps. In
Fig. 5 I illustrate such an application. The regulating-coil is in
this instance placed in series with the carbons—that is to say, it is
connected up in the main circuit of the lamp. Its action is pre-
18
that there was no patentable novelty in extending
to a number of lamps, that which was admittedly
old as applied to one. But nothing of this can be
received. The purpose of a disclaimer, after issue, is
to take out of a patent that which has been mistakenly
or inadvertently included in it, by which it is made
too broad. It must be of some distinctive and sepa-
rable matter which can be excluded without disparage-
ment to that which remains; Hailes v. Albany Stove
Co. 123 U. S. 582. But the right to disclaim is a ben-
eficial provision and is entitled to a certain liberality
of construction, and may be made use of to avoid the
effect of having embraced more devices than could
properly be the subject of one patent; Sessions v.
Romadka, 145 U. S. 29; or even to remove an am-
biguity. Carnegie Steel Co. v. Cambria Iron Co. 185
U. S., 403. Matters duly disclaimed thus cease to be
a part of the invention, and the patent is to be con-
cisely the same as has already been described in connection with a
series of lamps in circuit. -
“3. In an alternating-current arc-lamp, a regulating reactance-
coil in series with the carbons, the said coil having a moving part
adapted, when moved to different positions by the magnetic pull of
the coil, to cause varying choking effects in the coil, the moving
parts being acted upon by a force opposing the magnetic pull,
which force is so adjusted throughout its effective range of opera-
tion as to balance the magnetic pull when the moving part is in
positions adapted to produce constant current.”
“5. In an arc lamp, a pair of carbons and a regulating react-
ance-coil in series therewith, the said coil having a moving part
adapted to increase the choking effect in the coil, a pivoted lever
connected to the moving part and a weight on the lever, the con-
nection between the moving part and the lever being made at a
critical angle, whereby the varying effects of the weight and the
magnetic pull of the coil cause varying choking effects which are
adopted to maintain the current constant.”
Dated, City of New York, February 11th, 1902.
MANHATTAN GENERAL CONSTRUCTION
COMPANY - -
by G. W. HEBARD,
President.
Attest,
W. A. ESSELSTYN,
Secretary.
19
strued as though they never had been included in it.
22 Am. & Eng. Encycle Law 2 Ed. 402. Dunbar v.
Meyers 94 U. S. 187. Schwarzwalder v. New York
Filter Co. 66 Fed. 152. In the present instance the
complainants merely disclaim that Baker their assignor
was the original inventor of a regulating reactance
device, such as is covered by the patent, as applied to
a single arc lamp. That is to say, no claim is laid to
this as a part of the invention. There is no admis-
sion however in this, that the subject of the disclaimer
appears in the prior art, which may not by any means
be the case, nor is there any justification for so con-
struing it. It merely takes out of the patent the ex-
cided matter, leaving it as though it had never been
there. This does not of course prevent that which
is disclaimed from being identified with anything to
be found in the prior art—such as the Spencer lamp,
for instance, in the case in hand, with whatever argu-
ment may be admittedly drawn therefrom. But there
is no sanction for using the disclaimer as evidence that
there is any such device in fact, which is the effect
sought to be given it here, as to which it does not un-
take to speak.
The most important reference has yet to be consid-
ered, and that is the General Electric Constant Current
Transformer to which allusion has already been inci-
dentally made, which was installed at Hartford, Conn.,
in the early spring of 1898, somewhat less than a year
prior to the Baker invention. This was the first suc-
cessful attempt at complete regulation, and it is to-day,
in its perfected form, the only kind outside the Baker
which has gone into extensive commercial use. As al-
ready stated, it is based on the Thomson patent No.
516,846, and as observed in that connection, it was not
at first provided with anything to vary the force of the
counterweight, a detail which was subsequently worked
out, but not till after the Baker regulator had made its
appearance. Except in this super-added feature, it
makes use of no principle which is not to be found in
the patent referred to, and as that did not anticipate
the Baker, neither does it. Granting that both are
20
reactance regulating devices, in which a magnetic
force is opposed to a mechanical one, and that the
two are so correlated in each as to accomplish a
generally similar result, the difference between
them is nevertheless marked; being one not
simply of mechanical construction but of mode
of operation and of type. In the General Electric
transformer, the main or primary current remaining
unchanged, regulation is effected, partially it is true by
reactance or the choking of the current, through in-
creased self induction in the transforming coils, but
principally by varying the pressure of the induced
current through a change in the ratio of transforma-
tion, as the primary and secondary coils are repelled
from each other under the force of the accumulated
voltage. It is to facilitate this result, rather than to
secure constancy of current, that the counterbalancing
weights, hung upon adjustable eccentric winding sur-
faces, are employed ; the transformer being actually
set to give a varying current in the lamp circuit, at
different loads, instead of a constant one, increasing or
decreasing to meet the changing conditions by the
cutting in or out of lamps. While in the Baker, regu-
lation is accomplished by a direct choking of the cur-
rent, by means of a reactance interposed in the lamp
circuit itself, the whole purpose being to maintain a
constant current, in the face of a constant potential,
all the way from full load to no load, which it effect-
ively does. In matters of detail also, the two differ
materially. In the Baker the choking of the current
depends on the relative position of the coil and core,
such choking increasing as they are drawn together
by the increased magnetic pull produced by the accu-
mulated energy of the current, and decreasing as this
is otherwise taken up and the two are
forced apart by the counterbalancing weight.
While in the General Electric transformer,
the relation between the coils and core does not
change, but only that of the coils to each other, the
function of the core, which remains equally in the mag-
netic field of both, being simply to increase their influ-
21
ence upon each other. This influence, moreover, being
one of repulsion and not of attraction, requires a del-
icacy of adjustment, because of its weakness, which is
not necessary where the many times stronger force of
attraction is employed; and its effective range is cor-
respondingly limited. Where, therefore, the Baker
regulator is simple and compact, and with a marked
economy of material is able to cope with the entire
situation from no load to full load ; the General Electric
transformer has a tank huge in size, and bursting with
mechanism and still only undertakes to regulate up to
seventy-two per cent of the number of lamps in cir-
cuit. Incidentally also it is to be noted, that the vari-
able weight, the original purpose of which was merely
to serve as a counterpoise to the coils, is at its maxi-
mum effect at full load, where it is at its minimum,
under the same conditions in the Baker, the two thus
working functionally to secure diametrically opposite
results. Nor at the outstart was it a matter of design,
that, as in the Everest patent, where it is given no
function, there should be an upward bend to the arm
of the lever which carries the adjustable quadrant or
sector, on which in the larger sizes of the transformer
the weight is hung, the original purpose of this being
so that the sector should avoid striking the tank
at its lowest position. Not till afterwards, and
after it had been made use of by Baker, was it appre-
ciated that in this form it aided the quadrant in vary-
ing the leverage of the weight. Without dwelling
further upon the subject, it is thus abundantly estab-
lished, that as already stated, the General Electric
transformer differs radically from the Baker regulator,
however much in a general way they may seem to pro-
ceed along similar lines. The problem presented to
each was no doubt the same, but it has been worked
out in distinctly different ways; nor is this to be ob-
scured by the fact that magnetic and mechanical forces
bearing a resemblance to each other have been made
use of and correlated in both, the manner of doing so
being by no means the same. Accepting the General
Electric Constant Current Transformer as the best
22
product of the prior art, the increased range of effec-
tiveness of the Baker regulator, as well as its sim-
plicity of construction in comparison with the great
complexity of the other, is proof of itself of the ad-
vance to be found in the latter, even if there was noth-
ing else. Sessions v. Romadka 145 U. S. 29. Hobbs
v. Beach 180 U. S. 383. Wational Brake Beam Co. v.
International Brake Beam Co. 106 Fed. 693. Boyer v.
Reller Tool Co. 127 Fed. 130. -
The General Electric Reactive Coil—based in part
on the Thomson patent No. 516,847 supra, and in
part on the Everest patent No. 710,050—goes one
step further, and adopts as the mechanical force
employed a counterbalance lever and variable
weight, the reactance device being also in
series with the lamps. But the latter consists of two
oppositely wound coils, set one above the other, sur-
rounded and movable upon a common core, the repul-
sion between the coils, the same as in the constant
current transformer, being the magnetic force made
use of, the core being merely an intermediary between
them. But even if this device approached more nearly
to the Baker than it does, it adds nothing to the case
against it, because it clearly is later in date. The
earliest form which it assumed was a small apparatus
built for the purpose of experiment, in March or April
1899, which as late as September of the same year,
when the paper of Prof. Robb was read and discussed
before the American Institute of Eleatrical Engineers,
had not yet been put into what was considered a suc-
cessful commercial shape. It is a question just when
afterwards this was accomplished, but it is not im-
portant to decide ; for its first beginnings were ad-
mittedly prompted by the coming out of the Baker
regulator early in 1899, which the engineers of the
General Electric Company endeavored to meet with
something of a correspondingly inexpensive character.
The visit of Mr. Baker to Hartford at the instance of
Mr. Westinghouse, at which time it is claimed that he
got his ideas, was prior to this in November or De-
cember 1898. But even though the conceded purpose
23
of this visit was to inspect the plant of the General
Electric Company, and see how to get around their
constant current transformer which was there in-
stalled and being displayed, the fact remains that he did
so, with a device of his own of distinct character
which, as shown by his letter and sketch to Mr. West-
inghouse of December 26, 1898, was almost immedi-
ately conceived, and was put into commercial shape,
substantially as it now appears, about March 1 follow-
ing. As the General Electric Reactive Coil was subse-
quent to and consequent upon this it needs no further
notice here.
There can be no question from this review of the
prior art as to the entire novelty and validity of the
Baker invention. It is true that the whole field was not
open to him, but only an as yet sunoccupied and some-
what restricted place in it. There were undoubtedly
existing devices of kindred and suggestive character;
nor can it be contended that reactance regulation,
even as applied to an alternating current for arc lamps
in series, and on a continuous as well as a transferred
current, was altogether new ; nor yet, the correlation
of mechanical and magnetic forces. What was new
however was the particular forces selected, taken in
conjunction with the way in which they were coordi-
nated and combined ; and especially in the discovery
that a varying gravitational or other like mechanical
force could be successfully opposed to the magnetic
pull, at different positions, of the coil and core of the
choking device, and the two so adjusted as to afford
with exactness the reactance required to meet changes
in the resistance in the circuit and thus maintain the
current constant. This had been only partially and
cumbrously accomplished by others previously, the
efforts of the inventor producing that which not
only differed in degree of effectiveness, but in
type. To the extent that he has thus produced that
which is novel and useful he is entitled to the protec-
tion of the law ; and the only remaining question is
whether the defendants infringe.
If the fourth claim on which the complainants rest
^. , 6 º'
-i.
24
their case is to be taken as it reads, they certainly do.
They clearly make use ; in an alternating current cir-
cuit, in series with translating devices; of a regulating
reactance device, consisting of a coil and core, the coil
being suspended at the end of a pivoted arm or pendu-
lum in proximity to the core, which is set above and
at an angle to it; the two being so located relatively,
that the one is calculated to be drawn upward upon
the other under the influence of magnetic attraction ;
the coil or moving part being thus adapted when
moved into different positions by the magnetic pull ex-
erted by the varying energy of the electric current
passing through it, to cause varying choking effects;
and being itself acted upon in turn by the force of
gravity, opposed to the magnetic pull ; the one being
so adjusted throughout its effective range of opera-
tions, as to counterbalance the other, when the coil,
by the greater or less reactance established by its po-
sitions on the core, is calculated to produce a constancy
of current. This which is exactly descriptive of the
defendants' device, is at the same time descriptive also
of the invention in suit, as expressed in the present
claim. Aside however from any technical adherence
to terms, it requires but little observation to
perceive, that the inherent principle of the inven-
tion has been appropriated by the defendants, with
only slightly varying features. That the two are
closely allied is established by one of the defendants’
own bulletins, where after speaking of the constant
current transformer, it is said: * -
“There is still another type of regulator
which consists of an impedence coil, in which
the impedence is varied automatically by chang-
ing its relation to an iron core, this impedenec
being in series with the lamps. This form of
regulator has many things to recommend
it. * * * It can be used directly upon
the primary circuit without any transformation,
if so desired, which would give the system a
greater efficiency; and it can be made extremely
simple in construction. The Helios-Upton
Company's Regulator is of the last named type.
.25
It consists simply of two coils, which are sup-
ported * * * on a pivot above them, so
that they can swing up on an inclined U-shaped
iron core. These coils are drawn up by their
own attraction to such a point that their im-
pedence always keeps the current constant.
This is accomplished largely by the weight of
the coil as an opposing force, * * * a small
weight being used only for adjustment.”
Undoubtedly the invention under discussion is to
be regarded as residing in a structure of the
same general character as that which is described
in the specifications, to which the inventor is to
be confined. Diamond Match Co. v. Ruby Match Co.
127 Fed. 341. But even on the basis that, as the
result of this, a lever is a necessary component,
this is to be found in the defendant's regulator in the
rigid arm on which the coil is hung, the weight of
which is practically located between the pivot as a
fulcrum and the opposing magnetic and mechanical
forces by which it is swung up or down. This makes
out a lever of the second class, and it is to be noted
with regard to it, that it is by the operation of the two
forces mentioned upon each other, through it as an
intermediary that the changes in the position of the
coil, and its consequent varying reactive effect is
brought about ; the same is in the invention in suit.
This establishes in both form and function the sub-
stantial equivalency of the two. It is only as a critical
angle in one arm of the lever is made an essential
feature that the defendants are able to escape. This
no doubt is the form to which prominence is given by
the inventor in the specifications, but there is nothing
there which of necessity restricts him to it. As was
observed with regard to the method patent—although
the two stand somewhat differently—all that is shown
in the specifications may well be taken as illustrative
merely, and not as intended to impose a limitation,
other than as just indicated. Indeed the inventor ex-
pressly declares—speaking on the subject of the force
26
to be made use of to oppose and vary with magnetic
pull between coil and core :
“I have discovered that such a force can be
supplied mechanically in several ways.”
It is true that he goes on to say:
“In the present instance I make use of a
compensating lever carrying a weight * * *
and I pivot the said lever at such a point as to
form a critical angle between * * * the
two parts * * * on opposite sides of the
pivot ; $ 2
and then proceeds to describe at length by words and
diagrams the method for determining it. But he also
states later on :
“it is immaterial whether the weight 9 (shown
in the drawings, hung from the end of the bent
arm) or any other counter weight or force is
attached to the coil or the core, the relative
movements of these two parts being the feature
upon which the choking effect depends; ”
and further adds:
“when the compensating lever is attached to
the core of the reactance device instead of to
the coil (it being assumed that the coil is
arranged above the core) the core itself forms
part of the mechanical force opposing the mag-
netic pull of the coil.”
It is thus not only shown that he had variations to
the extent indicated in mind, but that one of these, in
which the weight of the core drawn upward by the
magnetic puil of the coil above it is utilized as a part
of the counter mechanical force employed approaches
very closely, if it does not in fact cover the defendants'
device. It is in the light of this, as well as the rest of
the specifications, that the claims must be read; and
the one under consideration having been formulated
by the inventor in broad terms, it is not to be cut down
27
to the particular construction in which the critical angle
appears, there being enough in the specifications to
support it outside of that, especially also as that
has been made the subject of a separate claim.”
National Cash Register Co. v. American Cash Register
Co. 53 Fed. 367. Smeeth v. Perkins 125 Fed. 285.
Boyer v. Keller Tool Co. 127 Fed. 130.
It is said however that, as shown by the proceed-
ings in the patent office, it was only after the amend-
ment of the specifications, by which the method of
determining the critical angle was introduced, that the
objections of the Examiner were removed ; and that
having thus been made an element without which the
patent would not have been allowed, the invention
cannot be carried beyond it. But it is to be observed,
that while considerable stress was no doubt laid upon
this feature in argument there, in response to which
the amendment spoken of was introduced, yet this
was more for the purpose of making clear the method
of fixing the angle on which the inventor relied, which
he had referred to as obvious to any one skilled in the
art, the Examiner evidently not so regarding it. The
significant thing is that the claims themselves were
not amended to bring in any such limitation but, after
some intermediate changes involving nothing of this
character, were accepted substantially as they were
proffered; and without this they are to be taken
as they read. Acme Flea-ible Clasp Co. v. Carey
Mfg. Co. 96 Fed. 353. Society Anonyme Usine v.
Rehfuss 75 Fed. 657, Diamond Drill Co. v. Kelley 120
Eed. 282, Boyer v. Keller Tool Co. 127 Fed. 130. It
was recognized moreover by the examiner in his final
observations on the case that the real invention re-
*
* “2. In an electric circuit, a regulating reactance-coil having a
moving part adapted to increase the choking effect in the coil, a
number of translating devices in series with the coil, a pivoted
lever connected to the moving part and a weight attached to the
lever, the connection between the moving part and the lever being
made at a critical angle whereby the varying effects of the weight
and the magnetic pull of the coil cause varying choking effects
which are adapted to maintain the current in the circuit constant.”
28
sided in the correlation established between the mag-
netic and mechanical forces employed and the choking
effect of the reactance coil, in a way to produce cou-
stant current ; and that this was not confined to the
method by lever and weight, but was broad enough to
extend to a device where a spring was used instead,
which hardly comports with the idea that it was only
accepted in its special and restricted form.
A point is sought to be made out of the fact, which
had already been adverted to, that, while the applica-
tion was pending for the patent in suit, others were
from time to time brought forward covering different
forms of similar reactance regulating devices, all being
allowed and issued the same day. It is contended
that the inventor in this way, not only recognized the
limited character of the present patent, but himself of
necessity set bounds to it, the others being entirely
superfluous and redundant if the invention here is of
the broad scope claimed. In one of these, the buoy-
ancy of a conical float from which the coil is suspended,
is made use of, the sides of which curve inwardly in the
form of a parabola and are so graduated as to offer rap-
idly increasing resistance to the magnetic pull, accord-
ing to the increased displacement of the liquid into
which it is drawn. In another, the opposing force is a
specially calibrated spring, on which the coil is di-
rectly suspended, or which is attached, in place of
a weight, to the other end of an evenly pivoted lever.
In a third, the counterbalancing weight, in the form of
a roller, is attached by a link to the end of a similar
lever, and is arranged to slide up and down an incline
having a co-called critical curve. In a fonrth the
weight is suspended on a chain or on links, from the
end of a lever, varying effect being thereby given to it,
as the other arm is lowered or raised. The fifth has a
divided weight the different parts of which are taken
up one by one, as the lever is similarly moved. While
in the sixth it is suspended on a sprocket chain,
stretched over a pivoted lever, one arm of which is
given a critical curve, whereby the effect of the weight
is increased or lessened as it is moved up or down. I
29
have gone into these structural details for the purpose
of giving full force to the argument, but I am not per-
suaded that it should prevail. These patents un-
doubtedly represent different developments of the same
inventive idea that is the basis of the one in suit.
Not only is this attested by their common purpose and
character, but they have identically the same intro-
ductoly specifications, borrowed from that which we
have here. They are to be severally confined of
course to that which is portrayed and claimed in
each, and do not impinge therefore upon the pres-
ent patent any more than they do upon each other.
There is no necessity and no pretence, as seems
to be assumed, of so broadening it that they
will do so. Confining it as we admittedly must
to a structure of the same general character as is
described and sustained by the specifications the de-
fendants for the reasons already given are nevertheless
found within it and therefore infringe.
Let a decree be drawn in favor of the complainants
to the extent indicated in the foregoing opinion, and
referring the same to a Master etc.
[ENDORSED :] In Equity No. 6 April S. 1902 Man-
hattan General Construction Co. vs. Helios-Upton Co.
Opinion. Filed Feb. 6, 1905. Samuel Bell, Clerk.
Tºº------—
| | HNMāºsſly of McHIGANT TN
Illinºiſ.
39015675Tö";
30
UNITED STATES OF AMERICA,
Eastern District of Pennsylvania.
{ SCT.
I, SAMUEL BELI, Clerk of the Circuit Court of the
United States of America for the Eastern District of
Pennsylvania, in the Third Circuit, do hereby Certify
the foregoing to be a true and faithful copy of the
original Opinion in the case of Manhattan General
Construction Co. vs. Helios-Upton Company # 6 April
Sessions, 1902, Filed February 6th, 1905, on file and
now remaining among the records of the said Court in
my office.
IN TESTIMONY WHEREOF, I have hereunto sub-
scribed my name and affixed the seal
of the said Court, at Philadelphia,
this Seventh day of February in the
year of our Lord one thousand nine
[SEAL.] hundred and five and of the Inde-
pendence of the United States the
one hundred and twenty-ninth.
(Sgd) SAMUEL BELL
Clerk of C. C.
per BRODBECK.
[27020]