WESTON PATENT, NUMBER 497,482, COVERING
SHUNTS FOR ELECTRIC LIGHTS AND POWER
STATIONS, SUSTAINED BY HIS HONOR JUDGE
HOLT, UNITED STATES CIRCUIT COURT, SOUTH-
ERN DISTRICT OF NEW YORK, IN HIS DECISION
RENDERED JUNE 10th, 1904.
Full copy of the opinion of the Court in the case of the
WESTON ELECTRICAI, INSTRUMENT COMPANY.,
*
Complainant, vs. the EMPIRE, ELECTRICAI,
INSTRUMENT COMPANY, Chas. D. Cooke, Presi-
dent; Thomas E. Taylor, Treasurer and General
Manager; George N. MacWilliams, Secretary; and
F. A. LA ROCHE COMPANY, co-defendants.
“The proof of infringement is conclusive and is not
controverted.”
“I think that Weston's Patent not only embodies invention,
put that it embodies invention of a very high and superior order.”
“In short I cannot avoid the conclusion that the testimony of
I, a Roche in this case was deliberately and intentionally untruthful
and that to support it he deliberately fabricated an instrument,
to be used upon this trial and other trials, involving Weston's
patents.”
“I direct that the evidence and exhibits in this case be
submitted to the District Attorney, in order that he may take under
consideration the question whether a prosecution should be brought
against La Roche for perjury.”
We do not deem it necessary, at the present time, to
issue any further remarks on this case, other than those
expressed by his Honor Judge HOLT in his opinion.
We do, however, desire to direct the attention of the
Electrical Trade to the fact that this decision upholds Dr.
Weston's inventions of the modern Station Ammeters,
using shunts, that are utilized as indicating instruments for
measuring the strength of current in direct current circuits.
It is our purpose, also, to hereby caution users, intend-
ing purchasers and all other parties making, specifying, or
selling other makes of ammeters, employing the above-
mentioned principles, against the further use, sale or speci-
fication of such products.
WESTON ELECTRICAL INSTRUMENT Co.,
Waverly Park, Newark, N. J.
(lníteo $5tates Circuit Court,
SOUTHERN DISTRICT OF NEW YORK.
IN EQUITY.
WESTON ELECTRICAL INSTRUMENT ComPANY.,
Complainant,
Z/S.
SUIT No. 4.
EMPIRE ELECTRICAL INSTRUMENT COMPANY,
CHARLEs D. CookE, President; THOMAS E.
TAYLOR, Treasurer and General Manager ;
"GEORGE N. MACWILLIAMS, Secretary, and
F. A. LA ROCHE Co.,
ON
PATENT No. 497,482.
Defendants.
WILLIAM Houston KENYON and RICHARD EYRE, for Complainant.
PHILIP MAURO and C. A. L. MASSIE, for Defendants.
Hol.T., J. :
This is a suit to restrain the infringement of a patent, No. 497,482,
dated May 16, 1893, issued to Edward Weston, and now owned by the
complainant, for a shunt for electric light and power stations. There
are no questions as to jurisdiction, parties or title. The proof of
infringement is conclusive, and is not controverted. The
substantial defenses relied on are that the patent in suit is invalid for
lack of invention, for insufficient disclosure in the patent, and for
public use more than two years before the application.
An electric shunt is an additional course or side track established
for the passage of part of an electric current. The use of a shunt for
the measurement of small or ordinary currents of electricity was well
known long before the Weston patent. The usual method of construc-
tion was to introduce into the wire or vehicle carrying the electric
current a metal of greater electrical resistance and to connect the two
terminal portions of such metal by wires with a measuring instrument.
4.
A portion of the current was thus shunted off and passed through the
measuring instrument. The portion of electricity flowing over the
shunt as compared with the portion flowing over the main current
being ascertained, the force of the entire current could be computed by
the measurement of the shunted current, and for the purposes of meas-
urement the use of such a comparatively small current was found more
convenient than to undertake to apply a measuring instrument to the
entire current.
The great difficulty was in applying a shunt to a very large and
powerful current of electricity, owing to the fact that the metal of
higher resistance constituting the shunt would become so heated by the
resistance of so large a current as to become red hot or fused. With
the gradual development of the commercial use of electric power,
it became necessary to employ currents, particularly at electric light
and power stations, of constantly increasing strength, and it became
of great importance to devise accurate measuring instruments for such
large currents. Prior to Weston’s patent in 1893, no practical
method for the tise of a shunt in connection with the meas-
uring instruments for such large currents had been found,
although the necessity for such an instrument was
thoroughly appreciated, and many electricians all over the
world attempted to invent one. In actual practice, no shunt at
that time was used. The measuring instrument was applied to the
entire current, but the result was unsatisfactory.
The measuring instruments were complicated, inconvenient and
expensive, and the measurements which could be made by them were
inaccurate and unsatisfactory. The essential problem in dis-
covering a shunt which could be used with a powerful
current was not electrical but thermal. The question was how
to avoid excessive heat at the shunt. The efforts previous to Weston’s
to solve the problem consisted substantially in attempts to construct a
shunt which should have a sufficiently large resisting mass to heat
slowly, with various appliances or methods for keeping it cool. Weston's
invention consisted in constructing a shunt consisting of short plates
of high resistances, arranged with air spaces between them, and directly
connected with massive terminals, the object being to have the
heat generated in the short plates of high resistance
rapidly removed by the joint action of radiation through
the massive terminals and the cooling influence of the air.
Instead of making the plates of high resistance long, so that they
would heat slowly, they were made short, so that they would heat
quickly, but being inserted at massive terminals at each end, consist-
5
ing of a metal of 1ess resistance, and being surrounded by air, the heat
was dissipated quickly. The heat generated in the short plates of
high resistance reached a certain degree of temperature very quickly,
and thereupon substantially all further heat was effectively dissipated,
so that the degree of heat in the plate of high resistance quickly
became and remained substantially uniform. The result was a shunt
capable of successfully measuring an electric current of enormous
power. The instruments manufactured tinder Weston’s
patent immediately entered into substantially universal
use in all large central electric power and light stations,
and have ever since been used almost exclusively as
ammeters of 1arge electric currents.
The defendants claim that Weston's patent was invalid for want of
invention, claiming that he borrowed all the ideas in his shunt from shunts
previously patented or described. The defendants pleaded in their
answer that the invention had already been disclosed and patented in
certain patents, naming about seventy United States patents and thirteen
French patents previously issued to Weston, and ninety-eight American
patents, forty-one English patents, twenty-two French patents and
four German patents previously issued to other persons. The answer
also alleged that the invention was described in about fifty enumerated
publications.
The defendants have given in evidence a few of these patents
and publications, and in their brief rely upon a previous patent for
a shunt issued to Weston, and other shunts known as the Queen
shunt, the Edison shunt, the Anderson shunt, the Franklin Institute
shunt, the La Roche shunt, and the Vienna and Munich shunts. An
elaborate argument has been made that Weston’s shunt in suit is the
same in principle as all the other shunts, but in my opinion it is
radically different in principle. The basic idea of a shunt, of course, is
fundamentally the same; that is, some metal of higher resistance than
the conducting metal is inserted for the purpose of shunting off a portion
of the current; but all the shunts relied upon by the defendants were
shunts which made no use of the methods which Weston used to dis-
sipate the heat in the case of a large current. None of them had struck
upon the idea of making the plates of high resistance short so that the
heat in them would be rapidly absorbed by the terminals, and none of
them had hit upon the idea of making the terminals massive so that
they would radiate a large amount of heat rapidly from the plates of
high resistance.
I think that Weston’s patent not only embodies inven-
tion, but that it embodies invention of a very high and
6
superior order. It adopted a method of dissipating heat
which was not only novel but was in a line entirely oppo-
site to the direction in which all other electricians had
been working.
The defendants lay especial stress upon the case of the Weston
patent, No. 496,501, for a shunt. This patent was applied for on the
same day as the patent in suit, but was issued about two weeks earlier.
The defendants contend that it is, therefore, an underlying patent,
which claim under the authorities, I think is correct, and that it is a
patent for the same invention as the patent in suit, which claim in my
opinion is entirely incorrect. The earlier patent makes no claim for
short plates of high resistance, joined with massive terminals, as a
method of dissipating heat. The defendants also seem to place great
reliance on the Franklin Institute shunt as having anticipated Weston’s
invention, but I cannot see that it anticipated it at all. It was a shunt;
but its plates of high resistance were long, not short, and its terminals
were not massive. It was an instrument designed for laboratory use.
It was not calculated for commercial use, and was never in fact
employed, and is impracticable to be employed for practical commercial
purposes. The so-called La Roche shunt is admitted by the defendants'
counsel to be further from Weston's invention than the Franklin Insti-
tute shunt; and in my opinion the so-called La Roche shunt,
and a11 the others that have been referred to have nothing
in common with the Weston shunt in suit. -
The defendants allege that Weston did not comply with the statute
requiring his invention to be described in such full, clear, concise and
exact terms as to enable any person skilled in the art to make it.
Great stress is laid on the fact that the claims of the patent do not spe-
cifically state that the plates of high resistance should be short, or
designate the exact length or size of the parts of the shunt. It is
true that the invention must be stated in the claim, and must be
fairly included within it. But the claim must be read in the light of
the specifications and drawings; and if the invention as a whole is
fairly stated in the claim, and the claims, with the specifications and
drawings, enable a person skilful in the art to construct the thing
invented, the patent is sufficient. In my opinion the claims in
this patent sufficiently describe the invention, and all the
parts of the patent read together afford a sufficiently clear and exact
description of the thing invented to enable a person skilled in the art to
construct it. The fact that no precise dimensions of the short
plates or the massive terminals are given is certainly
immaterial. The length of the plates of high resistance and the size
--- OF MICHIGAN
ſiliſi
7318 1052
7
of the metal terminals must necessarily vary to some extent with the
size and force of the current and the circumstances under which the
shunt is to be used. Under such circumstances, absolute precision was
not feasible or necessary.
The defendants allege that La Roche, the president of the defend-
ant F. A. La Roche Company, made public use of the invention more
than two years before Weston’s patent was applied for. I, a Roche
testified that he constructed in or about 1884 an instrument
called a voltmeter, and a shunt, and that from about 1884.
until about 1888 or I889, he used this shunt in connection.
with this voltmeter as a measuring instrument, for the pur-
pose particularly of testing storage batteries, at his work-
shop in Germantown or Philadelphia. In my opinion the shunt
in question does not embody Weston's invention, and even if La
Roche’s testimony as to the use of this shunt in 1884 and afterwards
were true, it would not prove a prior use of Weston’s invention. But
if the shunt produced by La Roche embodied the principle of Weston's
invention, I am entirely convinced that La Roche’s entire testimony
as to the use at any time between 1884 and 1893 of the shunt which he
produces is incorrect.
A very large amount of testimony has been taken bearing upon
the accuracy of La Roche's testimony, which it is unnecessary and
impracticable to consider in detail. The evidence establishes, in my
opinion, that the instrument called a voltmeter was formed by putting
together a number of instruments or parts embodying different inven-
tions, none of which had been made or was known to electricians before.
Weston applied for his patent; that it would have been a marvellous
and almost impossible thing for the most skilful electrical inventor at.
that time to have devised such an instrument; that La Roche is a man
not only without any scientific education but without even the ordinary.
electrical knowledge of a skilful electrical mechanic ; that his reputa-
tion for veracity is bad ; that his shunt never was used as a
measuring instrument in connection with his voltmeter
between 1884 and 1889; that the various pieces of apparatus.
constituting the voltmeter were put together by La Roche after the
issue of the patent in suit to Weston, with the object of being used
in support of his own untruthful testimony to be given in this and
other suits for the purpose of attempting to invalidate this and other
patents issued to Weston; that a part of the apparatus con-
tained in the said voltmeter are two magnets, which are
so arranged that their poles neutralize each other; that
as a result it is impossible for a current of electricity in.
|
8
passing through the instrument to move the coil; that
therefore, the instrument is and always has been entirely
inoperative, and the shunt could not have been used as a measuring
instrument in connection with it.
In short I cannot avoid the conclusion that the testi-
mony of La Roche in this case was deliberately and
intentionally untruthful, and that to support it he deliber-
ately fabricated an instrument, to be used upon this trial
and other trials involving Weston’s patents. It was a
careful, premeditated and elaborate attempt, by tintruth-
ful testimony, fortified by fabricated exhibits, to deprive
Weston of his just rights in his inventions, to impose
upon this court, and to pervert the course of justice. I
direct that the evidence and exhibits in this case be sub-
mitted to the District Attorney, in order that he may take
under consideration the question whether a prosecution
should be brotight against La Roche for perjury.
The evidence of La Roche as to the use of this shunt in the
eighties is corroborated by two witnesses, Toplis and Hanks. I am
satisfied that their evidence is incorrect, but I am not satisfied that it
was willfully untruthful. It may have been mistaken. I think it is
proper, however, that the question of their truthfulness should also be
submitted to the District Attorney.
Complainant’s counsel claims that the damages in this case should
be increased under the statute on the ground that the defence has been
unconscionable. I think that that question will properly arise on the
coming in of the report on the accounting.
My conclusion is that there should be a decree for
the complainant, granting a perpetual injunction, with
costs and disbursements, and a reference to take an ac-
count of the damages and profits.
JUNE Io, I904.