381,968 ET AL.
No. 1.
Opinion—Circuit Court.
Tesla Polyphase System.
(Tesla Patents Nos. 381,968–382,279–382,280.)
Full text of Judge, Townsend's Opinion in the case of
Westinghouse Electric and Manufacturing Company,
= aomplaznant, vs. New England Granite Company
et al., ZXefendants, filed in the United States
Circuit Court, District of Connecticut,
August 29, 1900.
C. G. Burgoyne, Walker and Centre Streets, N. Y.
united States Circuit Court,
DISTRICT OF CONNECTICUT.
WESTINGHOUSE ELECTRIC AND MANU-
FACTURING COMPANY.,
WS.
NEW ENGLAND GRANITE COMPANY
ET AL.
TownsLND, District Judge.
Final hearing on bill and answer raising questions
of patentability and infringement of complainant's
three patents granted to Nikoln Tesla, May 1, 1888,
namely, Nos. 381,968, 382,280 and 382,279. No.
381,968 is for an electro-magnetic motor. No. 382,280
is for the electrical transmission of power by the
method of operation described in No. 381,968. Patent
No. 382,279 is for a specific construction of motor em-
bodying the invention of the other two patents.
It is not claimed that the defendant Batterson has
infringed, and as to him the bill may be dismissed.
The patents in suit relate to the art of electrical
transmission of power by the use of mechanically gen-
erated alternating electric currents.
It is, of course, understood that the real nature of
electricity is still unknown, and that the nomenclature
used herein, such as “currents,” “flowing,” &c., are
merely convenient technical terms to indicate certain
known results.
2
The electric current induced by a mechanical gen-
erator—a dynamo–is necessarily alternating in char-
acter; that is, alternating in direction, so that the cur-
rent, acting On an armature, first tends to actuate it
in one direction and then reverses said effect and
neutralizes such actuation. Such a current flows
uninterruptedly and regularly, but rises in in-
tensity from Zero to maximum and falls from
maximum to zero, and then repeats said variations in
the opposite direction. Its curve of increase or de-
crease of strength is indicated by a wave line or sine
CUll” Vé. -
Every mechanically generated current is naturally
and originally an alternating current. Formerly it
was not considered practicable to use mechanically
generated currents until their alternations were
straightened out by means of commutators which re-
versed the direction of the current so as to make it
flow continually through the conductors. A current
which is periodically reversed by a commutator which
thus breaks the current between the changes in direc-
tion and takes off the current in Sections, is known as
a reversed or alternated current. This distinction be-
tween an alternating and an alternated current should
be carefully noted. An alternating current continues
to act in opposite directions as Originally generated.
An alternated current has been so reversed that the
whole flows in one direction and is then known as a
continuous current. When so reversed by commuta-
tors as to become continuous, the current loses certain
characteristics essential to its highest efficiency.
Prior to the Tesla inventions, only reversed or alter-
nated electric currents were used for the transmission
of power. The application of this system for the trans-
mission of power was limited, for various reasons ;
among others, because a large current could not be
safely used at sufficiently high pressure for long dis-
tances. On the other hand, the pure alternating cur-
rent was practically unlimited in volume and pressure,
gº
o
and a change of pressure could be economically
effected by the use of a transformer.
Prior to Tesla's inventions, however, these rapid al-
ternations of the alternating current prevented the
motor from starting its revolution and interfered with
its continuing in Operation, except when in synchron-
ism with the generator. It was therefore impracticable
for varying loads. -
The problem which was presented to Nikola Tesla,
and which he successfully solved, was, how to over-
come the difficulties attendant upon the use of the
alternating currents so that their inherent vitality and
untrammelled energy might be utilized for the un-
limited transmission of power.
In an electric motor, the tendency of the armature
is always toward the pole or point of maximum mag-
netic intensity. If a loosely pivoted or freely moving
magnetic bar or armature be suspended midway be-
tween two coils of insulated wire wound in opposite
directions . On a soft iron bar, and one of the coils is
electrically energized, north and south poles will be
formed at the ends of the soft iron bar—their location
depending upon which coil is energized; but if both
coils be equally emergized the two poles will neutralize
each other and cause a resultant north pole midway
between the coils. If, now, the current in one coil be
made weaker than in the other, said pole will move
toward the coil of greater electrical energy. The mag-
netic bar or armature will follow the shifting position
of the pole, and by thus gradually varying the energy
in the coils, the armature may be alternately caused to
move from the pole of one coil along toward the pole
of the other coil. *
The alternating current generated by an electrical
machine, as before stated, constantly varies from maxi-
mum intensity to zero in one direction, and then from
Zero to maximum intensity in the opposite direction.
In the invention of the patents in suit, Tesla availed
himself of this characteristic feature of alternating cur-
rents in the following way :
4
In constructing a motor, he arranged on an annular
soft iron core, two pairs of magnetizing coils, each pair
at right angles to the other, that is, one coil of one pair
at the top, and one at the bottom, and One coil of the
other pair at each opposite side of said core, and
mounted an armature in the center. Then, connecting
them with an alternating current generator, he caused
a current from one pole of Said generator to pass
through one pair of coils and a current from the other
to pass through the other pair.
If the cycles of alternating currents be regarded as
divided into 360 degrees, then, as shown in the Tesla
illustrations, they will have a relative displacement of
90 degrees. In such position the lines of magnetic
force traversing the two coils will be at maximum in
one while at minimum in the other. This relative dis-
placement marks the differing phase or time relation of
the two currents.
The effect of passing two equal currents through said
coils would be to cause the pole of maximum intensity
to pass midway between the poles of the respective
pairs of coils. But the effect of the Ordinary operation
of the generator as before explained was to cause the
current in each pair of coils to vary from Zero to maxi-
mum and to Zero and then to shift in the opposite di-
rection, the intensity of the current flowing to one pair
of coils being at maximum while that of the other was
at zero and one increasing while the other decreased,
and the result being to shift said poles so as to make
them travel entirely around said core.
Fifteen days after the issue of the patents in suit
Tesla read before the American Institute of Electrical
Engineers a paper entitled “A New System of Alter-
nate Current Motors and Transformers ”, in which,
inter alia, he said :
“The transmission of power, on the contrary, has
been almost entirely confined to the use of continuous
currents,and notwithstanding that many efforts have
been made to utilize alternate currents for this pur-
5
pose, they have, up to the present, at least as far
as known, failed to give the result desired.” ” * *
“The subject which I now have the pleasure of
bringing to your notice is a novel system of elec-
tric distribution, and transmission of power by
means of alternate currents, affording peculiar ad-
vantages, particularly in the way of motors, which
I am confident will at once establish the Superior
adaptability of these currents to the transmission
of power and will show that many results hereto-
fore unattainable can be reached by their use ; re-
sults which are very much desired in the practical
operation of such systems and which cannot be ac-
complished by means of continuous currents. *-
“Before going into a detailed description of
this system, I think it necessary to make a few re-
marks with reference to certain conditions exist-
ing in continuous current generators and motors,
which, although generally known, are frequently
disregarded.
“In our dynamo machines, it is well known, we
generate alternate currents which we direct by
means of a commutator, a complicated device and,
it may be justly said, the source of most of the
troubles experienced in the operation of the ma-.
chines. Now, the currents so directed cannot be
utilized in the motor, but they must—again by
means of a similar unreliable device—be recon-
verted into their original state of alternate cur-
rents. The function of the commutator is entirely
external, and in no way does it affect the internal
working of the machines. In reality, therefore, all
\machines are alternate current machines, the cur-
rents appearing as continuous Only in the external
circuit during their transit from generator to mo–
tor. In view simply of this fact, alternate cur-
rents would commend themselves as a more direct
application of electrical energy, and the employ-
ment of continuous currents would only be justified
if we had dynamos which would primarily gener-
ate, and motors which would be directly actuated
by such currents.
“But the operation of the commutator on a mo-
tor is two-fold ; firstly, it reverses the currents
through the motor, and secondly, it effects auto-
matically, a progressive shifting of the poles of
one of its magnetic constituents. Assuming, .
(5
therefore, that both of the useless operations in
the system, that is to say, the directing of the al-
ternate currents on the generator and reversing
the direct currents on the motor, be eliminated, it
would still be necessary in order to cause a rota-
tion of the motor, to produce a progressive shift-
ing of the poles of one of its elements, and the
question presented itself.-How to perform this
operation by the direct action of alternate cur-
rents 2 I will now proceed to show how this re-
sult was accomplished.
“In the first experiment a drum-armature was
provided with two coils at right angles to each
other, and the ends of these coils were connected
to two pairs of insulated contact-rings as usual.
A ring was then made of thin insulated plates of
sheet-iron and wound with four coils, each two
Opposite coils being connected together so as to
produce free poles on diametrically opposite sides
of the ring. The remaining free ends of the coils
were then connected to the contact-lings of the
generator armature so as to form two independent
circuits, as indicated in figure 9. It may now be
seen what results were secured in this combina-
tion, and with this view I would refer to the dia-
grams, figures 1 to 8a. The field of the generator
being independently excited, the rotation of the
armature sets up currents in the coils C C, varying
in strength and direction in the well-known man-
mer. In the position shown in figure 1, the cur-
rent in coil C is nil while coil C, is traversed by
its maximum current, and the connections may be
such that the ring is magnetized by the coils C,
C, as indicated by the letters N S in figure la,
the magnetizing effect of the coils c c being nil,
since these coils are included in the circuit of
coil C.
“In figure 2, the armature coils are shown in
a more advanced position, one-eighth of one revo-
lution being completed. Figure 2d. illustrates the
corresponding magnetic condition of the ring. At
this moment the coil C1 generates a current of the
same direction as previously, but weaker, produc-
ing the poles n, S, upon the ring ; the coil C also
generates a current of the same direction, and the
connections may be such that the coils c c produce
the poles n s, as shown in figure 2d. The result-
sº
7
ing polarity is indicated by the letters N S, and it
will be observed that the poles of the ring have
been shifted one-eighth of the periphery of the
Same.” # * * -
“A reference to the diagrams will make it clear
that during one revolution of the armature the
poles of the ring are shifted Once around its periph-
ery, and each revolution producing like effects,
a rapid whirling of the poles in harmony with the
rotation of the armature is the result. If the con-
nections of either one of the circuits in the ring
are reversed, the shifting of the poles is made to
progress in the opposite direction, but the opera-
tion is identically the same. Instead of using
four wires, with like result, three wires may be
used, one forming a common return for both cir-
Guits.” # * *
“In applying this principle to the construction
of motors, two typical forms of motor have been
developed. First, a form having a comparatively
small rotary effort at the start but maintaining a
perfectly uniform speed at all loads, which motor
has been termed synchronous. Second, a form
possessing a great rotary effort at the start, the
speed being dependent on the load.”
The claims in issue in Patent No. 381,968, are as
follows:
“1. The combination, with a motor containing
separate or independent circuits on the armature
or field-magnet, or both, of an alternating-current
generator containing induced circuits connected
independently to corresponding circuits in the
motor, whereby a rotation of the generator pro-
duces a progressive shifting of the poles of the
motor, as herein described.
“3. The combination, with a motor having an
annular or ring-shaped field-magnet and a cylin-
drical or equivalent armature, and independent
coils on the field-magnet Or armature, or both, of
an alternating current generator having corre-
spondingly independent coils, and circuits includ-
ing the generator-coils and corresponding motor-
coils in such manner that the rotation of the
generator causes a progressive shifting of the poles
of the motor in the manner set forth.”
8
That of Patent No. 382,280, is as follows:
“The method herein described of electrically
transmitting power, which consists in producing a
continuously-progressive shifting of the polarities
of either or both elements (the armature or field-
magnets or magnets) of a motor by developing
alternating currents in independent circuits, in-
cluding the magnetizing coils of either or both
elements, as herein set forth.”
The claims in issue of Patent No. 382,279, are as
follows :
“1. The combination, with a motor containing
independent inducing or energizing circuits and
closed induced circuits, of an alternating-current
generator having induced or generating circuits
corresponding to and connected with the energiz-
ing circuits of the motor, as set forth.
“2. An electro-magnetic motor having its field
magnets wound with independent coils and its
armature with independent closed coils, in com-
bination with a source of alternating currents
connected to the field coils and capable of pro-
gressively shifting the poles of the field magnet,
as set forth. y
“3. A motor constructed with an annular field
magnet wound with independent coils and a
cylindrical or disk armature wound with closed
coils, in combination with a source of alternating
currents connected with the field-magnet coils and
acting to progressively shift or rotate the poles of
the field, as herein set forth.”
Complainant's theory of the Tesla invention is shown
by the following citation from the brief :
“It will be observed that to produce a shifting
of the magnetic pole in One case, and a consequent
movement of an armature corresponding thereto,
each coil A and B must be traversed by a current
of variable strength, and in Order to secure uni-
formity of the movement of the pole or resultant
it follows that the variations in strength of cur-
9
rent in the two coils must be gradual and preserve
definite Yelations to each other, throughout the
cycle of variation in strength which the two cur-
rents undergo.
“This principle lies at the foundation of Tesla's
brilliant discovery, the gist of which was the
utilization of the alternating currents generated by
an alternating-current dynamo or generator for
effecting such shifting of the magnetic poles or re-
sultant attractive forces upon the armature of a
motor, and thus causing such armature to rotate
in response thereto.
“His broad invention, expressed in a few words,
was the production in a motor of a progressively
shifting magnetic field (or pole) by means of two or
or more independent alternating currents, differing
in phase, and circuits which preserve the independ-
ent character and phase relation of such currents.”
Defendants’ position is shown by the following ex-
tract from their briefs:
“Referring further to the apparatus of Tesla,
Waterman says (Rec., p. 52): ‘Briefly then, the ap-
paratus consists of a ring field magnet having One
set of coils tending to magnetize it on One diam-
eter and another tending to magnetize it on a diam-
eter at right angles to the first, and these sets of
coils or circuits are so connected to a proper
generator as to be traversed by currents such as
would be generated by two coils at right angles to
one another rotating in a two-pole field.’ It will be
seen from this that complainants claim a broad
discovery and a broad invention based thereon.
Defendants on the other hand contend that the
alleged divcovery was old, that its application was
old, and that since the days of Arago there was
never any room for a broad invention in the “ob-
vious ' application of the alleged discovery '; and
that the present state of the art has been developed
from the earlier art including Arago's rotation by
the mere application of engineering skill possessed
by skilled electricians who have applied their
knowledge, as the progressive demands of the
times called for it, supplemented by inventions
special to the motor or the generator or the con-
I0
necting circuits severally, and in no way entitling
Tesla or any other patentee to prevent the sale of
generators and motors through the ownership of
an all controlling patented ‘system.’”
The well known Arago rotation is described as fol-
lows :
“Arago's method of producing rotation in a
copper disk consists of suspending it by its center
so as to make it lie horizontally above the poles
of a horseshoe magnet and then rotating the
magnet about a vertical axis. The rotation of the
disk is due to that of the magnetic field in which
it is suspended ; and we should expect that if a
similar motion of the field could be produced by
any other means the result would be a similar mo-
tion of the disk.”
The chief contention of defendants is that there is
no substantial difference in character between alter-
nating and reversed currents and that the art of elec-
tric lighting illustrated in the alleged anticipations
showed such an analogous use of reversed currents
that the substitution of alternating for reversed cur-
rents did not involve invention.
Defendant further contends that the principle of re-
versibility was well known in the art, and as the in-
ventors of electric lighting apparatus state that by a
reversal of their action power may be produced, Tesla
is deprived of all claim to the exercise of the inventive
faculty. That is, that the same apparatus may be
used as a generator or dynamo-electric machine or may
be reversed and used as a motor or electro-dynamic
machine.
(This word “reversibility " has no relation in this
connection to the word “reversed '' as applied to cur-
rents.)
In support of their contentions defendants chiefly
rely upon four prior publications, namely, the Baily
article of 1879; the Siemens patents of 1878; Deprez'
11
article of 1880–84 and the Bradley application of May
9, 1887.
The subject of Baily's paper was “A Mode of Pro-
ducing Arago's Rotation.” He says:
“Possibly the rotation of the magnet may be
the only practicable way of producing a uniform
rotation of the field ; but it will be shown in this
paper that the disk can be made to rotate by an
intermittent rotation of the field affected by means
of electro-magnets.”
The test and drawings describe and show four pairs
of magnets arranged in a circle.
By successively energizing one diagonally opposite
pair after another by means of a commutator making
and breaking the current the disk was caused to travel
about in said circle. As to this device defendants' ex-
pert Says :
“The field magnets with their energizing cir-
cuits and copper disk, constructed and operated
as Baily shows and describes, constituted a two-
phase alternating current motor, the copper disk
or armature of which was operated by a rotating
magnetic field. The lines of force of the rotating
magnetic field cut through the copper disk and set
up therein electromotive forces, which cause cur-
rents to flow in close induced circuits formed by
the continuous metallic mass of the disk.”
Baily merely showed how to apply a series of suc-
cessive impulses to the disk by an intermittent rotation
of the field and thus produce Arago's rotation field
with stationary magnets instead of a moving magnet,
and he showed how the motion of the disk could be re-
versed. That he conceived the idea of a uniform rota-
tion by a manifestly impossible and impracticable con-
struction appears from this statement :
“In one extreme case, viz., when the number of
electro-magnets is infinite, we have the case of a
12
uniform rotation of the magnetic field, such as we
obtain by rotating permanent magnets.”
But Baily did not claim to have established a con-
tinuous rotating field or to know any way in which a
uniform rotation could be produced. He did not use
alternating currents but reversed currents. He was
not dealing with the subject of the transmission of
power. Defendants’ expert admits that his paper
merely describes a laboratory experiment.
As complainants say in their brief :
“The action of the Baily intermittent field in
propelling the disk may be compared to propelling
a boat with oars hung on pins So as to be incapa-
ble of feathering and which are held rigidly in
the water for a considerable time after each
stroke before they are advanced for the next.
It is evident that this method of propulsion
would involve a large waste of power, since the
oars would act alternately to propel and to stop
the boat, and the method would be practically use-
less. Using the same analogy, the action of Tesla's
continuously-rotating field would be like that of
the ordinary screw propeller, in which all the
power is applied in a continuous push forward.”
The Siemens British Patent No. 3,134 of 1878, for
Improvements in Apparatus for the dynamical produc-
tion and application of electricity, and for its regula-
tion when applied for illumination, “relates to appa-
ratus applicable as dynamo-electric apparatus for the
conversion of mechanical power into electricity or as
electro-dynamic apparatus for the application of elec-
tricity to produce motive power,” but describes appa-
ratus “as of the dynamo-electric kind whereby me-
chanical power applied to drive it is converted into
electricity.” But the patentee states that “with suit-
able modifications these apparatus are generally ap-
plicable also as electro-dynamic machines, their rotary
parts being caused to revolve and give out mechanical
power when electricity is applied to them.”
13
The patentee also says :
“The machines described with reference to the
Figures in Sheets II., III., and IV. of the accom-
panying Drawings may obviously be arranged in
an inverted manner, that is to Say, the electro-
magnets might be made to revolve round a sta-
tionary coiled airmature. Also the machines de-
scribed as well as that shewn in Sheet I., instead
of being driven by mechanical power so as to gen-
erate electricity, may be made to give out mechan-
ical power by exciting their coils by electricity
from an external source.”
Counsel for defendants describe this apparatus as
follows :
“This Siemens apparatus consists of a station-
ary field magnet having inner and Outer polar pro-
jections C C1 energized by a continuous current
supplied through an outside source or through the
commutators G. Within the circle between these
polar projections lies the cylindrical portion of a
dish-shaped armature, J., carrying two sets of coils.
These coils are offset, as shown in Fig. 4, so that
the current of One set is displaced by 90 degrees
from the current of the other set. The two termin-
als of one set of coils are connected respectively
to two of the collector rings, H H, while the two
terminals of the other coil are respectively con-
nected to the other two rings.”
And as to said apparatus complainant's expert
makes the following admission :
“It is, of course, quite easy now to see that
some of the machines that were known in the art
prior to Tesla's invention—such, for example, as
the Siemens and Gramme multiple-circuit ma-
chines—could, by properly taking off their cur-
rents, have been used as polyphase machines, and
also that if any one had coupled two of these
properly-arranged machines in a certain way, and
used them in a certain way, the system so pro-
duced would have involved the use of the inven-
tion afterwards made by Tesla.”
14
Claim 4 of said patent is as follows :
“The construction of a dynamo-electric or
electro-dynamic machine, wherein for the disk re-
ferred to in the preceding claim there is substi-
tuted a cylindrical shell carrying coils, and revolv-
ing between the poles of interior and exterior
radiating electro-magnets, substantially as herein
described with reference to the Figures in Sheet
IV of the accompanying drawings.”
Counsel for defendants therefore claim :
“That any generator, be it straight-current or
alternating-current, single-phase, two-phase, or
what not, may be reversed and used as a motor ;
supply it with currents such as it generates and it
will operate as a motor.” # * *
“Aïd that the reversing of such apparatus as
Siemens or Bradley is all that there is to the so-
called Tesla invention. The art knew it could be
done and how to do it.”
They therefore contend that “this (Siemens) patent
is a full disclosure of the subject matter in issue in ’’
the first and second patents in suit.
This patent is chiefly for means to convert motive
power into electricity. It does not specifically relate
to or describe or fully show a system of apparatus for
the transmission of power. It not only fails to refer
to any difference of phase, or to point out how the
armature and Overlapping coils are to be coupled to-
gether to produce such phase, but it repeatedly de-
scribes the use of commutators in order to create a
continuous or direct current.
At this date it was not known that an alternating
current machine could be used as a motor. Motors
them were operated only by a direct or continuous
current so far as the record shows. The “suitable
modifications '' to change this machine into a motor
are nowhere described ; in view of the repeated refer-
ence to commutators, the modifications must be pre-
15
sumed to relate to such continuous current machines;
and in view of the then state of the art such suitable
modifications would have required such a series of ex-
periments and such a departure from the existing
theories and such development and application of de-
vices in unexpected and non-analogous ways as would
in themselves have constituted invention. Siemens
himself, as late as 1884, and Alteneck, the other in-
ventor of said Siemens Patent, in 1881, admitted that
they did not know that alternating currents could be
used as motors. This evidence was objected to on the
ground that the publications containing said state-
ments are not duly proved but the fact is established
by other sufficient evidence.
The statements in the German Siemens Patent are
quite as favorable to complainant as to defendants and
will not be discussed. * f
May 9, 1887, about six months before the filing of
the Tesla application, Chas. B. Bradley filed his appli-
cation for a dynamo-electric machine, that is, a
generator, for converting power into electricity as in
Siemens. - -
Counsel for defendants say:
“In this application a two-phase machine is
shown. The armature consists of a simple Gramme
ring having its common winding connected to four
collecting rings, c, d, e, f, as shown in Fig. 2.
From these rings alternating currents of different
phase are transmitted to be used as desired. The
two phases of the alternating currents were clearly
explained. The potential at one pair of termi-
mals being maximum when the other is zero,
so that when the connections are made between
the respective terminals two currents will flow,
but the ‘second current will differ from the first
by exactly half a phase; that is, when the first
current is at maximum the second will be zero,
and, conversely, when the first is zero the second
will be maximum. Bradley, after having fully ex-
plained his construction and pointed out the two-
phase feature, states that it is obvious thai his
16
*.
machine may be used as a motor as well as a gem-
erator, and that it may, when so used, be fed or
actuated either by continuous or alternating cur-
rents or both.”
The claims in said application cover an alternating
current generator. Defendants chiefly rely on the fol-
lowing statement in the original application :
“It is obvious that my machine may be used as
a motor as well as a generator, and that it may,
when so used, be fed or actuated either by con-
tinuous or alternating currents or both.”
And on the third claim of the patent which is as
follows:
“3. An alternating current dynamo-electric ma-
chine in which the armature winding or conductor
is connected to two pairs of contact rings or equiv-
alent contact devices at points of said winding
which differ in phase by one quarter of a period,
One pair being at Or about the maximum difference
of potential when the other pair is at or about the
same potential, substantially as described.”
The single specific object of Bradley's construction
stated in said specification was to obviate “difficulties
and limitations" in prior constructions wherein the
machine was idle during a part of the time. He sug-
gests that this may be done by rectifying one of the
alternating currents by a commutator and then com-
bining the two or by connecting each with a separate
circuit. He does not show how he would use them in
the latter case to operate a motor, nor did he indicate
any combination of the alternate currents for a single
motor or show that he had any conception of their use,
if at all, otherwise than separately in single phase
motors.
A comparison of the Bradley application prior to
Tesla with the Bradley Patent issued subsequent to
Tesla shows that in the former he described a method
17
and illustrated an apparatus designed to obviate the
objections to a two-phase alternating current by com-
bining both currents in one by means of a transformer,
while from the latter he omitted this description and
method and inserted figures which, while strikingly
suggestive of the apparatus shown by Tesla, failed to
show that he conceived the Tesla idea or sought to
secure the object of Tesla's invention.
For this reason, and further because Bradley’s ap-
plication is limited in scope, and ambiguous and in-
definite ; because it fails to show that he had any con-
ception of the Tesla idea of “the utilization of the
motor for the purpose of progressively shifting the
magnetic poles of a plurality of alternating currents
by circuits which preserved the independence and
differing time relation of their phases; ” because, even
if the idea had been first conceived by Bradley, it was
not sufficiently described to disclose the principle or
method of operation ; because Tesla was the first to
reduce this principle to practice, Bradley does not an-
ticipate or limit.
Defendants' chief reliance is on the Marcel Deprez
publications of 1880–84, and rightly so for Deprez not
only disclosed the principle which Tesla utilized, but
he gave a mathematical demonstration of the rotating
field. Complainant's expert's admission on this point
is as follows:
“The article demonstrated mathematically the
fact, which is also stated in the Tesla Patents, that
the polar line of an annular magnet may be
shifted about through the entire circumference of
the ring by the action of two magnetizing forces
properly related.” -
On this point counsel for defendants say:
“The motor is a device which Deprez invented
in 1881, and to which he gave the name annular
comparer.' It is substantially the same as the
motor described in the patents in suit, and shown
in Figs. 1d to 8a, and Fig. 9.
18
“This also is admitted by complainant's expert,
Waterman (Rec., p. 491), where he says :
‘The structure consists of a ring wound with
four coils in a manner similar to the ring of Fig. 9
of Patent No. 381,968.'
“And again (Rec., p. 589):
“It (the Deprez Comparateur) takes advantage
of the theory of the parallelogram of forces to
produce a resultant magnetic field by winding coils
upon a ring in a manner Similar to the ring field
of Fig. 9 of the Tesla Patent No. 381,968.’”
The foregoing article was entitled as follows:
“ELECTRICITY. — On the electrical synchronism of
two relative motions, and its application to the con-
struction of a new electrical compass. Essay by
Mr. Marcel Deprez.”
Deprez then says:
“Having given two bodies, each animated by a
distinct motion of rotation about the same axis, to
find the means of reproducing their relative dis-
placement, at a distance and at any number what-
ever of different points at once, by obtaining an
absolute synchronism ; such is the problem that
we have set out to solve by the following process :
“Imagine a ring, Pacinotti kind, arranged be-
tween the poles of a magnet, as in the Ordinary
magneto-electric machines, with this difference
that in place of being stationary, the magnet can
revolve about the axis of the ring. Moreover,
four brushes are keyed two by two at right angles
on the collector, whose circumference they divide
into four quarters. Their distance apart remains
unchanged, but we can displace the system around
the axis of the coil. Finally, the two brushes
situated at the extremities of the same diameter
are connected to the entrance and exit of a device
that I had invented towards the end of 1881, and
to which I gave the name of annular comparer of
19
currents. It is a stationary ring of iron, which car-
ries two windings, divided up in such a manner that
there is alternation between the sections belonging
to each of the two different circuits. It follows
therefrom that taking one of the sections as a
point of departure, if we number successively
each of the following ones, all those that are
affected by a number of the same parity are con-
nected together and the whole" forms thus two
windings which end each at the extremities of two
diameters perpendicular to each other. We per-
ceive then that, if we throw into them two cur-
rents simultaneous, but of different strength,
there will tend to be formed on the circumference
of the ring four poles, whose lines of junction
would be perpendicular; but the magnetic actions,
which are exerted in their direction, are combined
according to a resultant, whose position will de-
pend on the ratio of the currents and not on their
absolute strength. A magnetized needle arranged
in the center of the device will set itself according
to this polar line, which will be thus plainly
marked.” -
Counsel for defendants further say as follows:
“Deprez then describes the generator and shows
how when the brushes are stationary and there is
no relative movement between them and the field
magnet of the generator two currents are gener-
ated, which are transmitted to the motor and set
up a stationary field, on account of which the
needle of this latter takes then a position that we
shall consider as initial.” The initial position
having been determined, Deprez says (Rec., p. 455):
‘Let us then revolve the magnet, leaving the
brushes stationary; to each angle described by
the polar line there will correspond a definite
value of the ratio of the two magnetic compo-
ments, and consequently of the two currents sent
into the comparer, a ratio that will increase from
Zero up to 1. This last value will be reached
when the line of the poles of the magnet shall be
a bisector of the angle of the line of brushes. The
two currents which traverse the comparer having
20
become equal, the needle will make an angle of
45 degrees with its initial position. To sum up,
the arc described by the needle will be the same
as that of the magnet of the ring for each eighth
of a revoltition.’
“Now, whenever the field magnet is moved as
indicated, the currents generated and transmitted
to the motor are alternating currents having a dif-
ference of phase of 90 degrees. If the movement
is through only part of a circumference, the alter-
nations are not complete cycles, but the currents
are none the less induced alternating currents, and
are conveyed to the motor to set up a progressive-
shifting magnetic field. If the field magnet makes
a complete revolution, the resultant field makes a
complete revolution, and so also does the motor
armature.
“The apparatus which constitutes Deprez's
complete electrical system is shown below, being
taken from an article describing the same, con-
tained in “Centralblatt fur Electrotechnik.’
“In this article, referring particularly to Fig.
231, shown above, Deprez says:
‘One winding has its poles at i Z, the other at
ſº m. These poles are connected with e g f h.’
“This having been done, and the apparatus put
in operation, the article says :
* A current will then flow through g / i e whose
intensity is proportional to the component a b,
and a current will flow through h m /; f, whose
intensity is proportional to the component a c.
The component of the magnetization in the com-
parer will be produced accordingly, and the posi-
tion of the needle will correspond thereto. It will
be evident from what has been said that the
needle of the comparer will always show the rel-
ative movement of the electro-magnet towards the
brushes.’” -
The only result suggested by Deprez of his solution
of his problem is the following:
21
“I have thought out, as a practical application
of this process, a new electric compass. It is
sufficient, in order to realize this device, to place
vertically the axis of the revolving ring and to
suppress the permanent magnet that served as
indicator. Its action is then replaced by that of
the earth, which is sufficient to reproduce the
phenomena that we have just analyzed. The re-
sultant of the terrestrial magnetic actions at One
point can really be decomposed into two com-
ponents, of which one is its projection on a hor-
izontal plane, and coincides with the magnetic
meridian, and the other directed according to the
vertical line. This latter, parallel to the axis of
the ring, can exercise no inductive effect on the
induced wire, while the action of the first com-
ponent is similar to that of the magnet of the pre-
ceding arrangement. From that time, the
brushes remaining stationary, every displacement,
however small it be, of the magnetic meridian will
be disclosed by an identical displacement of the
needle of the comparer, which thus fulfills the rôle
of the most sensitive compass. In order to avoid
all disturbing influence due to the proximity of
metallic pieces, we shall arrange on top of the
mast of the ship the revolving ring to which we
shall communicate its motion of rotation by such
means as we shall judge most simple. This
motion is not in any manner obliged to remain
uniform, since the angles traversed by the needle
of the comparer are a function, as has already
been said, only of the ratio of the two currents
that traverse it, a ratio entirely independent of
the speed of rotation. As to the graduation of
the apparatus, the details given above are suffi-
cient to make understood how it should be brought
about.”
All that Deprez demonstrated, therefore, was, that if
a field was made in which the field magnet varied rela-
tive to the brushes, or vice versa, the angle of varia-
tion would be indicated by the needle in another ma-
chine which would move quickly or slowly as the
brushes and magnets shifted relative to each other and
would indicate the new angle subtended between the
22
brushes and the magnet. The only useful, practical
application of this device was, to attach it to a machine
which would produce currents, and to use the earth or
a ship to indicate the shift of position by means of a
needle on top of the mast. This apparatus failed to
teach any one that alternating currents could be used
as a source of power in a motor. It was a mere indi-
cator. It did not involve the utilization of two alter-
nating currents differing in phase as a source of power
in producing a continuous magnetic field. It did not
depend upon any constant, regular, progressive cur-
reuts, and, so far as the evidence shows, it was like the
apparatus of Baily, confessedly a mere laboratory ex-
periment. That Deprez did not conceive of the Tesla
idea of utilizing regular, progressive, constant alterna-
tions of current, is conclusively shown by his own
statement in 1884 after the publication of this paper
and after the invention of the Gaulard and Gibbs alter-
nating current systems for lighting, when he published
another paper in which he criticised the system and
stated that one of the most serious objections to it was
that it was not applicable to the transmission of power
and adds: “I must further remark that alternating
currents are of no use in the transmission of power ;
they are suitable only for lighting purposes.”
In fine, the evidence shows that, as Prof. Sylvanus
Thompson says in his work on this general subject :
“Deprez's theorem bore no fruit ; it remained a geo-
metrical abstraction.”
The underlying thought disclosed and applied in
the Tesla patents is such a use of the rapidly succes-
sive opposing alternations of the alternating current
regularly and constantly recurring in such differing
phases as would not only prevent the alternations from
stopping the armature, but would become a source of
power. It was essential to the practical development
of this idea that the alternations should rise and fall
and succeed each other progressively and constantly
and should be arranged, as counsel for complainant
23
puts it, “ like the crank on a locomotive in which there
is no dead center, but one crank is always pushing
forward.” Tesla's invention, considered in its essence,
was the production of a continuously rotating or whirl-
ing field of magnetic forces for power purposes by
generating two or more displaced Or differing phases
of the alternating current, transmitting such phases,
with their independence preserved, to the motor, and
utilizing the displaced phases as such in the motor.
Baily does not describe the use, with alternating
currents, of displaced phases. He only describes the
producing of intermittently shifting poles by means of
a commutator or reverser which is just what Tesla
disclaims. Neither Siemens nor Bradley describes
the utilization of such displaced phases of alternating
currents with their independence preserved in a motor.
Deprez describes a parallelogram of forces and its
application to indicate at any given moment the angle
between two parts of a source of current. He did not
contemplate the use of alternating currents nor utilize
their continuous and constant movement nor did he
utilize said current to produce power, nor did he have
any idea of a whirling field of forces to propel a motor.
What then was the status of the art in 1887 when
Tesla filed these applications 2
Nine years had elapsed since the grant of the Sie-
mens patent which, according to counsel for defendants,
“is a full disclosure of the subject matter in issue in
Patents Nos. 381,968 and 382,280,” and its “references
* * at the hands of the skilled electrician * *
would maturally, and as a matter of course, have re-
sulted in an organization of elements constituting a
system for the electrical transmission of power and
embodying essentially the system ’’ of said patents.
Eight years had elapsed since Baily. It was four years
since Marcel Deprez's article, according to defendant's
counsel, “ described the very thing that complainant
claims is Tesla's discovery and explained the theory of
Operation,” of an apparatus which “is an operative
24
two phase alternating current generator supplying two
phase alternating currents to produce a rotating field
in a motor "similar to the Tesla motor.
Brior to Tesla's invention no alternating current
motors were in use. g
Although there had been an urgent demand for Some
practical means of utilizing alternating currents for
transmission of power none had been found.
The continuous and unparalleled development of the
electric art had for years increasingly emphasized the
want of an electric motor capable of distributing power
for long distances and had vainly called for the solu-
tion of the problem of the use of alternating currents
for this purpose; the leading electricians of the day
concurred with Deprez in his declaration after he had
devised his comparateur that alternating currents could
not be utilized in the transmission of power and that
the future belonged to continuous currents.
In these circumstances Tesla patented his invention
and thus first disclosed the method and apparatus, now
generally known as the Tesla polyphase inventions,
and introduced a new method, a new means, and a new
terminology into the art. Six months later he read his
paper before the American Institute of Electrical Engi-
neers and announced that previous efforts to utilize
alternate currents had failed; that he had brought
forth a novel system for the transmission of power, and
explained its theory and demonstrated its operation by
exhibiting a working motor; and no one of the elec-
tricians present questioned his claim or criticised his
apparatus.
The statements made by electricians at said meeting
are supported by abundant quotations from the con-
temporaneous literature of the day, and it does not
appear that the recognition of Tesla as an original in-
ventor of said system and of the means for its practical
application was ever disputed until this suit was
brought.
25
There is nothing in the record to detract from
the claims then made. Tesla did not discover
the parallelogram of forces; he did not discover
the rotary field ; but he was the first to explain
how to do practically what Baily had said could
be done by an impracticable infinity of magnets,
and others had said it could be done, but without
showing how it could be done. He harmonized
the hitherto opposing alternations, while preserving
their character and power.
Since the date of the Tesla patents in suit there has
been a revolution in the art due to the utilization of
the means therein described.
The contention that the transfer from the electric
light art to the electric power art did not involve in-
vention cannot be maintained.
Even if it be assumed that the art of electric light-
ing is in a sense analogous to that of electrical trans-
mission of power, the result was new and unexpected.
It has been already shown in what respects a reversed
current differs from an alternating current. The ques-
tion as to how far they are alike is of minor impor-
tance because it is admitted that the reversed or broken
current is not the same for the practical purposes to
which this invention is especially adapted. There-
fore, although Deprez, in one of his publications, sug-
gested that his system might be used for an
impracticable and almost infinitesimal amount of
power, the fact that these currents had never been
practically used for any such purpose and cannot, even
now, be practically used for currents of high potential,
shows that it required invention to select from an
art that particular kind of current which was
necessary for the production of the best results,
and to adapt the mechanism of an art, analogous or
non-analogous, to its practical application.
The very fact that all the earlier electricians as-
sumed or asserted that reversed and alternating cur-
rents were the equivalents of each other, was one of
26
the errors which retarded the Tesla discovery, and the
practical application of the polyphase principle.
The view most favorable to the contention of the de-
fendants upon all the evidence presented, may be fairly
stated thus:
Prior inventors had stated that electric light ma-
chines could be so reversed as to furnish power,
although it is not proved that any one had shown a
method for their use or the practical application
thereof, or had ever made such practical application.
No prior publication explained how to utilize this
alleged well known reversibility and no prior machine
applied it. , { -
To the question why, if it was so obvious that the
operation of the apparatus might be reversed and
alternating currents then used, such method was not
put in practical Operation, the only answer of defend-
ants is that “there had been up to 1885 no commercial
system of distribution of alternating currents.” But if
this is so, is it not because the foremost electrical ex-
perts throughout the world had united in the opinion
after repeated futile experiments that alternating cur-
rents were useless for the transmission of power and
that the future belonged to continuous currents 2
“The apparent simplicity of a new device often
leads an inexperienced person to think that it
would have occurred to anyone familiar with the
subject, but the decisive answer is that with dozens
and perhaps hundreds of others laboring in the
same field, it had never occurred to any one be-
fore.” Potts vs. Creager, 155 U. S., 597.
Siemens, chiefly relied on to support this contention,
does not describe any mode of using alternating cur-
rents; does refer to the use of commutators, and only
refers to the use of said apparatus as an electro-
dynamic machine “with suitable modifications” which
are nowhere described. -
The impracticability as motors of reversed currents
induced by commutators, shows that Siemens, Baily
27
and others did not discover the Tesla invention ; they
were discussing electric light machines with commu-
tators.
Tesla first stated the discovery how these alterna-
tions could be thus utilized and showed the machine
and method adapted for this purpose. He is entitled
to a patent for this discovery as were the discoverers
of the use of anthracite coal instead of bituminous
coal, or of the hot blast instead of the cold blast, in
the manufacture of iron, or of the practical applica-
tion of electricity to the telegraph or telephone. Judge
BLACTHFORD once sustained a patent for insulating
electric wires by means of gutta-percha, and said :
“The gist of the invention is the discovery of
the fact that gutta-percha is a non-conductor of
electricity, and the application of the fact to prac-
tical use. The claim is valid, even though a
metallic wire covered with gutta-percha existed
before the plaintiff's invention, if it was not known
that gutta-percha was a non-conductor of elec-
tricity, and could be used to insulate the wire.”
Colgate vs. Western Union Telegraph Co., 6 Fed.
Cases, 86.
It is not necessary to go to this extent in sustaining
these patents. The complainant may safely rest its
case on the general principles laid down in the various
decisions of the Supreme Court and extended and de-
veloped in Potts vs. Creager, supra.
But if the evidence already considered be disre-
garded and it should be assumed that alternating and
alternated currents were theoretically known equiva-
lents, even then the argument of counsel for defend-
ants does not appear to be sound. They contend that
a superior result, by reason of the substitution of one
known equivalent for another, does not constitute in-
vention. But the first substitution or application of
such theoretical equivalent to produce a new or non-
analogous or unexpected result, may involve invention.
Tesla applied the alternating current to do what the
28
alternated current had never before done, namely, to
produce a new, unexpected and practical system of
transmission of power.
A careful study of the evidence has led to the con-
clusion that Tesla made a new and brilliant discovery.
But even if this be incorrect, it is proved that by a
new combination and arrangement of known elements,
he produced a new and beneficial result never at-
tained before. -
The technical defense of non-infringement by reason
of the fact that defendants use only a motor, and that
there is no allegation or proof of conspiracy with the
owners of the plant which supplies the power, was not
pressed on the argument, and as six days were spent
in the discussion of the questions on the merits this
point will not be discussed.
If any amendment is necessary to cover these points
it should be allowed.
The contention of defendants that Tesla does not
describe an operative machine, is not satisfactorily
proved. It is proved that in fact various practical
motors have been manufactured according to his in-
vention.
The model of the particular patented construction
selected for this proof, claimed to correspond most
nearly to defendants' construction, failed to show a
capacity of self-starting, and, when once started, re-
volved in either direction ; but complainant showed on
the hearing various differences between the construc-
tion shown in the drawing of the patent and the model,
which, it was claimed, accounted for the failure.
The defendants use a three phase transmitting sys-
tem comprising a three phase generator, three trans-
formers and a three phase motor. The argument based
on the use of transformers was not pressed. The fol-
lowing diagram represents said system. *
!！! 3. LSAS 0 800 N00 - 0 VNV/M|0\/10
119||HX3 S, LN\/QN3430
, dº
~ ~ ~ ~ ~ ~ 7577，7
zaſ_ _ _ _ _ _ _—{{#ſ=
ſº º 27 ， ！
caſ- - - - - - - -
ſººſ º * *


29
Mr. Clarke, defendants' expert, describes the con-
struction and operation of said apparatus as follows:
“In said Exhibit Diagram, G is a conventional
representation of the generator, in which F is a
stationary field-magnet excited from an external
source by means of a continuous current dynamo.
A is a revolving armature and Gº Gº Gº are three
induced circuits on the armature, in which, re-
spectively, are generated three alternating cur-
rents of differing phase. Said induced circuits of
the generator are interconnected by joining to-
gether one end of each circuit, as shown on the
diagram at the center of the armature. The other
ends of said generator circuits are, respectively,
connected with three terminals T1 Tº T3, as
illustrated, diagrammatically, of course.
“C1 C* C3 represent the transformers located
some four miles from the generator, each of which
consists substantially of a laminated iron core 2,
a primary coil P and a secondary coil S. One end
of each of the primary coils of the transformers
C1 C* C8 is connected, respectively, with the gen-
erator terminals T1 Tº T8 and hence, with the corre-
sponding generator circuits Gº Gº Gº, by means
of the conductors P1 P2 P3. And the other ends
of said primary coils are simply connected with
one another as shown.
“One end of each secondary coil S of the trans-
formers C1 C3 C3 is connected, respectively, with
the secondary conductors St S* S*, which, in
turn, are connected with the terminals B1 B3 B3
of the Cushman motors M1 M2 M8. The inter-
connected field-magnet circuits of said motors are
represented by a b c and the revolving armatures
by I. The remaining three ends of the secondary
coils are connected, respectively, with three con-
ductors going to the motors. Said manner of con-
necting the secondary coils together is known in
the art as a Y connection on account of its fan-
cied resemblance to the three arms of the letter
Y, and is also known as a star connection. It will
be seen that the primary coils P of said trans-
formers, and likewise the three inducing circuits
G! Gº G8 of the generator are star connected.
30
“As will be observed from the diagram of Con-
cord system, the field-magnet circuits a b c of the
Cushman motors are not star connected, but that
all the ends of said coils are interconnected in the
manner shown in the diagram, and said manner of
connecting the field-magnet circuits of the motors
is known as a delta connection from its diagram-
matical resemblance to the Greek letter of that
Tlá,I\) 62.
“The rotation of the armature A of the gen-
erator G within its field-magnet F sets up three
alternating currents of differing phase, which flow
in the inducing circuit G", line wire P", and pri-
mary coil P of the transformer C1 ; and in the in-
ducing circuit Gº, line wire P*, and primary coil
P of the transformer C*; and in the inducing cir-
cuit G 3, line wire P8, and primary coil P of the
transformer C8, respectively. The connecting
together of the inducing circuits of the generator
and the primary coils of the transformers star
fashion, as before explained, results in such an in-
terconnection between said inducing circuits and
primary coils and their connecting line wires as to
make them all interdependent, so that the line wires
P1 P2 P4 not only serve as conductors, each for
one of the alternating currents referred to, but
also as conductors or parts of circuits for the
other two currents. And also, so that no one of
the primary coils P of the transformers C1 C* C*
receives current exclusively derived from or gen-
erated by any one of the inducing circuits of the
generator, but, in fact, receives current which is
due to more than one of the generator circuits.
In other words, in the Concord system, and as
shown in the diagram thereof, the generator does
not have independent inducing circuits connected
with corresponding and independent transformer
primary coils, by means of separate and independ-
ent conductors or line wires, and so that each pri-
mary coil derives current only from a corresponding
generator circuit, and by means of conductors
serving as parts of circuits for the current due to a
corresponding generator circuit only.
“The alternating currents which are developed
by the generator and flow through the line wires
and primary coils of the transformers connected
there with, do not flow through any circuit of the
31
motors, Or, in fact, go farther than the transform-
ers, for, as shown in the diagram, no circuits or
devices connected with the motors are connected
with any circuits or devices that are in electrical
communication with the generator.
“The currents for operating the motors are
produced as follows : The alternating currents
from the generator which flow through the pri-
mary coils of the transformers cause the magnet-
ism or lines of force in the iron cores as at a to
vary in strength and alternately in direction
whereby three electro-motive forces differing in
phase and acting in alternately opposite directions,
are set up in the three secondary coils S S S, re-
spectively, of the transformers C" C* C, 4 and
thereby three alternating currents of differing
phase are caused to flow respectively through the
three field-magnet circuits a, b c of the motors.
Said currents in the motor circuits set up rotating
magnetic poles in the field-magnet of the motor
and a rotating magnetic field whereby currents
are induced in the ciosed coils of the armature I,
and which is set in motion by the reaction be-
tween the last-mentioned currents and the mag-
netic field, as hereinbefore described.
“Three ends of the secondary coils of the
transformers being connected star fashion, and
the other three ends being connected respectively
by three conductors each to one of the three ter-
minals B1 B3 B3 of the field-magnet circuits of
the motor which are delta connected, said second-
ary coils, motor circuits and connecting wires are
interdependent, so that no one field-magnet
circuit of the motor reeeives current exclusively
from any one secondary coil, but receives current
from more than one of said coils. And no one of
the connecting wires St S* S8 serves solely as a
conductor of current for any one motor circuit,
but answers as a conductor of current for more
than one of said circuits.”
In this construction no circuit consists of two
conductors specially devoted to any one of the differ-
ing phase currents. In the patented apparatus each
One of the independent circuits is especially devoted
to a single one of the differing phase currents.
32
The serious question raised in this branch
of the case is as to the construction of the
word “independent " in the patents. Counsel
for defendants contends that “the word used in
the patent evidently refers to the physical relations
which exist and not to any result produced.” Counsel
for complainant contends that Tesla's “broad inven-
tion * * * was the production in a motor of a
progressively shifting magnetic field by means of .
* * * independent alternating currents differing in
phase, and circuits which preserve the independent char-
acter and phase relation of such currents.”
The specifications and drawings of said patents de-
scribe and show six independent transmitting wires
which are repeatedly referred to as constituting in-
dependent circuits, and the claims emphasize this in-
dependency. In defendants’ motor the coils of gen-
erator and motor are so interconnected that each line
wire not only serves as a conductor for its own phase
but also for the other currents.
Defendants’ contention is fairly stated by counsel
for complainant as follows:
“The defendants contend that currents of elec-
tricity belonging to each of the circuits are, there-
fore, at times all flowing in the same wire or
wires, and that at certain instants in the opera-
tion of the same—i.e., when each of the single
transmission wires is, for an incredibly short
period, transmitting no potential (i. e., change
from plus to minus)—two of the coils of the motor
are supplying current to the third. * * * *
They cite the admission of Mr. Waterman that
‘ analytically it is perfectly true that currents of
electricity of differing phase may be at times
regarded as simultaneously flowing in the same
circuit.”
This statement of Waterman, however, should be
read in connection with his further statement as fol-
lows :
33
“The net result of it all is that in a manner
more or less complex to follow, these electro-
motive forces so cancel out that there is in each
circuit a current differing in phase by 120 degrees
from the current in each of the others, so that in
the motor it is not possible to tell how the current
got there, or over what kind of a circuit. (i. e.,
whether over a three-wire or a six-wire circuit.)”
Counsel for defendants argue :
“ that the term independent as used by Tesla
means such separation as is consistent with having
the complete circuits traversed by the same cur-
rents—currents which at any and every point are
of the same quantity, intensity and phase, so that,
as Mr. Clarke puts it, each motor circuit receives
its current from a corresponding generator circuit
and from no other. It cannot refer to circuits
which are interdependent in such sense that two
of the circuits are at times strictly in series with
one another and in multiple with the third, and
so are not ‘independent ' in any sense. The
whole system is an interdependent and not an
independent system.”
The following significant statement, however, is
found near the end of the specification of the first
patent No. 381,968 :
“By ‘independent ' I do not mean to imply
that the circuits are necessarily isolated from one
another, for in some instances there might be
electrical connections between them to regulate or
modify the action of the motor without necessarily
producing a new or different action.”
The claims, therefore, confessedly cannot be read as
requiring isolation of the circuits but at most only such
independence as is necessary for the purpose of pro-
ducing a rotary field ; that is, the connections must be
such as not to interfere with the independency of the
circuits which operate to shift the poles.
34
The only practical result from defendants’ use of
three conductors instead of six is an improvement “to
regulate the action of the motor,” which result was an-
ticipated by Tesla as above, and it is proved that it
was known in the prior art that One of these arrange-
ments was a substitute for the other.
Inasmuch as the defendants have not invented any
new idea, but have adopted an old contrivance which
performs the same result in substantially the
same way by a formal, and unsubstantial change
in means, and by circuits which while in some
sense interdependent are operatively independent,
and which preserve and utilize the vital element inde-
pendence of phase, these circuits must be held to be
the equivalents of the independent circuits of the
patent, the word independent being interpreted to
mean operatively independent, so as to embrace the
true spirit and essence of the Tesla invention.
This conclusion is supported by a great number of
illustrations of similar uses of such independent con-
ductors in the general field of the arts. As the expert
for complainant has pointed out, in railroads, cash
carriers, electric telegraphs, the tracks, the earth or a
single wire, will serve as common but independently
acting conductors.
It does not seem necessary to further discuss this
contention based on a technical verbal distinction.
Defendants' three wires are operatively independent;
they are actually independent while in action ; they
are independent enough to do the required work.
This case involves a diversity of complicated ques-
tions of the scope and effect of certain language, of the
prior art, and of the operation of electrical apparatus.
All these questions have been exhaustively discussed
with singular ability and learning by the able counsel
herein.
If the contentions of defendants as to the scope
of the patents in suit are proved the question of
infringement of the patented independent circuits
35
is not free from difficulty. If independence means
isolation the patents are valueless. But if com-
plainant's contention is correct, and if Tesla is
entitled now to the broad claim which no one
denied when he announced it to the American Insti-
tute of Electrical Engineers as his “novel system of
electrical distribution and transmission of power by
means of alternate currents * * which will at once
establish the superior adaptability of these currents
to the transmission of power and will show that many
results heretofore unattainable can be reached by their
use,” then there can be no question that defendants
have infringed. The foregoing language has been
again quoted in Order to emphasize how consistently
at the end of ten years after a review of all possible
questions Tesla stands upon his original statement of
his invention.
Infringement of the first claim of Patent No. 381,968,
necessarily implies infringement of the method Patent
No. 382,280. The finding that the circuits of the
defendants are independent, in the sense of the Tesla
Patents, is decisive against the defendants as to the
infringement of the first and second claims of Patent
No. 382,279; and the field magnet of defendants’
motor, while differing in some respects from that of
the third claim of No. 381,968, is annular or ring-
shaped within the meaning of said claim and in-
fringes it.
At the close of the defendants’ brief is printed the
“Decision of the Imperial Court of Germany on Tesla
Patent.” The only reference thereto in said brief is
in the statement that in said suit “brought to obtain a
cancellation of Tesla's patents, that a German Patent to
one Haselwander (including the rotary current system
employed by defendants) was partially annulled be-
cause of the publication of this American Patent to
Bradley’’ and in the following statement:
“It should also be mentioned that the Imperial
Court held that the system employed by defend-
36
ants does not infringe the German Tesla Patent
corresponding to the patents involved in this suit—
that Court holding with us that our system is a
dependent system and not having the independent
circuits of the Tesla Patents and inventions.”
It is somewhat difficult to determine, from said
opinion, the scope of the issues involved ; but it ap-
pears that some German firm had applied to have two
Tesla German Patents canceled on the ground that
they had not been worked, but “ have only been used
to the disturbance of the electro-technical industry in
Germany.” Tesla, as defendant, admitted that he had
not actually worked his invention, but had fulfilled his
duty by a license to a firm which had pledged itself to
work the patents, and furthermore that certain alleged
infringers, by using a rotary current three wire system,
which seems to have been substantially like that of
defendants herein, had “worked ” his invention, and
thereby saved him from the statutory penalty. The
Court held as follows :
“‘By independent is not meant to be expressed
that the circuits are necessarily insulated from each
other, since in single cases electrical connections
can exist between them in order to regulate the
working of the motor, without necessarily pro-
ducing a new or another manner of working,' then
also nothing is gained for him thereby. Entirely
disregarding the fact that after the striking out of
the sentence, which clearly occurred in order to
avoid unclearness, the independence of the circuits
is only so to be understood as is shown from the
drawing and description—namely, as conditioned
by a completely independent outgoing and return
conductor—there would also never be able to be
read into the stricken-out sentence that therein the
linking of the circuits in the meaning of the
rotary-current system had been thought of, for
this linking removes the independence of the cir-
cuits, while the erased sentence will only admit
such connections as permit the independence of
the circuits to exist.”
37
But this statement is a mere obiter dictum. The
explanatory language relied upon by complainant
in the patent here in suit has been stricken
out of said German Patent. The decis-
ion was upon two patents not shown to
be the same as those herein in suit; the applications
therefor were not filed until May 1888; and not until
after the Tesla invention had been described in a
printed publication. But even this decision is to
be construed as insisting upon a construction unfavor-
able to that here contended for by complainant, it
should only be considered in connection with the fore-
going facts. Here, the question of independence is
directly presented, on a different issue, in view of a
different state of the art, upon a different patent, from
which the explanation of the word “independent’’ has
not been erased. No sufficient reason has been shown
'why the conclusion of the German Court should be
followed in determining the question of infringement
herein. -
The search lights shed by defendants' exhibits upon
the history of this art only serve to illumine the in-
ventive conception of Tesla. The Arago rotation
taught the school-boy fifty years ago to make a play-
thing which embodied the principle that a “rotating
field could be used to rotate an armature.” Baily
dreamed of the application of the Arago theory by
means of a confessedly impossible construction. De-
prez worked out a problem which involved the develop-
ment of the general theory in providing an indicator
for a ship's compass. Siemens failed to disclose the
“suitable modifications '' whereby his electric light
machine might be transferred into a motor, and Brad-
ley is almost equally vague. Eminent electricians
united in the view that by reason of reversals of di-
rection and rapidity of alternations an alternating cur-
rent motor was impracticable, and the future belonged
to the commutated continuous current.
38
It remained to the genius of Tesla to capture the
unruly, unrestrained and hitherto opposing elements
in the field of nature and art and to harness them to
draw the machines of man. It was he who first
showed how to transform the toy of Arago into an
engine of power ; the “laboratory experiment ’’ of
Baily into a practically successful motor; the indicator
into a driver; he first conceived the idea that the very
impediments of reversal in direction, the contradic-
tions of alternations might be transformed into power
producing rotation, a whirling field of force.
What others looked upon as only invincible
barriers, impassable currents and contradictory forces,
he seized, and by harmonizing their directions utilized
in practical motors in distant cities the power of
Niagara. {
A decree may be entered for an injunction and an
accounting as to all the claims in suit. .
Frederic /ſ. Betts,
JCerr, Page dé Cooper,
(Leonard E. Curtis, on the Brief, )
For Complainant.
Mitchell, Bartlett dº Brownell,
For Defendants.
[16393]
2. 23 511,559.
+ A. c. MoroRs.—c.
*** * 511,560.
* r; No. 1.
V\; 5.3 -
Opinion—Circuit Court.
Tesla Split-Phase Motor.
(Patents Nos. 51 1,559 and 51 1,560.)
*-*-*-*-** -º-º-º-º- -- ~~~~~----- **--º-º-º-º:
Full text of Opinion of Judge Thompson in the case of
Westinghouse Electric and Manufacturing Company,
Complainant, vs. The Dayton Fan and Motor
Company, Defendant, filed in the U. S. .
Circuit Court, Southern District of
Ohio, February 6, 1901.
*-*- **-*- *~~ *-*-*-** ~ * ~ * *-* - ~ *, * ~ * -s. ... < *, * ~ * ...
C. G. Burgoyne, Walker and Centre Street, N. Y.
Ulníteo $5tates Circuit Court
SOUTHERN DISTRICT OF OHIO.
WESTERN DIVISION.
\
WESTINGHOUSE ELECTRIC & MANU-
FACTURING COMPANY.,
Complainant,
WS. & NO. 5289.
In Equity.
THE DAYTON FAN AND MOTOR
COMPANY.,
Defendant.
KERR, PAGE & COOPER, for Complainant.
ALBERT H. WALKER, for Defendant.
This suit is brought to enjoin the defendant from
further infringing Letters Patent No. 511,559 and No.
511,560, relating to the transmission of electrical
power, and to recover damages for past infringements.
The defendant denies the infringement charged and
claims that the letters patent are void for want of in-
vention, and because they are for the same invention
as Letters Patent No. 416,193, granted to the same in-
ventor. t t s
At the hearing, the complainant asked leave to amend
the bill, by alleging that the defendant has infringed
the letters patent by manufacture and Sale as well as by
use. The prayer of the bill, the denials of the answer,
and the evidence, including the admissions of the de-
fendant, cover the case sought to be made by the
amendment, and no prejudice, therefore, to the defend-
2
ant's rights will be caused, by its allowance, and, for
that reason and because the omission of the amenda-
tory matter, from the bill, was inadvertent, the leave
will be granted. - - -
The infringement complained of relates to claims
one (1) and two (2) of Letters Patent No. 511,559, and
to claims one (1) two (2) and six (6) of Letters Patent
No. 511,560. Claims one (1) and two (2) of Letters
Patent No. 511,559, read as follows:
“1. The method of operating motors having in-
dependent energizing circuits, as herein set forth,
which consists in passing alternating currents
through both of the said circuits and retarding the
phase of the current in one circuit to a greater or
less extent than in the other. -
2. The method of Operating motors having in-
dependent energizing circuits, as herein set forth,
which consists in directing an alternating current
from a single source through both circuits of the
motor and varying or modifying the relative re-
sistance or self-induction of the motor circuits and
thereby producing in the currents differences of
phase, as set forth.” -
Claims one (1), two (2) and six (6) of Letters Patent
No. 511,560 read as follows :
“1. The combination with a source of alternat-
ing currents, and a circuit from the same, of a
motor having independent energizing circuits con-
nected with the said circuit, and means for rend-
ering the magnetic effects due to said energizing
circuits of different phase and an armature within
the influence of said energizing circuits.
2. The combination with a source of alternating
currents and a circuit from the same, of a motor
having independent emergizing circuits connected
in derivation or multiple arc with the said circuit,
the motor or energizing circuits being of different
electrical character whereby the alternating cur-
rents therein will have a difference of phase, as
Set forth.
3
“6. In an alternating current motor, the combin-
ation with the field magnets or cores and inde-
pendent energizing circuits of different active re-
sistence and adapted to be connected with the line
Or transmission circuit, of an armature wound
with closed energizing coils or conductors, as set
forth.” .
1. It is urged as a defense, that the inventions of the
patents in suit are covered by a prior patent issued to
the same inventor, to-wit : Letter’s Patent, No.
416,193. The applications for the patents in suit were
filed December 8th, 1888, and the patents were issued
December 26th, 1893. The application for the prior
patent was filed May 20th, 1889, and the patent was
issued December 3rd, 1889. The patents in suit are
generic and representative of a class which includes
the prior patent which is specific and tributary. The
inventions of the three patents were conceived by the
same inventor, Nikola Tesla. In the application,
upon which the prior patent was issued, he abandoned
nothing claimed in the prior and pending applications,
upon which the patents in suit were issued. In the
specifications of the prior patent he says, referring to
the class to which the motor belongs :
“In prior patents and applications I have shown
and described various forms of motors of this kind.
Among them are motors in which both energizing-
circuits are electrically alike—that is to say, both
have the same or approximately the same electri-
cal resistence and self-induction—in the operation
of which the alternating currents used are primar-
ily of different phase. In others the difference of
phase is artificially produced—as, for instance, in
cases where the motor-circuits are of different re-
sistance and self-induction, so that the same
current divided between them will be retarded in
one to a greater extent than in the other, and the
requisite phase difference secured in this way.
To this latter class generally my present invention
relates.”
4
And in the concluding paragraph of the specifica-
tions he says:
“I do not claim herein, broadly, the method and
means of securing rotation by artificially produc-
ing a greater lag of the current in One motor-cir-
cuit than in the other, nor the use of poles or
cores of different magnetic susceptibility, as
these are features which I have specially claimed
in other applications filed by me.”
He claims only the specific form of construction and
not the method or process by which all motors of its
class are operated. It is a means or device for prac-
ticing the methods of the patents in suit, which may
be the subject of a separate patent. The means or
devices claimed or described in the patents in suit will
not infringe it, and the methods of the patents in suit
may be practiced by other and different means. It is
in the nature of an improvement of the means or de-
vices claimed in the patents in suit. The status of the
patents in suit is defined by the ruling of the court in
The Barb Wire Patent case, 143 U. S. 281, where the
Court says: ^.
“In legal effect this was a prior patent, since
the date of the application and not the date of the
patent controls in determining the legal effect to
be given to two patents issued at different dates to
the same inventor and the Order in which they are
to be considered.”
The applications for the three patents were pending
at the same time. None of them were waived or
abandoned and after due consideration they were al-
lowed by the Commissioner of Patents, and patents
were issued upon them, but the patents in suit were
issued last, although the applications thereof were filed
first. Under the circumstances priority of date can have
no prejudicial significance among the three patents.
As is well said by Judge TAFT, in delivering the opinion
5
of the Court in Thomson-Houston Electric Co. vs.
Ohio Brass Co., 80 F. R., 724:
“Since the case of O’Reilly vs. Morse, 15 How.,
61, 121, 123, it has been well settled that a patent
may issue for an improvement on an earlier inven-
tion either to the Original inventor or to a stranger.
Of course, no one can use the improvement with-
out right or license to use fundamental invention ;
but, on the other hand, the right to use the original
invention does not confer the right to use the im-
provement without license from the tributary in-
ventor. We do not understand this general doctrine
to be denied, but it is said that if, by some chance,
the application for the fundamental patent is de-
layed in its course through the Patent Office until a
patent on the avowed improvement has issued, then
the patent on the fundamental invention is void.
In cases where the delay in the issuing of the patent
for the main invention cannot be charged to the
laches or fraud of the patentee, such a rule would
be a hard one ; and, unless it is required by the
express words of the statute, or by the express
holding of the Supreme Court, we should be in-
clined, if possible, to avoid declaring it to exist.”
And on page 728, he further says :
“ Hence, it follows from the propositions above
quoted from the opinion in the case of Miller vs.
Manufacturing Co. that a patent for a generic in-
vention is not avoided by the fact that a prior
patent has been issued for a distinct improvement
on that invention, provided always that the lan-
guage of the application for the first patent and
the circumstances of filing it are not such as to
dedicate the generic invention to the public.”
The defense of double patenting, therefore, cannot
be sustained. -
2. The Tesla system of electrical power transmission
is founded on the use of the alternating current, as dis-
tinguished from the direct or continuous current. The
alternating current is regarded as preferable for long
6
distance transmission. The properties of the
alternating current and the principal elements of the
Tesla inventions were known, in a general way, to men
learned in the science of electricity, prior to the issue
of the Tesla Patents of May 1, 1888, but he was the
first to successfully apply them to power transmission.
In the specifications of Letters Patent No. 382,280,
Tesla himself fairly states the conditions fettering the
transmission of electrical power prior to May 1, 1888,
and the method adopted by him for bettering these
conditions. He says:
“I am aware that it is not new to produce the
rotations of a motor by intermittently shifting the
poles of one of its elements. This has been done
by passing through independent energizing-coils
on one of the elements the current from a battery
or other source of direct or continuous currents,
reversing such current by suitable mechanical ap-
pliances, so that it is directed through the coils in
alternately opposite directions. In such cases,
however, the potential of the energizing currents
remains the same, their direction only being
changed. According to my invention, however, I
employ true alternating currents; and my in-
vention consists in the discovery of the mode or
method of utilizing such currents.
“The difference between the two plans and the
advantages of mine are obvious. By producing
an alternating current, each impulse of which in-
volves a rise and fall of potential, I reproduce in
the motor the exact conditions of the generator,
and by such currents and the consequent pro-
duction of resultant poles the progression of
the poles will be continuous and not intermittent.
In addition to this, the practical difficulty of in-
terrupting or reversing a current of any con-
siderable strength is such that none of the devices
at present could be made to economically or prac-
tically effect the transmission of power by re-
versing in the manner described a continuous or
direct current. In so far, then, as the plan of
acting upon one element of the motor is con-
cerned, my invention involves the use of an
alternating as distinguished from a reversed cur-
7
rent, or a current which, while continuous or
direct, is shifted from coil to coil by any form of
commutator, reverser or interrupter.”
This step in advance of old methods is conceded to
be one involving a high degree of invention. But for
many of the purposes of power transmission, the new
or polyphase system was found objectionable on the
score of expense, and then the next step was taken, by
Tesla, which resulted in the invention of a method of
operating motors which combined the advantages of
the polyphase system with the inexpensiveness of the
single-phase method. The new method employed but
a single transmission circuit from the generator, but
the motor circuits were made to serve all the purposes
of the double circuits of the Original patents. The dis-
tribution of the current, from the transmission circuit
to the motor circuits is described by Tesla in the
specifications of patent No. 511,559, as follows:–
“The distribution of current between the two
motor circuits may be affected by induction or by
derivation. In other words, I may pass the alter-
nating current from the Source through one ener-
gizing circuit and induce by such current a second
current in the other energizing circuit. Or, on the
other hand, I may connect up the two energizing
circuits of the motor in derivation or multiple arc
with the main circuit from the source.”
Both methods are covered broadly by claim I of
patent No. 511,559 and the way by derivation by claim
2 of that patent. Patent No. 511,560 is for apparatus
for carrying out the way by derivation. In order to
produce in the motor a rotary field sufficiently effect-
ive to give the motor self starting capacity, it is
necessary to create the requisite difference of plase be-
tween the motor circuits, which, by the method of the
original patents, is provided by the generator, and this
is done, under the teachings of the patent in suit, by
“ retarding the phases of the current in one circuit
S
to a greater or less extent than in the other ”, by
varying the resistance, dead or active, in One or both
of the circuits, through the introduction of resistance
or self-induction coils, or by the construction of the
motor, with, for example, one set of energizing coils
wound with finer wire than the other, and in other
ways pointed out in the specifications of Patent No.
511,560.
Now it is said that, in view of the prior art, includ-
ing the Tesla patents of May 1, 1888, there was no in-
vention in this last step, but merely the exercise of the
skill of the electrician or electrical engineer, because
the taking of the first step, by Tesla, rendered the
second step perfectly obvious to any one skilled in the
art. But notwithstanding the state of the prior art
and the “laboratory knowledge " of those skilled in it,
no one but Tesla took either of these steps which have
added so much to the practical and useful knowledge
of the electrical world. In the language of the expert
Main, -
“ to conceive of the idea of creating a rotary field
at the motor end of the circuit, not by sending
separate impulses from virtually separate machines,
but by dividing the single impulse from a single
machine, and then causing these divisions of im-
pulse to re-act against each other in such a man-
ner as to produce rotation, appears to me to have
been an idea of a highly inventive nature.”
The retardation of phase by artificial means, and its
conversion from an element of disadvantage to one of
usefulness, in the transmission of electrical power, must
be regarded as evidence of invention. But as has been
so often said, it is difficult to determine where skill
ends and invention begins, and in such cases, the
result must be considered in determining the fact.
Here a new and useful result was accomplished,
which, in the light of the evidence, cannot be said
to have been perfectly obvious, for, although,
9
the minds of inventors and those interested in the art
had been specially directed to the use of the alternat-
ing current, as a means for the transmission of power,
by the patents of May 1, 1888, yet neither the defend-
ant nor any one else took this step in the progress of
the art, until the way was pointed out by Tesla. Con-
sidering the result, whatever doubts there may be as
to the fact of invention, should be resolved in favor of
the patents.
3. It is contended by the defendant that patent No.
511,559, being a process patent, is susceptible of in-
fringement only by use, and that there is no evidence
of use by the defendant. But, as shown by the report
of the examiner, the defendant, at the taking of the
testimony on the 6" day of June, 1899, for the purposes
of evidence in the suit, through its counsel, admitted
“ that ‘Complainant's Exhibit Defendant's Motor'
was made and sold by the defendant, within the
last few months ; and that the defendant did, in
the Southern District of Ohio, and elsewhere in
the United States, sell many such motors before
and also after the filing of the bill of complaint in
this case ; and both before and after filing the bill
of complaint in this case, and within six years be-
fore the filing of the bill of complaint, the defend-
ant did manufacture many such motors in its
factory in Dayton, Ohio, for sale and use through-
out the United States.”
There is no denial of the allegations of the bill
charging the defendant with knowledge of both of the
letters patent in suit, and the motor in evidence
embodies the inventions claimed and described in
Letters Patent No. 511,559, and the admissions,
therefore, of the defendant, in the absence of evidence
to the contrary, are sufficient proof not only that
such motors were made and sold by the defendant,
but that they were used by the purchasers thereof, and
that the defendant intentionally contributed to the use
in disregard of the rights of the complainant.
10
The defendant further contends that claims 1 and 2,
respectively, of Letters Patent No. 511,560° call for a
combination of a dynamo,.and a circuit from the same,
and a motor,” and that there is no evidence that the
defendant ever made, used, or sold either of the first
two elements of the combination, and therefore no evi-
dence that the defendant ever made, used or sold the
subject of these claims, and that the charge of infringe-
ment, based on these claims, must necessarily fail.
But the admissions of the defendant show that the
defendant did make and sell for use the motor of the
combination, and, it may fairly be inferred, for use in
the combination. There is no evidence to show that
it could have any commercial value for any other pur-
pose, and in view of the admissions of the defendant
and the absence of any showing whatever to the con-
trary, it must be regarded as an established fact that
it was sold for the purposes of this combination,
bringing it within the ruling of Thomson-Houston
Electric Company vs. Ohio Brass Company, 80 F. R.,
712, where it is held that
“One who makes and sells one element of a
patented combination, with the intention and for
the purpose of bring about its use in such a com-
bination, is guilty of contributory infringement,
and is casually liable with him who in fact or-
ganizes the complete combination.”
Nor is the contention of the defendant that the evi-
dence fails to show that its motor contained “inde-
dependent energizing-circuits of different active resist-
ances" well founded, and upon the evidence and under
well-established rules of law, the armature of the defend-
ant's motor must be regarded as the equivalent of the
one described in claim 6 of patent No. 511,560, per-
forming its functions, and in substantially the same
way, and it follows that the charge of infringement
made in the bill must be sustained.
There will be a decree, therefore, for the complainant
in accordance with the prayer of the bill. *
2
A. C. MoTofts.-c.
401,520.
No. 1.
Opinion—Circuit Court.
';
Tesla Split-Phase Motor.
(Patent No. 401,520.)
Full text of Opinion of Judge Thompson in the case of
Westinghouse Electric and Manufacturing Company,
& ºmº Complainant, vs. The Dayton Fan and Motor
Company, Defendant, filed in the U. S.
Circuit Court, Southern District
of Ohio, February 6, 1901.
C. G. BURGovNE, Walker and Centre Street, N. Y.
united 5tates Circuit Court
SOUTHERN DISTRICT OF OHIO.
WESTERN DIVISION.
WESTINGHOUSE ELECTRIC & MANU-
FACTURING COMPANY.,
Complainant,
WS , NO. 5288.
$J e / In Equity.
THE DAYTON FAN AND MOTOR
COMPANY.,
Defendant.
KERR, PAGE & COOPER, for Complainant.
ALBERT H. WALKER, for Defendant.
This suit is brought to enjoin the defendant from
further infringing Letters Patent No. 401,520, for a
method of Operating electro-magnetic motors, and to
recover damages, etc., for past infringements.
The defendant denies the infringement charged,
and claims that the letters patent are void for want of
invention.
At the hearing, the complainant asked leave to
amend the bill, by alleging that the defendant has
infringed the letters patent, by manufacture, and sale
as well as by use. The prayer of the bill, the denials
of the answer, and the evidence, including the admis-
sions of the defendant, cover the case sought to be
made by the amendment, and no prejudice, therefore,
to the defendant's rights will be caused by its
allowance, and, for that reason and because the
2
Omission of the amendatory matter from the bill was
inadvertent, the leave will be granted.
The infringement complained of relates only to
claim 1 of the patent, which is as follows:
“The method of operating an alternating-cur-
rent motor herein described, by first progressively
shifting or rotating its poles or points of greatest
attraction and then, when the motor has attained
a given speed, alternating the said poles as de-
scribed.”
It is said that the method described in this claim
consists of the combination of two modes of operation,
both of which are old and well known, and that in view
of the prior art their combination in one motor did not
require invention, but simply the exercise of ordinary
skill, for the combination, as a means of attaining the
advantages sought, was so obvious that it would occur
to the mind of any one skilled in the art, and would
not require the exercise of the processes of invention
to discover it. -
The state of the prior art, so far as it concerns the
controversy here, and the character of the invention, is
sufficiently set forth in the specifications of the patent
as follows : -
“As is well known, certain forms of alternating-
current machines have the property, when con-
nected in circuit with an alternating-current gener-
ator, of running as a motor in synchronism there-
with ; but, while the alternating current will run
the motor after it has attained a rate of speed syn-
chronous with that of the generator, it will not
start it. Hence, in all instances heretofore where
these “synchronising-motors ’’ as they are termed,
have been run some means have been adopted to
bring the motors up to synchronism with the gen-
erator, or approximately so, before the alternating
current of the generator is applied to drive them.
In some instances mechanical appliances have
been utilized for this purpose. In others, special
and complicated forms of motors have been con-
Q
el)
structed. I have discovered a much more simple
method or plan of Operating synchronising-motors,
which requires practically no other apparatus than
the motor itself. In other words, by a certain
change in the circuit-connections of the motor I
convert it at will from a double-circuit motor, or
such as I have described in prior patents and ap-
plications, and which will start under the action of
an alternating current, into a synchronizing motor,
or one which will be run by the generator only
when it has reached a certain speed of rotation
synchronous with that of the generator.”
The invention does not lie in the mere mechanical
changes in the circuit-connections of the motor, but, in
connection there with, must be found in the conception
of the idea of making these changes to secure the ad-
ſantages sought. It is contended that all Tesla had to
do “after the issuance of his patent No. 382,279, in order
to make his motor of that patent operate on the
method of claim 1 of the patent in suit” was to pull
one of its wires out of its binding post while the motor
was running, and that this was such a simple thing to
do that to attribute the doing of it to the creative
faculty of invention would be absurd. But this con-
tention as counsel for the complainant well say, ignores
the real problem.
“Namely, how to endow a single-phase motor .
with a capacity which it did not before possess,
and the absence of which practically destroyed its
usefulness. From that point of view the two-
phase motor was not considered at all. It was a
perfect machine of wide capacities, and there was
no reason for turning it into a machine of limited
capabilities. But the idea of so reorganizing the
single-phase motor as to give it the elements of
a two-phase motor, and at the same time preserve
within it the elements of a single-phase motor,
was constructive and beneficial, and a very dif-
ferent thing from the mutilation of a two-phase
motor resulting in the production of a defective
and uncommercial form of single-phase machine.
The latter step would have been retrogressive and
4
would not have led to the utilization of a single-
phase motor.”
Prior to the issuance of the letters patent in suit, the
single-phase alternating current motor, which required
but One circuit, was highly efficient when running at
speed, and, for many purposes, would have been prefer-
able but for the lack of the capacity of self starting. This
defect greatly impaired its value commercially and of-
fered a strong inducement to inventors and those skilled
in the art to supply the lacking capacity. But Thot-
withstanding the state of the art and all its teach-
ings and the obviousness of the remedy, now suggested,
it remained for Tesla to solve the problem. Thomson
did not do it, although he had the question, of “suit-
able devices for bringing the armature * up to “full
speed, or a speed almost synchronous with the rate of
alternations supplied '', before him, when considering
the invention of his patent No. 407,844, the application
for which was filed three months before the filing of
the application for the patent in suit. Notwithstanding
its suggested obviousness, there is no evidence that the
method of claim 1 of the patent in suit occurred to any
one other than Tesla until after the patent was applied
for. But in the light of the teachings of the patent it has
since occurred to the defendant, and is embodied in the
device offered in evidence as “Complainant's Exhibit,
Defendant's Motor, B. B. Exr.” *
In view of the prior art, the admitted and the un-
disputed facts of the case, claim 1 of the patent should
be sustained and the defendant should answer for the
infringement thereof.
There will be a decree accordingly.
|17380]
469,809.
No. 1.
Opinion—Circuit Court.
Self-Regulating Transformer Case.
(Stanley Patent No. 469,809).
Full text of Judge Coxe's Opinion in the case of
Westinghouse Electric and Manufacturing Com-
*
pany, Complainant, vs. Saranac Lake Electric
Light Company, Defendant, filed in the
U. S. Circuit Court, Northern District
of New York, April 26, 1901.
“It still remained to discover a way to prevent the varying candle power of the lamps,
ou a given transformer, when a part of the lamps were turned off or on.”
:: >{: x: × × xie x: st ::: >{: xi. :: 2}:
“What Stanley did was an exceedingly valuable addition to the art. He remedied a
serious defect; he secured, without unnecessary waste of current, constancy of secondary
pressure as lamps were turned on or off; he struck out into a new path and brought back the
prize which, if he had continued upon the old paths, he never would have found. Such a
discovery cannot be attributed to the skill of the calling.”
C. G. Burgoyne, Walker and Centre Streets, New York.
uniteb $5tates Circuit Court,
NORTHERN DISTRICT OF NEW YORK.
WESTINGHOUSE ELECTRIC AND
MANUFACTURING COMPANY.,
WS.
SARANAC LAKE ELECTRIC LIGHT
COMPANY.
FINAL HEARING.. IN EQUITY.
Frederick P. Fish and J. Edgar Bull for complainant.
M. B. Philipp, C. E. Mitchell and H. B. Brownell for
defendant. -
COXE, J.:
This is an equity suit charging the defendant with
infringement of two patents owned by the complain-
aut. The first of these is reissued letters patent No.
11,031, granted September 24, 1889, to Rankin Ken-
nedy, of Glasgow, Scotland, for an improvement in the
method of distributing and regulating alternating elec-
tric currents by secondary generators. The second
patent is No. 469,809, granted March 1, 1892, to William
Stanley, of Great Barrington, Mass., for an improve-
ment in systems of electrical distribution.
THE RENNEDY PATENT.
The view which the court feels compelled to take of
this patent renders a minute discussion and analysis
2
unneccessary. It can be sufficiently understood from
the claim, which is as follows :
“The method of distributing and regulating
alternating electric currents by secondary gener-
ators, which consists in producing in two or more
derived circuits constituting the primaries of two
or more secondary generators a counter electro-
motive force which, when any secondary is open,
is practically equal to the applied electro-motive
force in its primary, and in controlling said electro-
motive force by the current flowing in the corre-
sponding secondary when the secondary is closed
in such manner that the current in the primary shall
vary with, and be approximately inversely propor-
tional to, the resistance in the secondary, substan-
tially as described.”
The application for the original patent was filed
November 13, 1888. The original patent was dated
July 16, 1889. The application for the reissue was filed
August 28, 1889. It is conceded that the invention is
anticipated unless the complainant has succeeded in
showing that it was made in June, 1883—over five
years prior to the time when Kennedy swore to the
application and filed it in the United States Patent
Office.
The patent being anticipated, if the date of the ap-
plication be taken as the date of invention, the burden
rests upon the complainant to satisfy the Court that
the invention was made at an earlier date. There is
no presumption in favor of such a patent. The burden
which rested upon the defendant in the first instance
has been transferred to the complainant and it must
furnish the court with convincing proof that the an-
ticipation has been anticipated.
In Webster Zoom Co. v. Higgins (4 Ban. and Ard.
88), the Court says, at page 98:
“The burden of proof rests upon the defendants
to show, beyond a fair doubt, the prior knowledge
and use set up ; but, where they have sustained
that burden by showing such knowledge and use
prior to the patent, the burden of showing the
3
still prior invention claimed, by at least a fair
balance of proof, must rest upon the plaintiff.”
Plow Works v. Starling, 140 U. S. 184, 198;
Thayer v. Hart, 20 Fed. Rep. 695.
The complainant assumes this burden and has
attempted to discharge it by the introduction of three
articles written by Kennedy and published in the
Electrical Review of London in June, 1883, in which
he describes some “interesting experiments.” It is in
the last sentence of the first of these articles that the
invention of 1888 is said to be found, as follows:
“In parallel arc, however, the secondary gen-
erator is a beautiful self governing system of dis-
tribution ; but what about the size of conductors
for such a system 2 Prodigious !”
This is the only time secondary generators in parallel
arc are mentioned in any of the articles.
It seems to be conceded that the following are essen-
tial to the successful working of the method of the
patent. º
FIRST : A constant potential generator.
SECOND : Closed magnetic circuit transformers.
THIRD : Lamps in parallel.
FourTH : Plurality of transformers.
It is also conceded that none of these is mentioned
in any of the articles, but it is said that they are
inferred and that a skilled electrician would be able to
construct the full grown system from the emaciated
skeleton thus exhibited. The Court is compelled to
think otherwise.
The impression produced upon the lay mind, at
least, is that Kennedy had no clear conception of a
practical system in 1883 and thought the obstacles so
prodigious that he did not attempt to surmount them.
4
If he had answered his question with the exclamation
“impossible,” it is not probable that it would be now
asserted that he had solved the problem. And yet
though his answer did not go to the extent of saying
that the thing could not be done it was one of discour-
agement and surrender. He offered no solution and
intimated that a practical solution could not be found.
What he did can hardly be called an abandoned experi-
ment for there was no experiment to abandon; it was
Only a tentative suggestion, an ingenious theory, a
clever idea which is altogether too nebulous a founda-
tion upon which to rest a patent which seeks to levy
an immense tribute from the art and which was not
thought of until five years afterwards. If the articles
had been written by Some One else and had been set
up as an anticipation by the defendant it is easy to
imagine with what contempt their indeterminate, in-
complete and infeasible statements would be brushed
aside by the complaint.
In contemplation of law an invention does not exist
until the inventor's theories and ideas have been re-
duced to practical form. It cannot be predicated on
mere speculation and conjecture ; it must be based
upon something ascertained, something definite and
certain.
Jºobinson on Patents, Sec. 125, 127, 132.
“The mere existence of an intellectual notion
that a certain thing could be done, and, if done,
might be of practical utility, does not furnish a
basis for a patent, or estop others from developing
practically the same idea.”
Standard C. Co. v. Peters (. Co., 77 Fed. Rep.
630, 645.
But suppose that the articles contain the full state-
ment for which the complainant contends, how then
stands the case ?
In 1883 the inventor published to the world a full
description of his invention. This act of itself seems
inconsistent with the theory that he intended to secure
a patent. If his purpose was to give the public the
5
benefit of his experiments his course was entirely
natural, but it was most extraordinary if he intended
to secure a monopoly. On the 19th of November,
1886, Kennedy published a letter in the Electrical
Review in which he takes issue with Zipernowski and
Deri that they were the first to make “the simple
connection of secondary generators in parallel arc.”
He maintains that he was the first to do this and
says:
“I then thought of and tried parallel arc con-
nection and perfectly succeeded in obtaining self-
regulation. There certainly is not much visionary
about that ; the visions of a monopoly I am afraid
are all on the other side, and my experiments and
published results are likely to somewhat mar the
beauty of monopoly visions. * * * * * * * I do
not know anything about ‘rational methods of
connection of transformers,” I know only two
methods of connecting to the mains—series and
parallel—both of which methods it is open for any—
body to apply to any form of transformer.”
Kennedy was not ignorant of the modus operand.
of securing patents and received several in this
country and in Europe prior to the patent in
suit and after the letter of November, 1886, in
which he expressly abandoned the right to the 1883
method to “anybody’ who saw fit to use it. These
patents were for transformation and distribution of
electric energy, several of which would have supported
the claims in issue, but no such claim was made.
The language of Mr. Justice BRADLEY in Zoom Co. v.
Higgins, 105 U. S. 580, 595, seems appropriate.
“If Davis was the inventor of the wire motion
applied to these looms, why did he never apply
for a patent for it 2 He was already a patentee
for a different and inferior apparatus. He knew
all about the method of going about to get a
patent. He belonged to a profession which is
generally alive to the advantages of a patent-right.
On the hypothesis of his being the real inventor
his conduct is inexplicable.”
6
Between 1883 and 1888 other electricians had re-
duced the system of the patent to practice and they
and the public had acquired rights of great value rely-
ing upon Kennedy's inaction and affirmative declaration
that he had no monopoly and that what he had de-
scribed was open and free to all. g
It is not necessary to hold that each of these acts and
omissions considered separately worked an abandonment
and dedication to the public ; it is enough that taken
together they lead to that result. In other words,
there seems no escape from the conclusion that Ken-
medy intended that the public should have whatever
he had contributed to the art in the 1883 article referred
to. His words are in harmony with his acts. He told
the public that it was free to do all that he had done
and knowing that the public had taken him at his
word he made no effort to secure a monopoly until
years afterwards. *
The complaimant practically concedes that the 1886
letter was an abandonment, but it argues that Ken-
nedy's letter was addressed to the British public, that
the gift was made only to Englishmen, and that the
American public had no part or lot in the matter.
There are many answers to this proposition, but a
sufficient one is that the major premise is incorrect.
Rennedy was not addressing the British public, but
the skilled electricians of the world. His letter was
not printed in a Glasgow paper, but in the Telegraphic
Journal and Electrical Review, a periodical obviously
designed to circulate among electrical specialists in
every land and clime. That it was used as the me-
dium through which citizens of other countries than
England reached the electricians of every country is
abundantly demonstrated in this record. He does not
say that his method is open for Englishmen but “for
anybody to apply.”
7
THE STANLEY PATENT.
The specification of the Stanley patent says:
“My invention relates to a system of distribu-
tion of electricity for industrial and economical
uses, with special adaptation to incandlescent elec-
tric lighting, although it is applicable also to other
purposes.
“For simplicity of illustration I shall describe
in this specification the application of the inven-
tion to incandescent lighting only. I employ for
this purpose a dynamo-electric machine generat-
ing an alternating current and a number of induc-
tion-coils or converters organized to transform the
current which is in the main line, at or near the
points of consumption, from one potential to an-
other—namely, a greater or less potential or to the
same potential—in a secondary circuit. In this
secondary circuit incandescent lamps, or other
translating devices are included.
* % * + -X- +
“In the construction of the coils P and S the
following principles are to be observed : The
first thing to be determined is the length of the
primary wire. This should be of such length that
reacting self-inductively upon its own magnetic
circuit the average counter-potential so produced
aapproximately equals the potential applied to
the primary circuit. When so constructed, an
ammeter will practically show no current when
the secondary circuit is open. To obtain those
results in practice I use the following method :
I first choose the percentage of efficiency to be
obtained. Then having selected a type of mag-
netic circuit affording as great magnetic con-
ductivity as possible I apply such a length of
primary conductor that acting self-inductively
upon its core the difference of the counter-poten-
tial and applied potential multiplied by the cur-
rent in the converter shall equal the predeter-
mined loss of energy inevitable in bonversion and
vary the length of primary wire until the desired
results are attained. It is obvious the the coef-
ficients of induction in the dynamo and armature
and converter may be made equal by emergizing
each circuit with the same induction.
S
“In the carrying out of my invention it is pos-
sible to use the same coefficients of induction in
the armature and the dynamo as are present in the
primary circuit of the converter ; but this equality
is not necessary. Having by these means deter-
mined the length of the primary coil, the second-
ary is adapted to it in such a manner as to secure
the desired potential according to the well-known
laws affecting the operation of induction coils. I
have usually related the potential of the secondary
to the primary in the ratio of twenty to one. The
size of the wire in the primary and secondary
coils is in inverse proportion to their electro-mo-
tive forces.”
The claims involved are the first and third. They
are as follows:
“1. In a system of electrical distribution, and
in combination, an alternating-current dynamo and
converters electrically connected with the main-
line conductors in multiple arc and organized to
transform the current in the main conductors into
currents of less potential and greater quantity
in the secondaries, each converter made with a
primary coil containing such length or wire ex-
posed to magneto-electric induction that when
operated by the dynamo with which it is to be
used with its secondary circuit open the electrical
pressure and counter-pressure in its primary cir-
cuit shall be equal with incandescent lamps or
other translating devices in the secondary circuits,
substantially as and for the purposes set forth.
“3. In a system of electrical distribution, and
in combination, an alternating-current dynamo
and converters organized to transform the current
generated by the dynamo into currents
of less potential and greater quantity at or near
the points of consumption electrically connected
with the main-line conductors in multiple arc and
having their primary circuits constantly closed,
each converter adapted to the dynamo Operating
the system by making its primary coil of such
length that when supplied with its full propor-
tionate share of the entire normal electro-motive
force of the machine, its secondary circuit being
open, the electrical pressure and counter-pressure
in its primary circuit shall be approximately equal
9
with translating devices in the secondary circuits
of the converters, to be cut out of the circuit when
not in use without the introduction of any resist-
ance in the place of them, substantially as and for
the purposes set forth.”
The defenses are :
TIRST : Anticipation by articles printed in various
foreign publications, prior to November 25, 1885,-
the date of Stanley's invention—describing the Ziper-
nowski and Deri system at Budapest.
SECOND : Public use more than two years prior to
the application.
THIRD : Abandonment.
FOURTH : Track of invention.
FIFTH : Non-infringement.
Stanley's contribution to the art of electric lighting
is an improvement upon the method described in the
Rennedy patent. It still remained to discover a way to
prevent the varying candle power of the lamps, on a
given transformer, when a part of the lamps were
turned off or on. If, for instance, there were twenty
lamps on a transformer, and all were burning, the
turning off of ten would change the candle power of
the remaining ten, increasing their luminosity. If
they were turned on again the candle power of all
would go down.
The difficulty was a serious and perplexing one and
electricians generally were searching for a solution but
always along the same lines. Stanley found a solu-
tion by doing what no one had ever thought of doing
before. He discovered that he could remedy existing
evils by regulating the length of the wire on the pri-
mary coil of the transformer. The patent tells those
skilled in the art how to accomplish this result. To the
uninitiated Stanley's rule seems indefinite and obscure,
10 :
but electricians have no difficulty in understanding it.
He determines the correct length of the primary coil
by winding on wire after the transformer, in circuit, is
connected with the dynamo, until the loss of energy
represented by the formula C* R equals the predeter-
mined Joss of energy to be suffered in the system.
The length of the wire is varied until the desired re-
sults are attained.
The rule is thus succinctly stated by the inventor
himself :
“I apply such a length of primary conductor
... that, acting self-inductively upon its core, the dif-
ference of the counter potential and applied poten-
tial, multiplied by the current in the converter
shall equal the predetermined loss of energy.”
What Stanley did was an exceedingly valuable addi-
tion to the art. He remedied a serious defect ; he
secured, without unnecessary waste of current, con-
stancy of secondary pressure as lamps were turned on
or off; he struck out into a new path and brought
back the prize which, if he had continued upon the
old paths, he never would have found. Such a dis-
covery cannot be attributed to the skill of the calling.
THE ZIPERNOWSKI AND DERI ARTICLE.
Is the patent anticipated by the publication of an
article in the London Electrical Review of August,
1885, describing the Zipernowski and Deri plant at
Budapest ?
This inquiry must be confined strictly to the article.
The question is not what was actually done at Buda-
pest, but what does the article say was done there.
The law provides that an inventor shall not be denied
a patent because the invention or discovery was known
or used in a foreign country. In order to defeat the
patent the invention must have been known or used by
others in this country or patented or described in a
printed publication in this country or a foreign
country. f
Jºsed Statutes, Sec. 4886, 4923.
11
The burden of proving anticipation rests upon the
defendant and he must do this by clear and convincing
evidence.
Barbed- Wine Patent, 143 U. S., 275,284.
The publication relied on must describe the inven-
tion in such a complete, clear and precise manner as
to enable those skilled in the art to reproduce it with-
out the aid of the patent. If the differences are only
those which the skill of the art will readily apply the
publication will not be destroyed as an anticipation,
but it will be destroyed if these differences relate to
essential features, and independent investigation and
experiment are required to explain obscurities and
supply omissions. The mere assertion that the de-
sired result has been accomplished without stating
how, without describing the means which produced the
result, is insufficient.
Walker on Patents, Sec. 57: Hanifen v. Gods/tal/ Co.
84 Fed. Rep. 649.
The article in question imparts no information upon
the one subject which is the all essential feature of the
Stanley invention, namely, the length of the primary
wire and the method of determining the same. Would
an electrician reading the article in August, 1885, know
how to construct the coils P and S of the Stanley pat-
ent * Would a system of distribution constructed
upon the information found in the article infringe the
claims in question ? It is thought not.
After pointing out the advantages of the system,
and it is to be noted that the writer can hardly be
charged with an overproduction of modesty in this re-
gard, the article proceeds to describe the manner in
which these advantages can be secured as follows :
“In order to increase the yield of induction ap-
paratus their inductive action must be increased
as much as possible. This can be effected, in the
first place, by increasing the rapidity of the cur-
rent pulsations, that is the changes of the direc-
tion of the current ; secondly, by bringing the
primary and the secondary wire as near to each
12
other as possible ; and, thirdly, by increasing the
diameter of the iron core inside the coil.”
This gives no information which is useful in reme-
dying the defects with which the patent has to deal.
. It fails to tell electricians how the length of the prim-
ary wire can be co-related to the voltage and alterna-
tions of the current supplied. In short, it may be said,
in the language of complainant's expert, that
“A person reading these articles would be in
the unenviable position of knowing with great ex-
actness and detail the results that it was desired
to obtain, without the slightest information as to
how they were to be obtained, except that he
was to use a type of transformer or induction
coil which had first been described by
Faraday in 1831, and in its perfected form by
Varley as early as 1856.”
The truth of this conclusion is still further demon-
strated by the fact that although a large number of the
foremost electricians of the world read the article and
commented upon it none of them found out a way to
reynedy the defect, and the Court is satisfied that no
one did remedy it till Stanley showed them how.
THE GREAT BARRINGTON USF.
The Statute provides that an inventor who complies
with the law in other respects may obtain a patent
unless the invention has been introduced into public
use in the United States for more than two years prior
to the application.
Jºevised Statutes, Sec. 4886-7.
The leading case upon this subject is Elizabeth v.
Pavement Co., 97 U. S. 126. The Court says :
“That the use of the pavement in question was
public in one sense cannot be disputed. But can
it be said that the invention was in public use 2
The use of an invention by the inventor himself,
or of any person under his direction, by way of
13
experiment, and in order to bring the invention to
perfection, has never been regarded as such a use.
+ + -X- * + *
*
**
* * *
“When the subject of invention is a machine,
it may be tested and tried in a building, either with
or without closed doors.
* + + % + -X-
“It would not be necessary, in such a case, that
the machine should be put up and used only in
the inventor's Own shop or premises. He may
lave it put up and used in the premises of an-
Other, and the use may inure to the benefit of the
Owner of the establishment. Still, if used under
the surveillance of the inventor, and for the pur-
pose of enabling him to test the machine, and,
ascertain whether it will answer the purpose in-
tended, and make such alterations and improve-
ments as experience demonstrates to be inecessary,
it will still be a mere experimental use, and not a
public use, within the meaning of the statute.”
“Whilst the supposed machine is in such ex-
perimental use, the public may be incidentally
deriving a benefit from it. If it be a grist mill, or
a carding machine, customers from the surround-
ing country may enjoy the use of it by having their
grain made into flour, or their wool into rolls, and
still it will not be in public use, within the mean-
ing of the law.”
Within this rule the Court is of the opinion that
the use in question was not public but was ex-
perimental.
The application for the Stanley patent was filed
August 15, 1888. The use at Great Barrington began
March 16, 1886, and ended June 16, 1886, being in
operation, subject to breakdowns and delays from
faulty construction, for a period of three months. t
The reasons which induce the Court to say that
this use is not fatal to the patent may be summarized
as follows:
IFIRST : Stanley went to Great Barrington under a
contract with the Westinghouse Company to perfect
his system and make it commercially successful. The
Westinghouse Company paid his salary, furnished
14
large sums of money and imported from Europe not
only expensive machinery but an expert electrician to
assist in the work. All patents obtained for inventions
at Great Barrington were to be assigned to the com-
pany. Both Stanley and Westinghouse were con-
versant with the provisions of the patent law and were
working to secure for the company the monopoly of
the best electric lighting system which human intellect
could devise. It seems incredible that such men,
dealing with interests of such transcendent magnitude,
should abandon their vast schemes of wealth and
empire in the electric world in order that they
might pocket the paltry revenues from a sixty-lamp
plant in a country town.
SECOND : The experiments were of such a character
that they had to be performed at a distance from the
laboratory and dynamo. Stanley was endeavoring to
elaborate a self-regulating system and the Only sure
way to prove such a system was to test it in actual use.
This, of course, involved stringing wires about the
town and putting lamps in public and private build-
ings, but no one save Stanley and his assistants were
aware of the new elements which had been introduced
into the combination. The engine and generator were
hidden from public view in an old rubber mill, tempo-
rarily fitted up as a laboratory; the transformers were
locked up. Writing, at the time, to Mr. Westing-
house, the inventor says :
“All the converters are under lock and key so that
no one knows anything about them.”
Nothing was visible that could give the public any
information as to the character of the experiments.
The poles, the wires, the lamps were visible and pub-
lic; the essential features of the system were invisible
and private. In short, the invention was not in public
lTS62.
THIRD : All of the persons acquainted with the work
at Great Barrington testify unreservedly that it was
experimental. }
Stanley says:
“I was experimenting with alternating cur-
rents.”
Belfield, the English electrician, who came to this
country at the request of Mr. Westinghouse to assist
in the work, says:
“The sole object of the installation at Great
Barrington, as I understood it, was entirely of
an experimental nature, so that the faults of
the system could be discovered and remedied
in order that when the apparatus should
be installed commercially there would be less
chance of failure and the system would be a suc-
cessful one.”
Pantaleoni, who with others visited the plant in the
interests of the Westinghouse Company, testifies :
“The whole idea of Stanley in going to Great
Barrington was to try an experiment on the pub-
lic. The laboratory was located quite close to the
City. The alternator was a low voltage machine.
But his experiments proved that, as far as the
service was concerned, a sufficiently good service
could be given with an alternating system to
satisfy the public. And this was, of course, one of
the points to be ascertained.
“All the party thoroughly understood that we
were looking at a commercial experiment. It was
clearly understood that, while we were all extremely
pleased at what we had seen, very much more was
needed for a commercially-successful plant. The
plant itself had been paid for out of the experi-
mental fund. The generator was clearly not one
that would have been used for an actual plant.
The distance was so short that commercially as a
business proposition a three-wire system would
certainly have been cheaper and better.”
Pope, who was intimately acquainted with Stanley's
purposes and expectations and who visited Great
Barrington in April, 1886, testified in an interference
case before the patent office as follows : *
16
“Stanley had established a laboratory in an old
factory building in Great Barrington, and was ex-
periumenting mainly, as I remember, with con-
verters of various forms and proportions in order
to determine which was the most efficient and con-
venient form. He had an experimental lighting
plant in operation, lighting half a dozen stores in
the village, half a mile or so from the laboratory,
and this I examined with some particularity.”
The written evidence is of the same purport. No
one can read the contract between Westinghouse and
Stanley and reach any other conclusion than that the
latter's work at Great Barrington was solely to perfect
his invention for the benefit of the Westinghouse Com-
pany. One of the provisions of the contract is as
follows :
“No.extended series of experiments shall be
entered upon without first notifying the president
or general manager of Said company, and receiv-
ing his written permission to proceed ; it being
understood that the company through its general
manager, is to direct the general coºrse of experi-
mentation and the nature of the results which it is
desired to attain, but that the details of the work
are to be carried out by the said Stanley in what
he may consider the best manner.”
On March 17, 1886, Stanley wrote Westinghouse as
follows :
“I am pleased to be able to inform you that the
secondary system is being rapidly completed. As
I mentioned some time ago, I believe the true way
to study it is to give it a commercial test here in
town. I have, therefore, run wires from the lab-
oratory to the village, and have placed a converter
in my cousin's store in order to test the com-
mercial necessities. The lamps in the store were
running last night. I expect to have three or four
lamps in the hotel (The Berkshire House) and in
three or four other stores running in a few days
more. In short, I expect to have a demonstration
of the system ready for inspection within two
weeks' time, perhaps sooner.
%. + +
-ºf-
* *
* * g.
* *
17
“I am striving all I can to finish this system for
you at the earliest possible date, but it is expensive
work. Possibly you will allow me a longer rest
when I have finished my work. I might say a
great deal about the system, but, briefly, it is all
right.
“I will send a fuller report in a few days. I
am now right in the midst of the work. The
working drawings for the converters will be ready
very soon.”
The testimony both oral and written is absolutely
inconsistent with the idea that Stanley was managing
the plant as a commercial venture. He had no right
to do this and every consideration of honor and self-
interest were against it.
FOURTH : Even as an experiment the Great Barring-
ton venture was not wholly successful as it broke
down before the success of the system was fully
demonstrated. Another test had to be made
at an expense of $4,000 to the Westinghouse Company.
A plant was installed for this purpose at Lawrence-
ville, near Pittsburgh. The first commercial plant was
installed at Buffalo in the latter part of November,
1886.
FIFTH : The fact that a charge was made for the
lights is the strongest piece of evidence in support of
the defendant's contention, but it is thought that it is
insufficient to outweigh all the other evidence in the
record which points to a different conclusion.
When the subject was fresh in his mind and before
his interests were antagonistic to those of the com-
plaimant Stanley testified at follows:
“Q. What arrangement did you have with the
citizens to whom you furnished the light for pay-
ment for it P’’
“A.. I do not remember now the exact arrange-
ment. I was obliged to ask something for the
light in order not to light the whole town. I
think I received about $8 a year from some of the
lights. Nothing from others. I did not erect a
plant for the purpose of making money out of it.”
1S
In other words it was a defensive arrangement on
his part in order to limit the number of lamps to those
needed for experimental purposes and also to prevent
complications with his neighbors. f
The amount actually received was ridicuously small
and there seems to have been no agreement on either
side which was not of the most transitory nature. The
fact that a few of the lamps were paid for is not incon-
sistent with the theory that the use was experimental.
In Smith có Griggs Mfg. vs. Sprague, 125 U. S.,
249, the Supreme Court says, at page 253 :
“A use by the inventor for the purpose of test-
ing the machine, in Order, by experiment, to devise
additional means for perfecting the success of its
operation, is admissible; and where, as incident to
such use, the product of its operation is disposed
of by sale such profit from its use does not change
its character.”
ABANDONMENT.
The Court is unable to find sufficient proof that
either Stanley, or the complainant was guilty of such
laches as to warrant the conclusion that the invention
was forfeited and abandoned.
INFRINGEMENT.
The converters used in the defendant's plant were
furnished by the Stanley Electric Manufacturing Com-
pany. These converters when operating in a system
supplied with a current of constant E. M. F. depend
upon variations of their counter E. M. F. caused by
variations of their secondary currents, for their self-
regulating property. It is asserted, and not denied,
that the defendant's transformers were actually designed
by Stanley himself. In these circumstances the pre-
sumption that they infringe is not a particularly violent
O]]6.
The defendant's plant exhibits all of the elements of
the first and third claims which, all agree, are substan-
19
tially similar. It employs, in combination, in a system
of electrical distribution,
FIRST : An alternating-current dynamo.
SECOND : Converters electrically connected with the
main line conductors in multiple arc.
THIRD : The converters are Organized to transform
the current in the main conductors into currents of less
potential and greater quantity in the secondaries.
FOURTH : Each converter is made with a primary
coil containing such length of wire exposed to magneto-
electric induction that when operated by the dynamo
with which it is to be used, with its secondary circuit
open, the electrical pressure and counter-pressure in
its primary circuit are approximately equal.
FIFTH : Lamps in the secondary circuit.
In these circumstances the Order in which the steps,
necessary to produce the desired transformer, are taken
would seem to be immaterial. Indeed when the testi-
mony of defendant's experts is considered as a whole it
hardly amounts to a dénial of infringement of the first
and third claims. -
The complainant is entitled to a decree as to those
claims, but without costs.
NOTE: The motion to suppress the deposition of
Reginald Belfield is denied. While the present method
of taking testimony in equity cases exists these motions
are inconsequential. In the present instance the
manner in which the testimony was taken may tend to
diminish its probative force, but does not warrant its
entire suppression at this time.
A True Copy.
Attest
(SEAL.) W. J. DoOLITTLE,
Clerk.
[17964]
A. c. MoTons.—c,
2 2 3
- * e 511,559.
r? * 511,560.
Opinion—Circuit Court. N
**
Tesla Split-Phase Motor.
(Patents Nos. 5II,559 and 51 1,560.) *
*
\
Full text of Opinion of Judge Lacombe in the case of
Westinghouse Electric and Manufacturin g Company, -
complainant, vs. The Catskill Illuminating and
- Power Company, Defendant, filed in the
U. S. Circuit Court, Southern
District of New York,
August 22, 1901.
C. G. Burgoyne, Walker and Centre Street, N. Y.
Clníteo $5tates Circuit Court
SOUTHERN DISTRIOT OF N. Y.
\
WESTINGHOUSE ELECTRIC AND
MANUFACTURING COMPANY.,
W In Equity No.
& 7147
THE CATSKILL ILLUMINATING AND
POWER COMPANY.
KERR, PAGE & COOPER, for Complainant
CHARLES A. BROWN and SEWARD DAVIs, for De-
fendant.
This cause was heard upon pleadings and proofs; it
is a suit for alleged infringement of two U. S. Letters
Patent to Nikola Tesla: viz, No. 511,559 and 511,560,
both issued Dec. 26, 1893 on application filed Dec. 8,
1888.
LACOMBE, Circuit Judge.
Patent No. 511,559 is for “electrical transmission
of power.” The specification begins:
“In certain patents heretofore granted, I have
shown and described a system of electrical power
transmission, in which each motor contained two
or more independent energizing circuits through
which were caused to pass alternating currents,
having in each circuit such a difference of phase
that by their combined or resultant action they
produced a rotary progression of the poles or
points of maximum magnetic effect of the motor
2
Cº. \ \,.. - Cººs &
and thereby maintained the rotation of its mova-
ble element. In the system referred to and de-
scribed in said patents, the production of genera-
tion of the alternating currents upon the combined
or resultant action of which the operation of
the system depends, is effected by the employment
of an alternating current generator with independ-
ent induced circuits which, by reason of the wind-
ing or other construction of the generator pro-
duced currents differing in phase, and these cur-
rents were conveyed directly from the generator
to the corresponding motor coils by independent
lines or circuits. I have, however, discovered
another method of operating these motors, which
dispenses with one of the line circuits and en-
ables me to run the motors by means of alternat-
ing currents from a single original source.
“Broadly stated this invention consists in
passing alternating currents, obtained from one
Original source, through both of the energizing
circuits of the motor, and retarding the phases of
the current in One circuit to a greater or less ex-
tent than in the other.
“The distribution of current between the two
motor circuits may be effected by induction or by
derivation. In other words, I may pass the alter-
nating current from the source through one ener-
gizing circuit.' by such current a second cur-
rent in the other emergizing circuit. Or, on the
other hand, I may connect up the two energizing
circuits of the motor in derivation or multiple
arc with the main circuit from the source. In
either event I make due provision for maintaining
a difference of phase between the currents i
the two circuits or branches. x
“In carrying out my invention I have used va-
rious means for securing this result. For exam-
ple, when I induce a current in one of the circuits
from the current flowing in the other, I employ
a form of convertor, or bring the two circuits
into such inductive relations as will produce the
necessary difference of phase. Or, when I obtain
the two emergizing currents by derivation, I make
the two circuits of different degrees of self-induc-
tion by iuserting a resistance or self-induction
coil in One of said circuits, or I combine these
devices in different ways as I shall more specific-
ally describe hereinafter.”
3
After a description of the drawings, the specifica-
tion concludes:
“In an application filed, of even date here with,
I have shown and described other ways of accom-
plishing this result, among which may be noted
the introduction of a resistance capable of varia-
tion in each motor circuit, or the use of a resist-
ance in one circuit and a self-induction coil in the
other.
“In the above description I have referred
mainly to motors with two energizing circuits,
but it is evident that the invention applies
equally to those in which there are more than two
of such circuits, the adaptation of the same being
a matter well understood by those skilled in the
art.
“I do not claim in this application the specific
devices employed by me in carrying out the in-
vention, having made these the subjects of other
applications.”
The only claims of the patent are:
“1. The method of operating motors having
independent energizing circuits, as herein
set forth, which consists in passing alter-
nating currents through both of the said
circuits and retarding the phases of the current
in One circuit to a greater or less extent than in
the other.
“2. The method of operating motors having in-
dependent energizing circuits, as herein set forth
which consists in directing an alternating current
from a single source through both circuits of the
motor and varying or modifying the relative re-
sistance or self-induction of the motor circuits
and thereby producing in the currents differences
of phase, as set forth.”
Patent No. 511,560, is for apparatus for carrying out
the “ derivation method" of the second claim of 511,–
559. It shows different arrangements of resistance of
self induction devices or both, in the derived circuits,
for the purpose of securing the requisite difference of
phase. The specification says:
4
“In explanation of what appears to be the
principle of the Operation of my invention, and of
the functions of the several instrumentalities
comprised thereby, let it be assumed that the two
energizing circuits of an alternating current
motor, such, for example, as I have described in
my Patent No. 382,280, dated May 1, 1888, are
connected up in derivation or multiple arc with
the conductors of a circuit including an alternat-
ing current generator. It is obvious that if both
circuits are alike and offer the same resistance
to the passage of the current no rotary effect
will be produced, for although the periods
of the currents in both circuits will lag
or be retarded to a certain extent with
respect to an unretarded current from the main
circuit, their phases will coincide. If, however,
the coils of one circuit have a greater number of
convolutions around the cores or a self induction
coil be included in one of the circuits, the phases
of the current in that circuit are retarded by the
increased self induction. The degree of retarda-
tion may readily be secured by these means which
will produce the difference in electrical phase be-
tween the two currents necessary for the practical
operation of the motor. If in lieu of increasing
the self induction of one circuit a dead resistance
be inserted, the self induction of such circuit ex-
erts a correspondingly diminished effect, and the
phases of the current flowing in that branch are
brought more nearly in unison with those of an
unretarded current from the main line, and the
necessary difference of phase between the currents
in the two energizing circuits thus secured. I
take advantage of these results in several ways.
For example, I may insert variable resistances in
both branches of energizing circuits and by vary-
ing one or the other so as to bring the phases of
the two currents more or less in unison with those
of the unretarded current, I may thus vary the
direction of the rotation of the motor. In lieu of
resistance I may employ variable self induction
coils, in both circuits. Or I may use a resistance
in one and a self induction coil in the other and
vary either or both. This system or means
of operating the motors is rendered of
great practical value by employing an
armature wound with energizing coils closed
upon themselves, in which currents are induced
5
by the alternating currents passing in the field
coils that serve to greatly increase the mutual at-
tractive effect between the armature and the field
magnets. This use of the armature with closed
coils I regard as an important feature of my in-
+
-*. -X- -K-
vention.” ”
After describing various arrangements with refer-
€llC6
to the drawings, the specification proceeds :
“Similar results may be secured by such a
construction or Organization of the motor as will
yield the necessary differences of phase. For ex-
ample, one set of energizing coils may be of finer
wire than the other, or have a greater number of
convolutions, or each circuit may contain the same
number of convolutions, but composed of differ-
ent conductors, as, for instance, One of copper,
the other of German silver. I have represented
this in Fig. 6, in which the coils C are indicated
by closer lines than coils D.”
2:/. 6 o
.x/
The two claims (out of seven) which are in contro-
versy here are :
“1. A combination with a source of alternating
currents, and a circuit from the same, of a motor
having independent energizing circuits connected
with the said circuit, and means for rendering
the magnetic effects due to said energizing cir-
cuits of different phase an armature within the
influence of said energizing circuits.
“2. The combination with a source of alternat-
ing currents and a circuit from the same, of a
motor having independent energizing circuits
connected in derivation or multiple arc with the

6
said circuit, the motor or energizing circuits
being of different electrical characters whereby
the alternating currents therein will have a differ-
ence of phase, as set forth.” *
These patents belong to what is known as the split-
phase system of producing motor action. From the
quotations above given it will be apparent that claim
1 of 511,559, covers broadly both the methodſ of
splitting phases suggested, viz.: by induction and by
derivation. Claim 2 of 511,559 covers—only the
method suggested by derivation with modification of
relative resistance or self-induction of the motor cir-
cuits. Claim 1 of 511,560 covers apparatus for carry-
ing out the derivation method broadly by “means for .
rendering the magnetic effects due to the energizing
circuits '', which are connected with the circuit of
supply, of different phase. Claim 2 of 511,560 is re-
stricted to apparatus in which the energizing circuits
are “connected in derivation or multiple arc with the
(supply) circuit.”
Another patent 555,190 covered apparatus for the
induction method.
The testimony is voluminous, many of the
questions discussed are highly abstruse, involv-
ing a degree of technical knowledge which only
years of study and training could im-
part and which it is not possible for a court
thoroughly to absorb, no matter how able the briefs
and argument, within the utmost time that can possi-
bly be given to the study of the record. Fortunately,
however, many of these questions are—so far as this
court is concerned—already decided and to that ex-
tent they need not be discussed or presented here.
Tesla on May 1, 1888, took out patents for a system
whereby alternating currents differing in phase were
brought to and passed through independent energiz-
ing circuits in a motor, with the result that a whirling
field of force was produced, which caused the arma-
ture of the motor to revolve. This is what is known
as the polyphase system and a large part of the testi-
7
mony in this case is directed to the question whether
Tesla was its inventor. That issue with all its col-
lateral questions was before this Court in a suit upon
the fundamental patents covering that system (381,968,
382,280 and 382,279) in which suit it was held that
Tesla was a highly meritorious inventor and was en-
titled to the broad claims which covered the polyphase
system. That decision has been sustained in the
Circuit Court of Appeals and reference may be had to
the opinions of both courts for an elaborate discussion
of that branch of the art. Westinghouse Elec. & Man.
Co. v. New England Granite Co. 103 F. R. 951.
One of the defences set up is that the inven-
tions are covered by other patents of the same
inventor (416,193 ; 445,207) Inasmuch as a similar
defence (as to 416,193) was interposed in
Westinghouse E. & M. Co. v. Dayton Fan & Motor Co.
a suit decided in S. District of Ohio Feb. 6, 1901, and
overruled, it was not pressed in argument here.
Another defence is that No. 511,559 is invalid for
the reason that it is for a function of the machines of
511,560. That was disposed of on demurrer ad-
versely to defendant, and of course was not re-argued
here. -
Question is raised as to the date of invention. The
application was filed Dec. 8, 1888, but the patentee
undertook to show a disclosure of the invention to
others prior to April 22, 1888. The same question upon
the same evidence was decided in Tesla's favor in the
Dayton Fan & Motor case. It is suggested in supple-
mental brief that it was not argued in that case. An
independent examination of the testimony leads to the
same conclusion. The two witnesses are men of edu-
cation, special training and character ; their evidence
is clear, direct, and specific, it is not weakened by
cross-examination, indeed they were hardly cross-
examined at all. Moreover there were circumstances
which were well calculated to fasten the disclosure in
the mind at least One of them, for it awakened doubts
as to the advisability of letting the pholyphase pat- º
ents go through the Patent Office without some modifi-
8
cation, and finally the dates of application for those
patents and entries of charge in the register of One of
the witnesses fix the date otherwise than by mere
recollection. The evidence is highly persuasive and
the same conclusion is reached as in the Dayton case.
In an action in the Eastern District of Pennsyl-
vania, Tesla Electric Co. v. Scott & Jamney, 97 F. R.
588, two other patents to Tesla were involved, one of
which 511,915 covers the mode of obtaining difference
of phase by induction, as the second claim of 511,559
covered the other mode by derivation. The first claim
of 511,559 as was said before, is the generic claim
which covers both modes. It is apparent therefore
that in that suit questions as to novelty and patent-
ability of the broad claim, as to the state of the art
and the measure of invention displayed were neces-
sarily presented. -
In the Dayton case, and in the Scott & Janney case
the courts both held that the patents were not antici-
pated and that the question of invention should be
resolved in favor of the patents. It is not understood
that the present record discloses any alleged anticipa-
tions or any earlier patents or publications which
were not in one or other or both of these suits; and
their conclusions on that branch of the case will be
followed here. This reduces the case to a question of
infringement.
The defendant's device is an alternating-current
watt motor-meter, in which there is a rotating disk
which is put in motion by currents flowing through
coils so arranged relatively to the disk as to produce
such rotation. The testimony on this branch of the
case is voluminous and highly technical and in parts
extremely difficult of comprehension by any one save
an experienced electrician. It would be idle to under-
take to discuss it at length. The Scheefer meter is
indicated in defendant's brief by the following
diagram.

F: A' ,
%
Et
=2 |
AA are coils of fine wire, B a coil of coarse wire, C
a square iron core, D the rotating disk. Whatever
this diagram may or may not show, it is contended by
complainant that current from the circuit to which
the meter is connected divides so that part passes
through AA and part through B; and that is not
denied. It seems to be well settled that, for reasons
which it is not necessary to detail, currents traversing
such a circuit as B are not retarded to the same ex-
tent as those traversing such a circuit as AA. The
natural consequence would seem to be that there
would be a difference in phase between such currents
and that there would result the shifting or progres-
sion from pole to pole of the magnetic resultant which
Tesla described in his poly-phase patents. It would
be expected that such shifting would rotate the disk.
When current is passed through the Scheefer meter
the disk rotates. If this were all, it would seem that
infringement is made Out.
Defendent, however, contends that infringement is
not shown for several reasons.
1. That the patents cover motors only, and the
Scheefer device is a meter. This is a mere verbal
distinction without apparent merit. The patents
do contemplate the production of power, but they are
wholly silent as to the amount of power. The Schee-
fer meter exerts power, its disk rotates against the
action of a permanent magnet and turns the spindle
which Operates the registering devices.
2. That apparatus to be within the patents must
operate by the so-called “Tesla rotating field", the
10
“whirling field of force " of the poly-phase patents,
produced by a difference in phase of the currents in
the energizing circuits. That proposition is undoubt-
edly correct. Defendant further contends that the
Sheefer meter does not so operate, and therefore that it
does not infringe. Between the elaborate theories of
the opposed experts as to the mode of operation of
this meter it might be difficult to choose. It is
thought that the practical tests do not sustain this last
proposition. One of the defendant's witnesses experi-
mented with a meter having both currents in the same
phase, but the meter he used was not the meter com-
plained of ; he made changes in some of the coils be-
fore he experimented. It is true that complainant's
experts admit that there will be a movement of the
disk with reduced speed when currents are in
phase, but this admission is qualified by the further
statement that “the Sheefer meter as actually con-
structed and operated has a very great difference of
phase between its currents, and this fact is the chief
operative cause in the meter. The addition of 15 de-
grees phase difference between the fields adds slightly
to the rotative effort, and increases the ac-
curacy of the meter.” Upon this branch
of the case the conclusion arrived at is that
expressed by one of complainant's experts; “The
Scheefer meter works normally with a difference of
phase between the currents. The increased difference
of phase between the fields is a refinement which may
be overlooked entirely in determining the question of
the presence of the inventions of these patents. With-
out the difference of phase between the currents, the
Scheefer meter would not be a watt meter, and would
not be sufficiently powerful or sensitive to be a meter
of any kind. The effective cause of the operation
is, therefore, the difference of phase of currents.”
Various other conflicting theories as to why and how
the revoluble part of the meter revolves need not be
enlarged on. The preponderance of evidence indicates
that in the Scheefer meter, as sketched above, there
are independent energizing circuits; that alternating
11
current from a supply circuit is passed through both,
and that by variation or modification of the relative
resistance or self-induction of these energizing circuits
they are put into different phase, and that the re-
voluble disk becomes effectively operative because
such arrangement exerts its influence through the de-
velopment of the whirling field of force which is char-
acteristic of the Tesla method. In consequence there
is shown infringement of both claims of 511,559 and
of the first claim of 511,560. As was said before, the
second claim of 511,560 is restricted to apparatus
in which the energizing circuits are connected in deri-
vation or multiple arc with the supply circuit. There
seems to be some conflict in the proof as to how the
Scheefer meter is arranged relatively to the supply
circuit and complaimant's witnesses are not entirely
in accord ; there is not such a preponderance of evi-
dence that both energizing circuits are connected in
multiple arc with the supply circuit, and infringement
is, therefore, not made out.
Decree accordingly.
A copy.
JOHN A. SHIELDS,
(SEAL) Clerk.
[18621]
- 223 469,809.
,7? No. 2.
W 33.
Decree—Circuit Court.
Self-Regulating Transformer Case.
(Stanley Patent No. 469,809).
Full text of Decree in the case of Westinghouse Electric
and Manufacturing Co., Complainant, vs. Saranac
Lake Electric Light Co., Defendant, filed in
the U. S. Circuit Court, Northern
District of New York,
May 7, 1901.
C. G. Burgoyne, Walker and Centre Streets, N. Y.
At a Stated Term of the Circuit Court of
the United States for the Northern
District of New York, held at the
City of Utica, in said District on the
7th day of May A. D. 1901.
Present : - District
Judge.
WESTINGHOUSE ELECTRIC AND MAN-
UFACTURING COMPANY
WS. In Equity.
SARANAC LAKE ELECTRIC LIGHT
COMPANY.,
This cause having come on to be heard at the
December Term of said Court, and Frederick P. Fish
Esq. and J. Edgar Bull, Esq., having been heard for
the Complainant, and C. E. Mitchell, Esq., and M. B.
Philipp, Esq., having been heard for the Defendant.
Now therefore, on due consideration thereof, it is
hereby * * ...”
ORDERED, ADJUDGED AND DECREED, that Letters Patent
of the United States granted to the Complainant, as
assignee of William Stanley, Jr. for an improvement in
System of Electrical Distribution, dated March 1st,
1892, and numbered 469,809, are as to the first and third
claims, good and valid in law; that the said William
Stanley, Jr. was the original and first inventor of the
invention described and claimed in the first and third
2
claims of said Letters Patent ; that the title to said
Letters Patent and to the inventions described and
claimed therein is vested in the complainant, and, that
the defendant has infringed the first and third claims
of said Letters Patent and the exclusive rights of the
complainant thereunder.
AND IT IS FURTHER ORDERED, ADJUDGED AND DECREED
that the Bill of Complaint be and the same hereby is dis-
missed as to Reissued Letters Patent of the United
States granted to the Complainant as assignee of
Bankin Kennedy for System of Electrical Distribution,
dated September 24, 1889, numbered 11,031.
AND IT IS FURTHER ORDERED, ADJUDGED AND DECREED
that the complainant do recover from the defendant the
profits, gains and advantages which the defendant has
- received or made, or which have arisen or accrued to
it by reason of the infringement by said defendant of
the said first and third claims of said Letters Patent
No. 469,809, since the date of said Letters Patent, as
also the damages which the complainant has sustained
by reason of said infringement, to be assessed as pro-
vided by Statute.
AND IT IS FURTHER ORDERED, ADJUDGED AND DECREED,
that it be referred to William S. Doolittle Esq., whose
long experience in such matters is determined by the
Court to be sufficient reason for such appointment, as
Master, to ascertain, state and report to the Court an
account of the gains, profits and advantages which said
defendant has received or which have arisen or have
accrued to it by reason of any infringement by it of
the said first and third claims of said Tetters Patent
No. 469,809, since the date of said fletters Patent, and
also the damages which the complainant has sustained
by reason of said infringement, leaving all questions
as to increase of damages until the coming in of the
report of said Master.
AND IT IS FURTHER ORDERED, ADJUDGED AND DECREED
that the complainant on said accounting have the right to
cause an examination of said defendant and its officers
"A
3
ore tenus, or otherwise, and also the production of the
books, vouchers and documents of said defendant, and
that the said defendant attend for such purpose before
said Master from time to time as said Master shall
direct.
AND IT IS FURTHER ORDERED, ADJUDGED AND DECREED
that a perpetual injunction be issued in this suit strictly
enjoining and restraining the said defendant, its offi-
cers, clerks, attorneys, agents, and workmen from
directly or indirectly making, constructing, using or
selling, or causing to be made, constructed, used or
sold, said improvement in system of electrical distribu-
tion, claimed in said first and third claims of said
Letters Patent No. 469,809, and such as it is and has
been using or such as is substantially the same, or as
embody the said patented invention of said Stanley,
and from in any way directly or indirectly infringing
the said first and third claims of said Letters Patent
No. 469,809.
AND IT IS FURTHER ORDERED, ADJUDGED AND DECREED
that no costs be taxed by either party.
ALFRED C. COXE
U. S. J.
[18050)
7-
223
T-4
W 53
A. C. MOTORs.—A.
381, 968.
382,279.
382,28O.
No. 2.
Opinion—Court of Appeals.
Tesla Polyphase System.
(Patents Nos. 381,968–382,279–382,280).
Full text of Opinion of Court of Appeals in the case of
Westinghouse Electric and Manufacturing Company,
TComplaznant, Appellee, vs. New England Granite
Company et al., Defendants, Appellants, filed
in the U.S. Circuit Court of Appeals,
Second Circuit, August 22, 1901.
C. G. Burgoyne, Walker and Centre Streets, N. Y.
United Slalestigiitſºlſtoſ AWils.
FOR THE SECOND CIRCUIT.
WESTINGHOUSE ELECTRIC & MANU-
FACTURING COMPANY
WS. In Equity.
NEW ENGLAND GRANITE COMPANY
and JAMES G. BATTERSON.
The complainant brought a bill in equity in the
Circuit Court for the District of Connecticut against
the New England Granite Company, a Connecticut
corporation, and James G. Batterson, a citizen of Con-
necticut, which was based on the alleged infringement
of three patents granted on May 1, 1888, to Nikola
Tesla, and numbered respectively 381,968, 382,279 and
382,280. Each of the first two patents is for an Elec-
tro Magnetic Motor. The third patent is for a method
of effecting the transmission of power by electrical
agency. The apparatus by which the system is put
into practice is described in 381,968. Patent 382,-
279 describes a specific and different construction
of motor. The bill was dismissed as to the defendant
Batterson. The interlocutory decree directed an in-
junction against the Granite Company upon all of the
claims which were in issue—viz., claims 1 and 3 of
No. 381,968, the single claim of 382,280, and the three
claims of 382,279. From this decree the Granite Com-
pany appealed.
SHIPMAN, C. J.
Each patent relates to the method by which elec-
trical power is transmitted by alternating currents to
a distant point and there safely and efficiently utilized
which was invented by Tesla in 1888, but the patents
for the method and for the apparatus are for distinct
inventions. The electrical laws under which the force
which is called electricity is sent from generator to
motor and is thereafter made useful are not simple in
their character, have compelled the close study of
scientists, and cannot be adequately explained with
brevity. An explanation of so much of the subject as
is demanded by the patents was given by Judge TOWN-
SEND in his opinion in this case, with clearness, suc-
cinctness and, we believe, accuracy, and is as follows :
“The electric current induced by a mechanical
generator—a dynamo–is necessarily alternating
in character ; that is, alternating in direction, so
that the current, acting on an almature, first tends
to actuate it in One direction and then reverses
said effect and neutralizes such actuation. Such
a current flows uninterruptedly and regularly, but
rises in intensity from Zero to maximum and falls
from maximum to Zero, and then repeats said
variations in the opposite direction. Its curve of
increase or decrease of strength is indicated by a
wave line or sine curve.
“Every mechanically generated current is
naturally and originally an alternating current.
Formerly it was not considered practicable to use
mechanically generated currents until their alter-
nations were straightened out by means of com-
mutators which reversed the direction of the cur-
rent so as to make it flow continuously through the
conductors. A current which is periodically re-
versed by a commutator which thus breaks the
current between the changes in direction and
takes off the current in sections, is known as a re-
versed or alternated current. This distinction
between an alternating and an alternated current
should be carefully noted. An alternating current
continues to act in opposite directions as origi-
nally generated. An alternated current has been
so reversed that the whole flows in one direction
3
and is then known as a continuous current. When
SO reversed by commutators as to become contin-
uous, the current loses certain characteristics es-
sential to its highest efficiency.
“Prior to the Tesla inventions, only reversed
or alternated electric currents were used for the
transmission of power. The application of this
system for the transmission of power was limited,
for various reasons; among others, because a large
current could not be safely used at sufficiently
high pressure for long distances. On the other
hand, the pure alternating current was practically
unlimited in volume and pressure, and a change of
pressure could be economically effected by the use
of a transformer.
“ Prior to Tesla's inventions, however, these
rapid alternations of the alternating current pre-
vented the motor from starting its revolution and
interfered with its continuing in operation, except
when in synchronism with the generator. It was
therefore impracticable for varying loads.
“The problem which was presented to Nikola
Tesla, and which he successfully solved, was, how
to overcome the difficulties attendant upon the
use of the alternating currents so that their in-
herent vitality and untrammeled energy might be
utilized for the unlimited transmission of power.
“In an electric motor, the tendency of the
armature is always toward the pole or point of
maximum magnetic intensity. If a loosely-
pivoted or freely-moving magnetic bar or armature
be suspended midway between two coils of in-
sulated wire wound in opposite directions on a
soft iron bar, and one of the coils is electrically
energized, north and south poles will be formed
at the ends of the soft iron bar—their location
depending upon which coil is energized ; but if
both coils be equally energized the two poles will
neutralize each other and cause a resultant north
pole midway between the coils. If, now, the cur-
rent in one coil could be made weaker than in the
other, said pole will move toward the coil of
greater electrical energy. The magnetic bar or
armature will follow the shifting position of the
pole, and by thus gradually varying the energy in
the coils, the armature may be alternately caused
to move from the pole of one coil along toward
the pole of the other coil.
4
“The alternating current generated by an elec-
trical machine, as before stated, constantly varies
from maximum intensity to zero in One direction,
and then from zero to maximum intensity in the
opposite direction.
“In the invention of the patents in suit, Tesla
availed himself of this characteristic feature of
alternating currents in the following way :
“In constructing a motor, he arranged on
an annular soft iron core, two pairs of magnetizing
coils, each pair at right angles to the other, that
is, one coil of one pair at the top, and one at the
bottom, and one coil of the other pair at each
opposite side of said core, and mounted an
armature in the centre. Then, connecting them
with an alternating current generator, he caused a
current from one pole of said generator to pass
through one pair of coils and a current from the
other to pass through the other pair.
“If the cycles of alternating currents be re-
garded as divided into 360 degrees then, as shown
in the Tesla illustrations, they will have a rela-
tive displacement of 90 degrees. In such posi-
tion the lines of magnetic force traversing the two
coils will be at maximum in one while at minimum
in the other. This relative displacement marks
the differing phase or time relation of the two cur-
rents. |
“The effect of passing two equal currents
through said coils would be to cause the pole of
maximum intensity to pass midway between the
poles of the respective pairs of coils. But the
effect of the ordinary operation of the generator
as before explained was to cause the current in
each pair of coils to vary from zero to maximum
and to zero and then to shift in the opposite
direction, the intensity of the current flowing to
One pair of coils being at maximum while that of
the other was at Zero, and One increasing while
the other decreased, and the result being to shift
said poles so as to make them travel entirely around
said core.” -
Before the invention of Tesla, electric motors for
use with continuous currents were employed for the
distribution of power over areas such as are usually
occupied by trolley systems, and such motors for
electric railways are largely used. Alternating cur-
5
rents were extensively used for electric light, but the
efficient use in a motor of a pure alternating cur-
rent, in the form in which it was generated by the
dynamo, for the transmission of power to a great dis-
tance for manufacturing purposes was deemed, both
by scientists and by electricians, to be impracticable;
because, if by any means, by a change of load or other-
wise, the speed of the motor got out of step with the
generator, the motor would stop. The need was not
of a system which would merely produce something to
which the same power might be given, but of a system
which would actually create continous and uniform
rotation of the armature without stoppage, whether
loads were increased or decreased.
The difficulty in the use of true alternating currents
for transmission of power to a distance was that
the alternations, which must be rapid in Order to
put out power, were so fast that the
“armature did not have time to reach the proper
position''
and consequently stopped. As soon as Synchronism
was impaired, the transmission of power ceased.
The difficulties in the use of a continuous current
for power transmission are stated by Professor Main
as follows:
“The use of the continous current in power
transmission was limited by the cost of conduct-
ors, or by the difficulties which were encountered
when high pressures were employed. With mod-
erate pressures no very great amount of power
could be transmitted to a considerable distance
without incurring prohibitory expense, Owing to
the large size of copper conductors required un-
der these circumstances. If, on the other hand,
the electric pressure was greatly raised so as to
secure the transmission of a considerable amount
of power over a comparatively small, and there-
fore inexpensive, conductor, other difficulties were
encountered, such as excessive leakage in both
generating and receiving machines, and also along
the lines great danger to the life of the attend-
6
ants and frequently the destruction of electric
machinery by short circuits, with the consequent
burning out. of coils and commutators. The diffi-
culties of insulation were found to increase in al-
most geometrical ratio with the rise of the poten-
tials necessarily employed with increasing dis-
tance. The long continued and expensive experi-
ments of Deprez and others led to no practical
results, although at One time they were eagerly
watched as promising a solution of the problem.
They served only to point out the serious and
apparently insuperable obstacles which were en-
countered when an attempt was made to transmit
power to a great distance by means of continous
currents at high potentials.”
The Tesla invention which was for the purpose of
so utilizing true alternating currents that a continous
rotary effort and a continous rotary result could be
produced is described by Professor Main, as follows:
“I understand that the Tesla polyphase sys-
tem consists in the production of two or more
alternating currents, having relatively successive
periods of maximum intensity, and their combined
use, in such a manner as to create a continous
rotary effort upon the armature of the motor.
This invention of the means of producing a con-
tinous rotary effort by alternating currents,
solves the problem of power transmission to great
distances, for it added to the known methods of
transforming the pressures of alternating
currents, the lacking element which conferred
upon the motor the power of starting with-
out external aid, and of continuing motion
while doing work, up to the limit of its
capacity.” -
and by Judge TownsEND as follows:
“The underlying thought disclosed and applied
in the Tesla patents is such a use of the rapidly
successive opposing alternations of the alternat-
ing current regularly and constantly recurring
in such differing phases as would not only
prevent the alternations from stopping the
armature, but would become a source of power.
7
It was essential, to the practical development of
this idea that the alternations should rise and
fall and succeed each other progressively and con-
stantly and should be arranged, as counsel for
complainant puts it, “ like the Grank on a locomo-
tive in which there is no dead centre, but one
crank is always pushing forward.’ Tesla's inven-
tion, considered in its essence, was the production
of a continuously rotating or whirling field of
magnetic forces for power purposes by generating
two or more displaced or differing phases of the
alternating current, transmitting such phases,
with their independence preserved, to the motor,
and utilizing the displaced phases as such in the
motor.”
The novelty, importance and remarkable promise of
the invention, if it could be successfully reduced to
practice, was immediately acknowledged by electrical
scientists, and its ultimate practical and admitted suc-
cess in the utilization of alternating currents for the
transmission of power to a distance has justified the
pleasure with which the invention was received when
first communicated to the public.
The claims of the patents in suit which are in issue
are as follows :
Patent 381,968.
“1. The combination, with a motor containing
separate or independent circuits on the armature
or field-magnet, or both, of an alternating-current
generator containing induced circuits connected
independently to corresponding circuits in the
motor, whereby a rotation of the generator pro-
duces a progressive shifting of the poles of the
motor, as herein described.
“3. The combination, with a motor having an
alinular or ring-shaped field-magnet and a cylin-
drical or equivalent armature, and independent
coils on the field-magnet or armature, or both, of
an alternating-current generator having corre-
spondingly independent coils, and circuits includ-
ing the generator-coils and corresponding motor
coils in such manner that the rotation of the gen-
erator causes a progressive shifting of the poles of
the motor in the manner set forth.”
Patent 382,280.
“The method herein described of electrically
transmitting power, which consists in producing a
continuously progressive shifting of the polari-
ties of either or both elements (the armature or
field-magnet or magnets) of a motor by develop-
ing alternating currents in independent circuits,
including the magnetizing-coils of either or both
elements, as herein set forth.”
Batent 382,279.
“1. The combination, with a motor containing
independent inducing or energizing circuits and
closed induced circuits, of an alternating-current
generator having induced or generating circuits
corresponding to and connected with the ener-
gizing-circuits of the motor, as set forth.
“2. An electro-magnetic motor having its field-
magnets wound with independent coils and its
armature with independent closed coils, in com-
bination with a source of alternating currents
connected to the field-coils and capable of prog-
ressively shifting the poles of the field magnet,
as set forth.
“3. A motor constructed with an annular field-
magnet wound with independent coils and a
cylindrical or disk armature wound with closed
coils, in combination with a source of alternating
currents connected with the field-magnet coils and
acting to progressively shift or rotate the poles of
the field, as herein set forth.”
The defendant, in discussing the subject of novelty,
does not find the polyphase method of transmitting
power, or the combination described in the motor
patents for the accomplishment of the new purpose, to
have been anticipated in any one mechanism ; but it
attempts to show that essays and patents prior to
Tesla's invention described enough in regard to the
effect of the combination of motors with different kinds
of currents to deprive the Tesla system of patentable
invention. The paper of Walter Baily read before the
Physical Society of London in 1879; the articles by
Marcel Deprez in 1880–84, the principal one being
9
“On the Electrica) Synchronism of Two Relative
Motions, and its Application to the Construction of a
New Electrical Compass; ” the Siemens English patents
of 1878; and the application of May 9, 1887, of Charles
S. Bradley, upon which letters patent of the United
States were subsequently issued on October 2, 1888,
and after the date of issue of the Tesla patents, are
principally relied upon. *
Many years ago Arago produced in his laboratory
an electrical toy which Mr. Baily describes as consist- .
ing Qf a copper disk suspended by its centre so as to
make it lie above the poles of a horse-shoe magnet
which was then rotated about a vertical axis, and the
copper disk was in consequence rotated, its rotation
being due to that of the magnetic field in which it was
suspended.
Mr. Baily thought that if a similar motion of the field
could be produced by any other means, the result
would be a similar motion of the disk. He made
another laboratory experiment which was successful
and the object of his paper was to show
“ that the disk can be made to rotate by an in-
termittent rotation of the field effected by electric
magnets.” -
So far as is known the apparatus has been ever since
confined to its original use as an electrical toy. Baily's
statement of the object and the result of his experiment
is sufficient to show that he neither thought of nor un-
consciously aided in solving the problem of transmission
of power by electrical currents of any kind. It is cer-
tain that the use of two true alternating currents of
different phase for the purpose of producing a change
of the magnetic field was not suggested by him.
The Siemens British patent of August 8, 1878, was
granted upon a communication by Werner Siemens
and Hefner von Alteneck, two distinguished electri-
cians. The patent was especially for improvements
in arc lighting in which alternate currents were used.
The drawings showed continuous current machines
and those capable of being both continuous and alter-
10
nating and the part of the specifications upon which
reliance is placed is that : ea
“It is to be understood that with suitable mod-
ifications these apparatus are generally applicable
also as electro-dynamic machines, their rotary
parts being caused to revolve and give out me-
chanical power when electricity is applied to them,
and thus one of these machines may be driven by
any suitable motive power so as to generate elec-
tricity, and this electricity may be conducted to a
similar machine at a distance, causing it to work
and to give out a portion of the power applied in
the first instance.”
No modifications are described and there is no sug-
gestion that the patentee thought of such connections
between the generator and motor, each of two phases,
as to preserve the phases of the two and the difference
of phase and that currents should act independently
and regularly succeed each other and thereby keep the
armature constantly rotated.
The mechanism of the Siemens machine was of the
class that, as the complainant's expert says,
“could, by properly taking off their currents, have
been used as polyphase machines, and also that if
any one had coupled two of these properly arranged
machines in a certain Way and used them in a cer-
tain way, the system so produced would have in-
volved the inventions afterwards made by Tesla.”
The way in which to couple these machines together
for the purpose of transmission of power by pure alter-
nating currents remained an unsolved mystery for ten
years, although the scientists were eager in the search
for the secret, and neither Siemens nor Wom Alteneck
supposed that they had approached a solution. The
hints in the patent respecting the modifications by
which the inventor's apparatus for the conversion of
power into electricity can be made to give out mechan-
ical power are and were valueless, as no modifications
are described, as the kind of mechanism to be modified
11
is uncertain, and as independence of phase was not in
the contemplation of the patentees.
The defendant however says, and the assertion is
made of great importance upon the whole question of
patentability, that the skilled electrician knew that
the dynamo electric generator could be reversed so as
to give out mechanical power, and therefore it was not
necessary for Siemens or any other person to instruct
the public how to make modifications. The point in
regard to the principle of reversibility is stated in the
defendant's brief as follows :
“It is a principle which is not confined to con-
tinuous current machines or to single phase, two
phase or multiphase machines, and being SO recog-
nized it belonged to those skilled in the art to 7”.
Such apparatus as generaton's 07 to supply them with
currents from Similar machines and run them as
notors, and all without the exercise of the inventive
faculty.”
Therefore the defendant thinks that this reversibility
of the Siemens or Bradley apparatus is all that there
is to the principal patents of Tesla. The assertion in
regard to the knowledge of reversibility is true in a
certain sense, yet it is misleading and does not tend
to prove the desired conclusion. The proposition is
that before the date of the Tesla inventions the re-
versibility of the dynamo electric generator was uni-
versally known and therefore that when Tesla saw the
use of a two-phase alternating current from a dynamo
electric generator, he knew that it would operate in
the reversed way and would generate power, if supplied
with the currents which it generates, and therefore he
knew that if he reversed it, the alternating current
could'be used to furnish power at a distance. The
conclusion does not follow, for there is a wide distinc-
tion between the use of an alternating current for
what may by courtesy be called power, and the use for
transmitting power for manufacturing purposes to a
distance. As said by Professor Main,
12
“By ‘great distance' I mean one considerably
greater than that over which power is usually
transmitted in trolley systems, for which as is
well known a moderate potential suffices. The
problem of power transmission over great dis-
tances remained not only unsolved, but was ap-
parently no nearer solution at the time of the
commencement of Tesla's inventions than it had
been for several years previously, although it was
a subject of constantly increasing interest.”
Furthermore, the proposition, while true in regard
to direct current machines, was only a matter of theory
and not of practice in regard to alternating current
motors for power purposes. The general statements
in the books in regard to the reversibility of dynamo
electric machines have particular reference as a known
fact, to a supply with direct currents, but as to alter-
nate currents with alternate current machines as
motors the scientists relied upon surmises. For ex-
ample, the English electrician Hopkinson believed in
1884 and declared in a paper published in 1890, that
“alternate currents with alternate current ma-
chines as motors may theoretically be used for the
transmission of power,”
and Professor Sylvanus Thompson, in the edition in
1886 of his valuable work, declared, what was the
universal opinion, that
“ for the purpose of Supplying motors alternate
current machines are not yet practically available.”
Declarations that electric light machines could be
so reversed as to furnish power were merely theoretical
and gave no information to the public or to the In-
ventor of the method by which reversibility was to
be made useful to accomplish any result.
Eurthermore, the proposition assumes that the in-
ventor who undertook to use two-current alternating
machines as motors would naturally and without in-
vention use two transmitting circuits, and that they
would be so arranged as to preserve the electrical in-
13
dependence of each phase. Neither part of the as-
Sertion is based upon sufficient evidence and if it is
meant that the mechanic would, without the exercise
of invention, make such an arrangement in order to
preserve the independence of phase, the assumption is
very far from the truth, for, the conception of the
practical way by which alternating currents could be
used to transmit power to a distance was the result
of inventive thought and study. It is said, however,
that Baily in 1877 taught the art of how to make a
two-phase induction motor and how to connect such
motor to a two-phase source. Baily, in his experi-
ments with reversed currents, did not attempt to pro-
duce, what Tesla must have, a continuously rotating
field.
Another general proposition on the subject of non-
patentability is that reversed and alternating currents
are equivalents and were known to be such at the date
of the Tesla inventions and that therefore there was
no invention in substituting an induced alternating
current for Baily’s reversed current. The reversed
currents which are meant are alternate currents con-
verted by means of a commutator into direct currents
and again reconverted at the motor by another com-
mutator to an alternating current. The defendant is
again attempting to transfer general expressions used
by authors in regard to one subject, which may and
may not have been true, to a subject to which they
are not at all applicable. Reversed currents and
alternating currents, though they may be equivalents
for some purposes, such as electric signalling, are
not equivalents for transmission of power to a dis-
tance ; because reversed currents cannot practically
be used for that purpose. This is pointed out by .
Tesla in his essay which will hereafter be quoted at
length. The “commutation " of heavy currents which
are necessary for transmission of power to a distance
is daugerous to the machines and to human life and
the use of such reversed currents for power is im-
practicable as the experience of experimenters has
shown. The principal reason has already been noticed
14
and is stated in the following sentence in the testi-
mony of the complainant's expert :
“Perhaps, the most important one is that in
reversing direct currents the source must either
be short circuited, that is, have its terminals
directly connected together, or else the circuit
must be opened. The first of these is destructive
of the generator, and there is a tremendous arc
when the short circuit is removed which destroys
the commutator, and the breaking and subsequent
sudden reversal of the current is impracticable,
because of the spark which enables the current
still to flow, and which also destroys the com-
mutator.”
It is true that in the specification of Patent 382,280
Tesla said, . .
“With regard to that part of the invention which
consists in acting upon both elements of the motor
simultaneously, I regard the use of either alter-
nating or reversed currents as within the scope
of the invention, although I do not consider the
use of reversed currents as of any practical im-
portance ",
but that sentence was subsequently disclaimed and is
not now a part of the specification. -
The application of Charles S. Bradley for a patent,
dated May 9, 1887, is thought by the defendant
to have significance on the subject of patentability.
Bradley's alleged invention was a dynamo
“ which would generate an alternating or con-
tinuous current as desired.”
He described two currents obtained from the same
machine and says that they can be employed for any
purpose to which alternating currents are applicable,
and they may be used separately, One being used to
feed one circuit and the other to feed another circuit,
but he apparently did not in his application under-
stand any benefit resulting from the transmission of
two currents of different phase. The fact that they
15
had a difference of plase was not of value as a source
of power. It is not necessary to discuss the Bradley
application, for its inefficiency as related to Tesla's
invention is sufficiently stated by Judge TOWNSEND as
follows :
“ because Bradley's application is limited in
scope, and ambiguous and indefinite ; because it
fails to show that he had any conception of the
Tesla idea of ‘the utilization of the motor for the
purpose of progressively shifting the magnetic
poles of a plurality of alternating currents by
circuits which preserve the independence and
differing time relation of their phases '; because,
even if the idea had been first conceived by
Bradley, it was not sufficiently described to dis-
close the principle or method of operation ;
because Tesla was the first to reduce this prin-
ciple to practice, Bradley does not anticipate or .
limit.”
The defendant properly puts the most stress on the
Marcel Deprez publications, because he disclosed the
mathematics which Tesla utilized and gave a mathe-
matical demonstration of the rotating field. Complain-
ant's expert's admission on this point is as follows :
“The article demonstrated mathematically the
fact which is also stated in the Tesla patents, that
the polar line of an annular magnet may be shifted
about through the entire circumference of the ring
by the action of the magnetizing forces prop-
erly related.”
The articles in “Comptes Rendus” of 1883 “On the
Electrical Synchronism of Two Relative Motions and
its ;Application to the Construction of a New Electrical
Compass " describes his mechanism for the production
of a resultant magnetic field by winding coils upon a
ring in the manner described in the Tesla patent
381,968. The only application of mechanism or of ro-
tating field which he suggested was “a new electric
compass". This was all that Deprez practically
effected by what is called “ the theory of the parallelo-
16
gram of forces", for he had no idea of the utilization
of the principle or of alternating currents for the pur-
poses of electrical power, and, indeed, he declared in
a paper published in “La Lumiere Electrique " in
1884,
“I must further remark that alternating currents
are of no use in the transmission of power ; they
are suitable only for lighting purposes.”
What Deprez did was to show how a resultant mag-
netic field could be produced, but, as a matter of
course, he did not describe or suggest apparatus for
power. His electric signaling apparatus was not
adapted for any other object. The armature was
placed at the top of a mast, the action of the perma-
nent magnet that served as indicator
& C
was replaced by that of the earth, which is
sufficient ‘’
and no continuous rotating field was required. His
currents were so feeble as to be ineffectual for the
transmission of power to a distance and they were not
the alternating currents of Tesla. The invention, when
Deprez left it,
“ did not depend upon any constant, regular, pro-
gressive currents, and, so far as the evidence shows,
it was like the apparatus of Baily, confessedly a
mere laboratory experiment.”
His result of his remarkable mathematical investiga-
tions was summed up by Professor Sylvanus Thompson,
who said : “Deprez's theorem bore no fruit. It re-
mained a geometrical abstraction.”
It will thus be seen that attempts to use direct or
reversed currents for the transmission of power to a
distance had beefi a failure and that the use of true
alternating currents for that purpose was unknown.
This history enables us to understand the character of
Tesla's invention as he explained it in the paper which
he read about a fortnight after the date of his patents
17
to the American Institute of Electrical Engineers, and
which was in part as follows:
“The transmission of power on the contrary,
has been almost entirely confined to the use of
continuous currents, and hotwithstanding that
many efforts have been made to utilize alternating
currents for this purpose, they have, up to the
present, at least as far as is known, failed to give
the result desired.” ” * *
“The subject which I now have the pleasure of
bringing to your notice is a novel system of elec-
tric distribution, and transmission of power by
means of alternate currents, affording peculiar ad-
vantages, particularly in the way of motors, which
I am confident will at once establish the superior
adaptability of these currents to the transmission
of power and will show that many results hereto-
fore unattainable can be reached by their use ;
results which are very much desired in the prac-
tical operation of such systems and which cannot
be accomplished by means of continuous currents.
“Before going into a detailed description of
this system, I think it necessary to make a few
remarks with reference to certain conditions ex-
isting in continuous current generators and motors,
which, although generally known, are frequently
disregarded.
“In our dynamo machines, it is well known, we
generate alternate currents which we direct by
means of a commutator, a complicated device and
it may be justly said, the source of most of the
troubles experienced in the operation of the
machines. Now, the current so directed cannot
be utilized in the motor, but they must—again by
means of a similar unreliable device—be recon-
verted into their original state of alternate cur-
rents. The function of the commutator is entirely
external, and in no way does it affect the internal
working of the machines. In reality, therefore,
all machines are alternate current machines, the
currents appearing as continuous only in the ex-
ternal circuit during their transit from generator
to motor. In view simply of this fact, alternate
currents would commend themselves as a more di-
rect application of electrical energy, and the em-
ployment of continuous currents would only be
justified if we had dynamos which would primarily
18
generate, and motors which would be directly
actuated by such currents.
“But the operation of the commutator on a
motor is two-fold; firstly, it reverses the currents
through the motor, and secondly, it effects auto-
matically, a progressive shifting of the poles of
One of its magnetic constituents. Assuming,
therefore, that both of the useless operations in
the system, that is to say, the directing of the
alternating currents on the generator and revers-
ing the direct currents on the motor, be eliminated,
it would still be necessary in order to cause a
rotation of the motor, to produce a progressive
shifting of the poles of one of its elements, and
the question presented itself.-How to perform
this operation by the direct action of alternate cur-
rents 2 I will now proceed to show how this re-
sult was accomplished.”
He abandoned the use of reversed currents with
their troublesome and dangerous commutators, he em-
ployed true alternating currents differing in phase and
by means of their “rapidly successive opposing alter-
nations,” in a motor having corresponding circuits, he
created a continuously rotating field. The apparatus
by which his system was manifested consisted in the
use of two or more regularly rapidly recurring true
alternating currents, generated by a dynamo, differing
in phase and not interfering with each other, the al-
ternations so arranged as to regularly succeed each
other, connected to a motor having
“a plurality of circuits in which alternating cur-
rents of differing phase are produced"
without interference with each other, the currents of
the generator being connected to the motor by con-
nections so as to preserve the succession of phases by
means of which the magnetic poles of the motor are
constantly and progressively shifted. The successive
increasing and decreasing alternations of the currents
so regularly succeed each other that there never is a
“dead centre '' in the onward movement within the
motor. The use of true alternating currents and the
19
means by which they were made to create a continu-
ously whirling field by their direct action constituted
an invention of a remarkable character. Giving to De-
prez's theorem all the value to which it is entitled, its
application by Tesla to the production of a new, Origi-
mal and most beneficial practical result by new and de-
scribed means and the use of polyphase alternating
currents, in brief, by the polyphase system, and the
apparatus of Tesla was an invention of a very high
Order.
The defence of non-patentability was elaborated in
the record in the most painstaking manner, and with
abundant reference to statements and theories of
scientists who preceded Tesla and who were trying to
discover the laws of a mysterious natural force, the
utilization of which is still far from complete develop-
ment. Each was prospecting in a mine not thoroughly
explored and dimly lighted, and each produced some-
thing of value, but the attempt to minimize Tesla's in-
vention of the method of successfully using electricity
for very important purposes by means theretofore
thought to be impracticable rested upon a very inade-
quate foundation.
The question of infringement remains to be con-
sidered.
The defendant uses at its granite works in Concord,
New Hampshire, three motors called Cushman motors.
The three-phase alternating current by which these
motors are operated is furnished from a three-phase
alternating generator at a water power station on the
Merrimac river, a distance of three and three-quarters
miles from, the granite quarry.
“In this construction no circuit consists of two
conductors specially divided in one of the differ-
ing phase currents. In the patented apparatus,
each one of the independent circuits is specially de-
voted to a single One of the differing phase cur-
rents.”
Claim 1 of No. 381,968, requires separate or inde-
pendent circuits on the armature or field magnet, and
20
each patent also calls for independency of circuits.
The defendant, therefore, insists :
“That the term independent as used by Tesla.
means such separation as is consistent with hav-
ing the complete circuits traversed by the same
currents—currents which at any and every point
are of the same quantity, intensity and phase, so
that, as Mr. Clarke puts it, each motor circuit re-
ceives its current from a corresponding generator
circuit and from no other. It caumot refer to
circuits which are interdependent in such sense
that two of the circuits are at times strictly in
series with one another and in multiple with the
third, and so are not ‘independent in any sense.
The whole system is an interdependent and not
an independent system.”
In other words, the defendant construes the claim
of each patent to require physical independency of
circuits. In this connection it is proper to quote one
clause of the specification of No. 381,968, in which the
patentee said :
“By ‘independent' I do not mean to imply
that the circuits are necessarily isolated from one
another, for in some instances there might be
electrical connections between them to regulate
or modify the action of the motor without neces-
sarily producing a new or different action.”
The meaning of the clause is that independent cir-
cuits are not necessarily circuits isolated from each
other, and that electrical connections are permitted, if
they do not interfere with the electrical independency
of the circuits.
|Upon the question whether the so-called interde-
pendency of the defendant's circuits carries its system
outside of the Tesla system, much space is occupied
in the record and if the defendant's contention is cor-
rect, the Tesla Patents are worthless to their owner,
because in order to accomplish the Tesla result actual
physical separation and isolation of the circuits is not
at all necessary. It is an evident fact that the de-
21
fendant's circuits are operatively independent and that,
as the word independent is used by electricians, they
are electrically independent. The word was used, as it
was wont to be used by electricians to mean independent
in an electrical sense. With the conclusion of Judge
Towns BND upon this much discussed question of the
interpretation of the adjective independent we entirely
agree :—
“Inasmuch as the defendants have not invented
any new idea, but have adopted an old contrivance
which performs the same result in substantially
the same way by a formal and unsubstantial
change in means, and by circuits which while in
some sense interdependent, are operatively inde.
pendent, and which preserve and utilize the vital
element, independence of phase, these circuits
must be held to be the equivalents of the inde-
pendent circuits of the patent, the word inde-
pendent being interpreted to mean operatively
independent, so as to embrace the true spirit and
essence of the Tesla invention.”
The defendant also makes the point upon the sub-
ject of infringement that patents Nos. 381,968 and
382,280 are limited to synchronous motors and, there-
fore, are not infringed by the defendant's non-synchro-
nous motor. The defendant defines the difference as
follows:–
“Alternating current motors are synchronous
and non-synchronous depending on whether their
armatures rotate at the same speed as the element
in the generator which produces the alternations.”
The defendant asserts that the two broader patents
in this case, one for the Tesla method and the other for
the mechanism by which the method was carried into
practice described synchronous motors. On the other
hand, it is said that they described both classes, be-
cause the motor of the system shown in figure 9 was
non-synchronous. Whether this is true or not, it is
not, in Our Opinion, important to decide, because,
assuming that the patents did describe synchronous
22
motors only and that synchronism was one of the con-
fessed advantages of the system, the claims of patents
381,968 and 382,280 did not make and did not intend
to make synchronism a part of either claim but were
for the invention which was broadly described in
the single claim of patent 382,280 and in claim 1
of patent 381,968. These claims rightfully gave to
Tesla, the benefit of the use of what he called
his
“ novel system of electric distribution and trans-
mission of power by means of alternate currents,”
whereas, patent No. 382,279 was for the motor
specially described therein, having in claim 1 the ele-
ment of closed induced circuits, and which is said to
be non-synchronous.
Non-infringement of Claim 3 of No. 381,968 and
claim 3 of 382,279 upon the ground that the defend-
ant's field magnet is not annular or ring-shaped, is
also suggested. Its magnet is ring-shaped, having
slots on the inner face for imbedding the conductors,
and the objection is without substance.
The defendant attempts to escape the charge of
infringement by introducing into the claims limitations
which are not called for by their language or by the
scope of the invention and by forgetting the position
of the invention in the development of the use of
alternating currents for power purposes.
The decree of the Circuit Court is affirmed with
costs.
FREDERIC H. BETTS and THOMAS B. KERR (LEONARD
E. CURTIs, on the brief), for complainant.
CHARLES E. MITCHELL and HENRY B. BROWNELL for
the defendant.
A true copy.
WM. PARKIN,
[SEAL.] Clerk.
7- 366,362.
2.23
7-? No. 1.
w83 508,654.
No. 1.
Opinion—Circuit Court.
()il and Water Cooled Transformer Cases.
Westinghouse Patent 366,362,
Thomson Patent 508,654.
Full text of Judge Hazel's Opinion in the cases of
Westinghouse Electric and Manufacturing Co.,
= aomplaznant, vs. Union Carbide Co., Defendant,
and Thomson-Houston Electric Co.,
Complaznant, vs. same, filed in the
U. S. Circuit Court, Western
District of New York,
Nov. II, IQoI.
c. G. Burgoyne, Walker and Centre Streets, N. Y.
In the Circuit Court of the United States
FOR THE WESTERN DISTRICT OF NEW YORK,
WESTINGHOUSE ELECTRIC & MANU-
FACTURING COMPANY.,
Complainant,
WS.
UNION CARBIDE COMPANY.,
JDéfendant.
THOMSON-HOUSTON ELECTRIC
COMPANY.,
Complainant,
WS.
|UNION CARBIDE COMPANY.,
Defendant.
IN EQUITY.
RERR, PAGE & COOPER, for complainants.
ALFRED W. GRAY and GEORGE CLINTON, for defend-
ants. & • .
A. C. Fowl.ER, of counsel.
|HAZEL, D. J.
These two suits in equity for infringement of United
States Letters Patent, No. 366,362, granted to George
Westinghouse, Jr. July 12, 1887, and No. 508,654, is-
2
sued to Elihu Thomson, November 14, 1893, substan-
tially relate to the same general subject. They are for
improvements in electrical converters or transformers. .
The suits were heard at the same time by consent of
parties. The complainants own the patents by assign-
ments and are jointly interested as cross-licensees.
Patent No. 366,362, relates to the construction of an
apparatus for transforming alternating currents
“ into currents differing therefrom in certain char-
acteristics.”
The object of the invention is thus stated in the
patent,
“To provide a simple and efficient converter
which will not become overheated when em-
ployed for a long time in transforming currents of
high electromotive force, and which will be thor-
oughly ventilated.”
The specifications after describing in detail the ac-
companying drawings, which set forth features of the
invention, contain the following :
“It may be preferred in some instances to sur-
round the converter with some oil or paraffine or
other suitable material, which will assist in pre-
serving insulation and will not be injured by heat-
ing. This material when in a liquid form circu-
lates through the tubes and the intervening spaces
of the coils and plates, and preserves the insulation,
excludes the moisture, and cools the converter.”
The patent has five claims. The fourth only is stated
to be infringed. It reads as follows :-
“The combination, substantially as described, of
an electric converter constructed with Open spaces
in its core, an inclosing-case, and a non-conduct-
ing fluid or gas in said case adapted to circulate
through said spaces and about the converter.”
Batent No. 508,654, is designed for transformer sub-
stations of comparatively large capacity, requiring care
3
to prevent excessive heating, especially when they are
kept in long continuous operation. The patent states
that,
“Heretofore it has been customary to immerse
transformers in oil contained within a metal cas-
ing, whereby heat is conducted and radiated away
from the transformer. But there are many install-
ations where such means of cooling are impractica-
ble or insufficient, as for instance, where trans-
formers are built into the walls of buildings or
located in underground chambers, where the cas-
ing cannot be ventilated, or where, with large trans-
formers immersed in oil, insufficient radiating Sur-
face is obtainable to prevent overheating. For
such installations as these it is specially desirable
to provide an artificial cooling medium, as con-
templated in the present invention.”
The patentee claims as new,
“1. The combination of a receptacle or chamber
containing one or more transformers surrounded
by oil or like insulating fluid, with a cooling medium
circulating in a pipe passing through a greater or
less portion of the fluid, as set forth. -
“2. The combination with a receptacle contain-
ing one or more transformers surrounded by an
insulating fluid, of a pipe passing through said
chamber and fluid, and means for causing a cool-
ing medium to flow through said pipe, substan-
tially as described.”
The answer in each case pleads anticipation and
want of novelty. It was stipulated at the time of tak-
ing proofs that defendant had in use one or more trans-
formers described by patents in suit, at its works, sub-
sequent to the grant and assignment of Said patents to
complainants. If then the defense of anticipation
and want of novelty fails, infringement is admitted.
The Wagner Electric Manufacturing Company of St.
Louis, Mo. furnished the alleged infringing transform-
ers to the defendant, and it may, therefore, be regarded
4
as the real defendant in each case. A brief recital of the
state of the art will aid to a better understanding of the
patents. The discovery and perfection of mechanical
generators for the production of electrical current
energy demanded an exact distribution and apportion-
ment of the generated electricity for its employment in
the many uses to which it could be commercially ap-
plied. By the generator, an alternating current is pro-
duced which changes uniformly in strength and in-
tensity and flows successively in one direction until it
reaches a maximum, and thereupon gradually dimin-
ishes in intensity until it ceases, only to immediately
begin its flow in the opposite direction. For this
reason, great difficulty was experienced in bringing this
powerful current, for the purpose of distribution, within
such desired control as to permit its utilization for
lighting, power and many other purposes. Commu-
tators having for an object the rectifying of alternating
currents so as to secure uniformity of direction were
invented and proved highly successful. An apparent
obstacle, however, was the limitation which the use of
the commutator and dynamo imposed upon the gene-
rating capacity and upon the distance to which the
electricity could be transmitted and assigned for its
useful and extensive application. The practicability
of varying the volume and pressure of a primary and
secondary current, so-called, with reference to each
other, was completely demonstrated by changing the
relative length of the primary and secondary circuits
within the influence of an alternating magnetic field.
This was accomplished by the numerical arrangement
of the coils encircling the core. In this manner a
volume and pressure of the induced and inducing cur-
rent, may be equalized. By similar arrangement or by
the varying size, thickness, character or stability of the
surrounding coils, a current of the desired intensity is
obtainable. Thus the problem of simultaneous gene-
ration of electricity and its distribution at either high
or low pressure, was solved. The apparatus required
5
for this purpose, was named a converter or induction
coil, and latterly, a transformer. It is composed of
two coils of insulated copper wire, wound around an
iron core or frame near each other. They are desig-
nated primary and secondary coils, respectively. The
former initially receives the electric current from the
generator and magnetizes the core, which thereupon
becomes a conductor from the primary to the second-
ary coil. The particular purpose and object of trans-
formers is tersely stated in defendant's brief, to be
“An apparatus whereby the current is generally
transformed or converted from a certain pressure
and quantity, to a certain other pressure and quan-
tity, or it may be transformed or converted to the
same pressure or quantity, but usually is trans-
formed or converted from a higher pressure and
smaller quantity to lower pressure and larger
quantity, in order that high pressures may be
transmitted on the lines outside of buildings and
transformed or colverted to lower pressure and
greater quantity for use in buildings.”
Their utility is well established. It has resulted in
the expansion of the use of electric energy to such an
extent that there is substantial basis for the claim that
the invention of the static transformer and subsequent
improvements, has created a surprisingly memorable
period in the development of electric science, followed
by amazing commercial success. It made possible the
utilization of electricity at far distant points, as well
as its application in various ways,
“and in any desired machine from motors de-
veloping hundreds of horse power to the fragile
filaments of incandescent lamps.”
Noteworthy as was the success attained by the gene-
rator, dynamo and commutator, the surprisingly note-
worthy advance in electrology made possible by the
transformer, is equally deserving of great praise. That
6
improvements were needed to adapt the transformer
to the manifold uses anticipated by those skilled in the
art, is not astonishing. The necessity of rapidly mag-
netizing and demagnetizing the core in a transformer
resulted in the production of a great amount of heat
and a consequent loss of electrical energy. In order
to obviate this difficulty the plates which constitute
the core were made of laminated iron, so as to sup-
press the eddy currents in the core which caused the
heating. This brings on a discussion of the patents in
suit. The core of the Westinghouse patent is com-
posed of thin plates of Soft iron, in groups having sec-
tional Openings and separated by thin sheets of paper
or other insulating material. The insulating material
is so arranged as to magnetically separate the plates in
pairs. The method of constructing an induction coil
or transformer, having a core of thin plates, is dis-
claimed by the patentee. It is not claimed to be new
in the art to arrange a transformer so as to accomplish
a means of ventilation of the parts and thereby prevent
a waste of energy through heating.
The claim is that by the arrangement of the various
known elements and by the introduction of new ele-
ments, to wit : dividing the iron into sections, and
separating the coils, thereby increasing the surface over
which heat dissipation in the core and coils may be
carried on, aided by oil as an insulating material, and
adding an inclosing case, a new combination producing
a new and beneficial result not before attained, is con-
tributed to the art. The mechanical parts of the
transformer are immovable and compact. They are so
constructed as to enable the employment of a closed
circuit of magnetic material. By this arrangement of
the parts, a superiority was undoubtedly obtained in
durability, efficiency and cheapness over prior trans-
forming devices. The tendency of the transformers to
become overheated, however, was an obstacle retarding
their use for long distance lighting, transmission of
power and other purposes. It was at this period that
7
the Westinghouse patent in suit, was conceived. Both
the Westinghouse and Thomson patents in suit are for a
combination of old and new elements. It is well settled
that the right to patentability is established when the
combination performs new and additional functions,
and accomplishes new and additional results. 1 Robb
on Pat. § 115; Cantrell v. Wallick, 117 U. S. 695.
What was the achievement of the Westinghouse and
Thomson patents 2 The proofs show that more or less
experimenting was required to develop the transformer
in the then state of the art, so as to secure the trans-
mission of higher electrical energy. The disposition
of heat was a most serious question. Different sizes of
transformers varying from one-half kilowatt to seven
and one-half kilowatts were then in commercial use.
Larger sizes, fifteen to thirty kilowatts, had been
started experimentally. In employing the larger sizes,
a lower current density in the copper and lower mag-
netic density in the iron was necessary than in the
smaller sizes. This greatly increased the expense of
production of the required electrical energy. Later
experiments proved the efficacy of filling the trans-
former cases with oil for reducing the temperature, and
thereupon fifteen and thirty kilowatt transformers were
advantageously operative, although heat convection
still continued of such a nature as to require addi-
tional thought and labor. What Westinghouse failed
to accomplish was later successfully performed by the
invention of Thomson.
I am of the opinion that the invention of Westing-
house, consisting of a combination of elements, unless
anticipated by the prior state of the art, is a distinc-
tive step forward in the progress of electrology in the
light of the immediate recognition which it received by
the public. It does not seem to me under the circum-
stances to have been obvious to those skilled in the
art. Experiments were continued to further advance
and make useful static transformers. In speaking of
the efficacy of the Thomson transformer, and the sur-
S
prising advance made by this invention over the state
of the art, Professor Moody, complainant's witness,
says :
“Even with this aid to the cooling (oil), how-
ever, the temperatures of these 15 and 30 kilowatt
sizes were much higher than we deemed safe, and
many experimental forms were made with the idea
of producing a design which had a larger external
surface compared with its volume. Such distor-
tions of the design made it necessary to use more
material to produce the transformer of a given
efficiency of operation, and when finally, a design
was decided upon for manufacture, there was a
disappointing failure to produce a transformer of
less cost per kilowatt as compared with the smaller
sizes already produced in large quantities. * * *
A later development, therefore, has been the use
of coils of pipe through which water can be cir-
culated and which are placed in the oil of the
transformer. * * * By making use of the
various methods above described, no insurmount-
able difficulty has been experienced in building
the largest unit yet called for commercially, which
so far as my experience goes, stops at a 2500
horse power unit, equaling about 1900 K. W.”
The testimony shows that the experiments that were
made to attain the desired efficiency of the transformer
in the then state of the art, required thought, labor
and skill of exceptional character. The greatest ad-
vantage, however, followed the use of water as a cool-
ing medium at a temperature materially lower than
the surrounding air. The Superfluous heat being thus
absorbed, the difficulty theretofore existing was over-
come. No insuperable obstacle was thereafter experi-
enced, and the Thomson transformers, capable of fur-
nishing the increased unit of horse power for long dis-
tance commercial purposes, went into immediate use.
This production was the result of invention. Prior
thereto, what seemed to be insurmountable obstacles
were presented. When the necessity for heat dissipa-
9
tion was gravest, and when further progress as ar-
rested, no one familiar with these appliances, and
many able minds were engaged in electrical research,-
came forward to suggest any remedial means employ-
ing mere mechanical skill or knowledge adaptable to
similar appliances already in the field. It was Only
after patient endeavor and laborious experiment that
success was attained. Loom. Co. v. Higgins, 105 U. S.
580 ; Potts vs. Creager, 155 U. S. 597; International
Co. v. Richmond, 30 Fed. 775; Vickers v. Siddell,
Law Reports, H. L., 1890, Vol. 15; Keystone Mfg. Co.
v. Adams, 151 U. S. 145. The public instantly recog-
nized both patents in suit as an improvement on the
prior art. Indeed, the proofs show that the maximum
of large size dry transformers, transformers without
sectional openings in the core, and without the use of
oil as an insulating material,—is ten kilowatts Or thir-
teen to fourteen horse power, while that of the large
size transformers of the Westinghouse patent in suit is
five hundred kilowatts or from six hundred and fifty to
seven hundred horse power. The use of coils of pipe
through which water can be circulated and which are
placed in the oil of the static transformer, found in the
Thomson patent, increases the number of kilowatts to
at least 2000. The union of elements contained in the
two patents in suit is not embraced or contained in any
similar patented devices. The defendant contends that
the various elements of claim 4 in the Westinghouse
patent and claims 1 and 2 of the Thomson patent, are
old. Old though some of them are, they have been
joined together for the first time by the patentees, who
are the original and first inventors. Simple though
the inventions may appear, they were produced as a
result of labor and study. The degree of labor and
thought is unimportant in view of the practical utility
of the invention. Many v. Sizer, 1 Fish, P. R. 17 ;
Carr v. Rice, id. 198. The combination adopted by
the complainants in each suit, produces a new result,
dependent upon the union of various elements never
10
before combined together. The result is not merely
an aggregation of the component parts, but a co-opera-
tion of all the elements producing a new result by their
union. Hailes v. Van Wormer, 20 Wall, 353 ; Recken-
dorfer v. Faber, 92 U. S. 357; Pickering v. McCul-
lough, 104 U. S. 318.
I have given examination to such of the patents as
are claimed on argument to anticipate the combina-
tions of the patents in suit. I incline to the belief that
the elements of the patents in suit, constituting the
combination for which the patents were issued, are not
anticipated. I have already stated that in my judg-
ment the various elements found in both patents sued
on, have never before been combined together, and
that the union of elements contained in each patent is
not embraced in any similar patented inventions. The
combination itself being new, the effectiveness and
efficiency of both transformers being increased,—a fact
quickly recognized by the public—it becomes obviously
unnecessary to especially point out in detail the vari-
ous differentiating structural features found in patents
claimed to be anticipatory. Many of the patents cited
to anticipate the Westinghouse patent relate to patents
for dynamo-electric machines and other electrical de-
vices, including transformers. None of them point out
a way to dissipate the heat, although a number of
them were designed to prevent waste energy produced
by heat. In none of them is found the combination of
elements contained in the Westinghouse patent in suit.
The Pike and Barnett patents are for transformers im-
mersed in oil in a casing connected with pipes passing
to an elevated oil receptacle stationed near the trans-
forming apparatus for the purpose of increasing the
radiating surface. The liquid is maintained in con-
stant circulation around and through the coil by the
change of specific gravity due to the change of tem-
perature of the oil. The heat may be extracted by a
water jacket connected with the vessel containing the
oil. In the Thomson patent, as we have seen, a coil of
11
the pipe, through which the water constantly circulates,
passes through the transforming chamber, and oil, or
other conducting fluid contained therein. No extended
external Service or separate apparatus is required to
make the Thomson patent operative. A receptacle or
chamber is constructed of sufficient size to contain one
or more transformers surrounded by oil. The oil is
cooled in the transforming chamber, and not as in the
Pike and Barnett patent in a separate vessel elevated
from the transformer, and evidently was, as the patent
states, designed to be built into walls of buildings, or
located in underground chambers. I do not think
these patents anticipate that of Thomson. None of
the others, in view of what has been stated, need be
discussed.
The point is made by defendant that inasmuch as
various claims contained in the Original application
filed in the patent office for the Westinghouse patent
in suit, were rejected by the Commissioners of Patents,
were thereafter cancelled and substitution of other
claims allowed, that the patentee conceded among
other things that open spaces between the coils were
not new, nor was it new to have gas or non-conducting
fluid adapted to circulate through the spaces, and about
the transformer. All that may have been done by the
patentee, yet a patent for a combination of old and new
elements co-operating together, was granted him by the
patent office, and the presumption of patentability to
which he is entitled by reason thereof, has not been
overcome by the defendant. The Westinghouse patent
stated that the plates are preferably separated and
that it may be preferred in some instances to surround
the transformer with oil or paraffine or other suitable
material. It is stated by the patent that
“ the converter or transformer may be sealed in an
enclosing case, and may or may not contain a non-
conducting fluid or gas.”
It is insisted that these are matters of preference or
recommendation only, and do not constitute essential
12
features of the patent, but this, however, must be read
with claim 4 of the patent. It is quite true that a
feature which is mentioned only by way of recommen-
dation in describing an invention must usually be con-
sidered as a subordinate and not an essential part of
the patent. Holliday v. Pickhardt, 29 Fed. 852; Sewall
v. Jones, 91 U. S. 171 ; Ansonia Co. v. Electrical Sup-
ply Co., 144 U. S. 11; Krajowski v. Pharr, 105 Fed.
514. But the claim upon which complainant, relies still
clearly indicates the intention of the patentee to claim
as essential the features described by the specifications,
as preferably employed. Decree for complainant may
be entered in each case.
©
JNITED STATES OF AMERICA, SS
Western District of New York. e
I, HARRIs S. WILLIAMS, Clerk of the Circuit Court of
the United States, for the Western District of New
York, do hereby certify that I have compared the an-
nexed copy of opinion with the Original entered and
on file in this office, and that the same is a correct
transcript therefrom, and of the whole of said original.
And I further certify that I am the officer in whose
custody it is required by law to be. .
In Testimony Whereof, I have caused the
seal of the said Court to be affixed at .
[SEAL.] the City of Buffalo, in said District,
this 19th day of November, A. D.,
1901. w
HARRIs S. WILLIAMs
Clerk.
[19146]
, , . . . . . . . . . . . 4.69.8O9
. . . * , , , ; - s - 9 O
- * * : * * *
* g . *:: * '.' No. 3.
*AP Bi º -
Opinion—Court of Appeals.
Self-Regulating Transformer Case.
(Stanley Patent No. 469,809). -
Full text of Opinion of Court of Appeals in the case of
Westinghouse Electric and Manufacturing Co., g
-: Complainant, vs. Saranac Lake Electric
Light Co., Defendant, filed in the U. S.
Circuit Court of Appeals, Second
Circuit, Jan. I4, 1902.
C. G. Burgoyne, Walker and Centre Streets, N. Y.
United States (irſlitſ Ollíðf AD)Băls,
SECOND CIRCUIT.
WESTINGHOUSE ELECTRIC AND MANU- |
FACTURING COMPANY.,
Complainant-Appellant,
WS.
SARANAC LAKE ELECTRIC LIGHT
COMPANY.,
Defendant-Appellee. \ October Term,
1901.
THE SAME,
Complainant-Appellee,
WS.
THE SAME, º
Defendant-Appellant. |
These are cross appeals from a decree of the Circuit,
Court, Northern District of New York. Suit was
brought by complainant upon reissued Letters Patent
11,031 to Rankin Kennedy, September 24, 1889 and
letters patent 469,809 to William Stanley, March 1,
1892. The Circuit Court held the Rennedy patent
void, and the first and third claims of the Stanley pat-
ent to be valid and infringed.
LACOMBE, Circuit Judge.
The Kennedy patent is for an improvement in the
method of distributing and regulating alternating elec-
tric currents by Secondary generators. The patentee
arranged secondary generators (transformers) in mul-
tiple ; they had theretofore been arranged in series.
When so arranged they became self-regulating as to
primary current and power ; in other words, each trans-
former would take its proper share of current, varying
according to the number of lights burning on it, so
that the lights. On one transformer were independent
of the lights on another transformer. In the more
technical language of the claim, the system
“consists in producing in two or more derived
circuits constituting the primaries of two or more
secondary generators a counter electro-motive
force which, when any secondary is open, is prac-
tically equal to the applied electro-motive force in
its primary and in controlling said electro-motive
force by the current flowing in the corresponding
secondary when the secondary is closed, in such
manner that the current in the primary shall vary
with and be approximately inversely proportional
to the resistance in the secondary.”
The Judge who heard the cause at circuit held,
among other things, that certain acts and Omissions of
Rennedy taken together worked an abandonment and
dedication of his alleged invention to the public. We
fully concur in his discussion of this branch of the
case, which will be found in his opinion, and deem it
unnecessary to add anything further, affirming so much
of the decree as disposes of the Kennedy patent upon
such opinion.
The patent to Stanley deals with the same branch
of the electric art and is an improvement on Ken-
nedy's. After Kennedy had arranged his transform-
ers in multiple, the lights on One transformer were
independent of those on another, but nevertheless
3
the candle-power on any given transformer changed
as the number of lamps lighted on that transformer
varied. When more lamps were turned on the candle-
power of all went down, and when lamps were turned
off, the candle-power of those remaining increased.
Stanley's improvement was directed toward overcoming
this defect.
The specification says:
“The factors of the operation of my system of
distribution are employment of an alternating-
current generator supplying currents of approxi-
mately constant potential, main lines extending
throughout the system of distribution, converters.
or transformers connected thereto, and translating
devices located in the secondary circuits of the
transformers, by the employment of which a sym-
pathetic relation exists between the different
operations of the system to the end of maintain-
ing a simple and accurate Self-regulation, so that
the absorption of energy by the generator is pro-
portional to the energy usefully consumed. The
current developed by the dynamo D may be of as.
high potential as desired. * * * These con-
verters may be of any construction; but are pre-
ferably constructed to have the greatest magnetic
conductivity in their magnetic circuits.
“There are certain principles of construction
which must be adhered to in the proportioning of
the parts of the converter in Order to secure the
desired results and which I will now state. It is
necessary in the first place that the conductivity
for magnetic force of the magnetic circuit of the
converter shall be of so great value that when
subject to all degrees of magnetization accruing
from the various amounts of energy transformed
its conductivity for magnetic force would be ap-
proximately the same. This point of construction
is important for two reasons: First, the greatest.
economy of conversion is obtained when the rise
and fall of magnetism in the core is proportional
as nearly as possible to the rise and fall of the
current in the primary coil, and this condition is
attainable only by keeping the core far below the
Saturation-point, and, second, the same condition
4.
secures the largest possible counter electro-motive
force in the primary coils of the converters. This
is indispensable for regulation, as hereinafter set
forth. It is impossible to state the exact relation
between the weight of the core and the strength
of the current. I have found the minimum
amount of iron necessary to produce satisfactory
results to be one pound of iron for every twenty-
five watts, which amount is equivalent to two
pounds of iron per lamp with the lamps hereto-
fore generally used by me. * * *
“In the construction of the coils P and S, the
following principles are to be observed: The first
thing to be determined is the length of the primary
wire. This should be of such length that reacting
self-inductively upon its own magnetic circuit the
average counter-potential so produced approxi-
mately equals the potential applied to the primary
circuit. When so constructed, an ammeter will
practically show no current when the secondary
circuit is open. To obtain these results in
practice I use the following method: I first
choose the percentage of efficiency to be obtained.
Then having selected a type of magnetic circuit
affording as great magnetic conductivity as possi-
ble I apply such a length of primary conductor
that acting self-inductively upon its core the differ-
ence of the counter-potential and applied po-
tential multiplied by the current in the converter
shall equal the predetermined loss of energy inevi-
table in conversion and vary the length of pri-
mary wire until the desired results are attained.
It is obvious that the coefficients of induction in
the dynamo and armature and converter may be
made equal by emergizing each circuit with the
same induction.
“In the carrying out of my invention it is
possible to use the same coefficients of induction
in the armature and the dynamo as are present in
the primary circuit of the converter ; but this
equality is not necessary. Having by these means
determined the length of the primary coils, the
Secondary is adapted to it in such a manner as
to secure the desired potential according to the
well-known laws effecting the operation of induc-
tion-coils. I have usually related the potential
of the secondary to the primary in the ratio of
5
twelity to one. The size of the wire in the pri-
mary and secondary coils is in inverse proportion
to their electro-motive forces.”
The claims involved are :
“1. In a system of electrical distribution, and
in combination, an alternating-current dynamo
and converters electrically connected with the
main-line conductors in multiple arc and Organ-
ized to transform the current in the main conduct-
ors into currents of less potential and greater
quantity in the secondaries, each converter made
with a primary coil containing such length of
wire exposed to magneto-electric induction that
when operated by the dynamo with which it is to
be used with its secondary circuit open the elec-
trical pressure and counter-pressure in its
primary circuit shall be equal with incandescent
lamps or other translating devices in the secondary
circuits, substantially as and for the purposes set.
forth.
“3. In a system of electrical distribution, and
in combination, an alternating-current dynamo.
and converters organized to transform the current.
generated by the dynamo, into currents of less
potential and greater quantity at or near the
points of consumption electrically connected with
the main-line conductors in multiple arc and hav-
ing their primary circuits constantly closed, each
converter adapted to the dynamo Operating the
system by making its primary coil of such length
that when supplied with its full proportionate
share of the entire normal electro-motive force of
the machine, its secondary circuit being open, the
electrical pressure and counter-pressure in its
primary circuit shall be approximately equal with
translating devices in the secondary circuits of
the converters to be cut out of the circuit when
not in use without the introduction of any resist-
ance in the place of them, substantially as and for
the purposes set forth.”
As stated before, after the Kennedy improvement a
difficulty still existed in that the candle power went up.
or down as lamps on any particular transformer were
6
turned on or off. Stanley suggested that the diffi-
culty was due to an improper length of wire on the
primary ; and among much else he states precisely,
specifically and exactly what that length should be.
The amount of wire for a given character of current-
supply cannot be stated in feet and inches because
it is, to some extent, dependent upon other
things, such as the quality of iron employed in the
core, the quality of copper used in the coils, the shape
of the transformer, and the way the coils are applied.
The Stanley patent, recognizing these variable ele-
ments, gives a rule applicable to all conditions. It
says you may determine the proper length of the
primary coil by connecting the transformer in circuit
with the dynamo with which it is to be used, and then
winding on wire until the loss indicated by the form-
ula C* R, with the secondary circuit open, equals a
certain loss of energy,
The field of invention lies in that obscure and diffi-
cult art, which is so hard to be understood by those
who have not constant practical experience with its
phenomena, its laws, and its momenclature, and deals
with a branch of that art which is still evidently in dis-
pute between those who have carefully studied it. It is
fortunate, therefore, that we find the concession in
defendants brief that the rule above set forth for de-
termining just what shall be the length of primary
coil is not found in any prior patents or publications,
for, with this concession, it is easy to determine from
the record that there is no anticipation shown. It is
contended, however, by the defendant that this so-
called Stanley rule is no part of the invention claimed ;
that there is nothing in the claims requiring the rule
to be considered as a part of the invention thereby
covered ; that it is merely in the nature of a recom-
mendation, the patentee saying :
“In practice I use the following method. ",
being the so-called rule. The first claim, (and in that
7
respect the third claim uses similar language) pre-
scribes for the primary coil
“ such length of wire exposed to magneto-electric
induction that when Operated by the dynamo with
which it is to be used ''
under certain conditions, certain results will fol-
low. Concededly the man skilled in the art would
not have found in that art anything which would
have told him precisely what that length of wire
should be. The claim does not give any formula for
determining what it should be, and if the specification
were equally silent, there might be some question as
to whether Stanley had really contributed anything of
importance to the art ; certainly it would yet remain
for others to inform the art just how to find out a
length which would operate as indicated in the claim.
But when the patentee in his claim enumerates as one
element of his combination a wire of a length which
will accomplish the result sought to be achieved, and
his patent discloses a method for determining that
length with mathematical exactness, his claim may
fairly be sustained for the length thus shown, although
it might be that some other length covered by the lan-
guage of the claim but not of the rule, would fall out-
side the claim. The
“length of wire exposed etc., operated by etc.
* * * substantially as set forth ",
is the length of wire that the specification shows as the
result of a given formula. The so-called Stanley rule is,
therefore, a part of the invention disclosed and claimed
in the patent :—indeed it would seem to be the main
part of that invention—and with the patent thus con-
strued the citations from the prior art show neither an-
ticipation or lack of invention. The whole argument
of defendants on that branch of the case is so inter-
woven with the postulate flat the Stanley rule is to
be eliminated from the patent that when the
8
postulate is not granted the argument becomes wholly
unpersuasive.
The application for the Stanley patent was filed
Aug. 15, 1888, and defendant contends that prior to
August 15, 1886, there was a public use by Stanley, at
Great Barrington, Massachusetts, of which town he
was a resident, of a system of electrical distribution
embodying the combination of apparatus described
and claimed in his patent. The testimony touching
this alleged public use more than two years prior to
application is voluminous and the Judge who heard
the cause at circuit has reviewed it at length. The
combination of apparatus was set up there, wires were
strung, lights were lit in the premises of users in the
town, and the plant run, with some intermissions,
from March 16th to June 16th, when the dynamo broke
down and it was never operated again. A charge was
made for lights, an extremely small one, insufficient to
pay expenses, and intended really as a convenient way
by which Stanley might avoid embroiling himself with
his neighbors, as he probably would do, if he gave
free light to some and not to all ; the plant was not
large enough to furnish all the lights the town could
use. The invention was of a character which required
testing under conditions which could be found only
when the test was made in public and continued
for a reasonable length of time, and under the
authorities the charging of a unremunerative price
for the product of the combination is not abso-
lutely controlling, though it raises a presumption
against experimental use, which can be overcome
only by clear and convincing evidence. We concur
with the judge at circuit in the conclusion that the use
was experimental and in the argument by which he
reached that conclusion, except that we are inclined
to attach little, if any, weight to the fact that the en-
gine and generator were out of public view in an old
mill, and the converters locked up ; such protection
against the elements and against tampering with im-
9
portant and dangerous parts of the apparatus would
be expected in purely commercial public use. The
most persuasive evidence in our opinion is found in
the circumstance that when the Great Barrington
plant broke down after its brief experience, the per-
sons in control of the Westinghouse Company for
whose benefit (as assignee of the future patent) the
combination of apparatus was kept at work, were still
so unconvinced that the practical success of the sys-
tem had been demonstrated that they expended thou-
sands of dollars more in erecting another plant for a
further use of the combination of apparatus at Law-
renceville, -a use that concededly was wholly experi-
mental.
Infringement of the first and third claims is not
substantially disputed except upon the theory that
the amount of iron contained in the cores of defend-
ant's transformers is such as to take them out of the
claims of the patent. The claims do not specify
any particular amount of iron, but defendant con-
tends that a statement in the specification [guoted
above] to the effect that the minimum amount
of iron should be
“one pound of iron for every 25 watts "
must be read into the claims. A careful perusal of the
text of the specification shows this contention to be
unsound. The patentee states that there are certain
“principles of construction which must be adhered
Žo ” º
in proportioning the parts of the converter in order to
secure the desired results: that “it is necessary" that
the conductivity for magnetic force of the magnetic
current of the converter shall be of so great value that
when subject to all degrees of magnetization accruing
10
from the various amounts of energy transformed its
conductivity for magnetic force would be approximately
the same : that
“this point of construction is important for two
reasons: first, the greatest economy of conversion
is obtained where the rise and fall of magnetism
in the core is proportional as nearly as possible
to the rise and fall of the current in the primary
coil, and this condition is attainable only by keep-
ing the core far below the saturation-point, and,
Second, the same condition secures the largest
possible counter electro-motive force in the prim-
ary coils of the converters ”.
This, says the patentee in his specification, “ is in-
dispensable for regulation ". Having thus set forth an
“indispensable principle of construction", which may
fairly be read into the claim, the patentee, in quite
different language, states the precise proportion of iron
to current which he has used successfully.
“It is impossible", he says, “to state the exact
relation between the weight of the core and the
strength of the current. I have found the minimum
amount of iron necessary to produce satisfactory
'results to be one pound of iron for every twenty-
five watts, which amount is equivalent to two
pounds of iron per lamp with the lamps heretofore
generally used by me. Thus in constructing a con-
verter designed to supply twenty incandescent
lamps I use a core weighing about forty pounds ".
We are clearly of the opinion that defendants do not
escape infringement of the first and third claims be-
cause by reason of their using one pound of iron in-
stead of two for a fifty-watt lamp, so long as they ad-
here to the “indispensable principle " of construction
set forth in the specification. Inasmuch as the proof
shows that their construction does so adhere their de-
vice infringes.
11
The decree of the Circuit Court is affirmed with
costs.
FREDERICK P. FISH and J. EDGAR BULL for Com-
plainant. e
M. B. PHILIPP, C. E. MITCHELL and H. B. BROWNELL
for Defendant. *
A true copy.
WM. PARKIN,
(SEAL) Clerk.
[19557 |
469,809.
No. 4.
Petition for Re-hearing—Court of Appeals.
Self-Regulating Transformer Case.
(Stanley Patent No. 469,809).
Full text of Petition for Re-hearing and Memorandum
Denying same in the case of Westinghouse Electric
and Manufacturing Co., C.omplainant, vs. Saranac
Lake Electric Light Co., Defendant, filed in
the U. S. Circuit Court of Appeals,
Second Circuit.
Petition filed February 8, 1902.
Memorandum filed February 20, 1902.
C. G. Burgoyne, Walker and Centre Streets, N. Y.
United StăţSCIIClit00llſtofAppBāls
FOR THE SECOND CIRCUIT.
WESTINGHOUSE ELECTRIC AND MAN-
UFACTURING COMPANY.,
Complainant-Appellee,
WS.
SARANAC LAKE ELECTRIC LIGHT
COMPANY,
Defendant-Appellant.
PETITION FoR RE-HEARING.
Now comes the defendant-appellant and asks for a
re-hearing upon certain points hereinafter stated in-
volved in the decision rendered upon said appeal, briefly
and distinctly stating the grounds therefor.
FIRST POINT.
It seems to us that the Court has, by overlooking a
portion of the defendant's contention as to infringe-
ment, failed to consider a material matter relating to
that issue and One which on consideration must lead
to the conclusion that the Saranac transformers do not
infringe.
Grounds in Support of First Point.
(a) In defendant's brief, the position of counsel on
the issue of infringement is expressed thus (Brief, p.
266):
“Now, there is no proof that either the defendant
or the manufacturers of its apparatus, used the
so-called Stanley rule in determining the length of
the wire of the primary coil in the transformers of
defendant’s system, and there is conclusive proof
that the cores of such transformers do not contain
the minimum amount of iron prescribed in the
Stanley Patent.”
(b) This first contention which was perhaps not
urged as strongly as the One which the Court con-
sidered in its opinion and overruled was, nevertheless
relied upon, and, in the view which the Court takes of
the real nature of Stanley's invention, becomes of
controlling importance.
(c) The Court will remember that in complainant's
prima facie case the Stanley rule was not mentioned
and no pretense was made that the length of wire in
the Saranac transformers was either predetermined or
secured in accordance with said rule.
Langdon, complainant's only witness in the prima
facie case, after describing the cores of the Saranac
transformers, goes on to Say (p. 18, fol. 71)—Italics
Ours.)
“In operation, the primary coil is made of such
length or number of turns, that the counter elec-
tro-motive force produced therein by self-induction
when the Secondary is open is practically equal to
the electro-motive force generated by the dynamo
supplying current to the same. This is due to the
fact that when an alternating current is supplied
to the primary coil the magnetizing effect on the
iron core produces a counter electro-motive force
3
or potential in the primary itself which opposes
the flow of current, which when the secondary is
open, is practically equal to the electro-motive
force or potential supplied, so that practically no
current flows through the primary coil.
This description was manifestly intended to bring
the length of wire in the Saranac transformers within
the eaſpress language of the claims relied upon, and that
is all it was intended for. No suggestion was made
that the Saranac transformers directly or indirectly
contained the Stanley rule and complainant rested
without making any such claim or producing any ex-
pert to explain the rule or any part of the patent.
(d) Defendant's counsel think they were right in
assuming that if they should show that such trans-
formers as Langdon described were old, they would
justify their use of the Saranac transformers; they
accordingly called Professors Kennelly and Anthony
and overwhelmingly proved that the Zipernowski and
Deri publications met these requirements.
Defendant's counsel are persuaded that no trap was
intended and that it was not then proposed to spring
upon them in rebuttal another and different question
of infringement. .
(e) In rebuttal, however, complainant's expert was
asked (Q. 24, fol. 348) what he understood the inven-
tion referred to in claims 1 and 3 of the Stanley
patent. This question was objected to on the ground
that the question was not proper in Tebutta!. Water-
man, however, went on to state that, as he understood
it, the gist of the invention resides in the Stanley rule
which he described (fol. 360) as follows:–
“This rule is to connect the transformer with a
dynamo such as it is to be used with, and then to
wind on primary wire—the secondary circuit being
Open—until the loss of energy which is repre-
4
sented by the formula C* R (the square of the
current multiplied by the resistance) equals the
predetermined loss to be suffered in the system.”
On this construction he testified that the Saranac
transformer system infringed. Even then no reasons
were given. -
(f) Defendant's counsel (failing to get this evidence
struck out, the Court stating if it was improper re-
buttal neither the Circuit Court nor the Court of Ap-
peals would consider it) got permission to take further
testimony. The permission granted required them to
dismiss one of their experts and limit themselves to
twenty days and twenty pages. This testimony begins
on page 581 of Deft's Rec., the portion relating to the
new position of complainant as to infringement beginning
on page 591, fol. 336/.
In our brief the attention of the Court was called to
the testimony of Dr. Kennelly upon this point, and at-
tention was directed to Dr. Kennelly's testimony (fol.
2384) where he says (italics ours):—
“Now turning to the Stanley patent, I agree
with Mr. Waterman (fol. 360–364–365) that in
order to embody the alleged invention there de-
scribed and claimed as interpreted by him, a trans-
former must be wound with primary wire.
‘—the secondary circuit being Open—until
the lost energy which is represented by the
formula C* R (the square of , the current multi-
plied by the resistance) equals the predetermined
loss to be suffered in the system.’
“This means that the loss of energy in the copper
forming the primary coil of the transformer shall
be adjusted to a predetermined amount with the
secondary circuit Open, and the length of the
primary wire regulated so as to secure this amount
of copper loss. In the defendant’s transformer,
however, no such method of Tegulation is attempted,
because the C* R loss, or copper loss, in the prim-
ary coil, is always an insignificant fraction (always
5
only a small fraction of 1%) of the loss which is
incurred in the iron core of the transformer, and of
which the copper loss is no criterion. The de-
fendant, therefore, adjusts the transformers at no
/oad to the iron loss in accordance with the Z. & JD.
article, instead of to the copper loss, according
to the rule of the Stanley patent. This is done in
the defendant's transformer by making fixed coils
of insulated wire to serve as primary and second-
ary, and then inserting in these fixed coils iron
plates to build up the iron core. The transformer
is then tested at no load, and if the loss of energy
in the core is excessive, the iron plates are taken
out and replaced by iron of better magnetic con-
ductivity. Wo account is taken of the C* R loss at
no load ; because it is ridiculously small. In the
case of the Saranac transformer, which / tested
at Saranae, and concerning which I testifted on p.
233, the core loss or iron loss at no load was ap-
proacimately 400 watts; while the C° ſº loss, or cop-
per loss, in the primary coil at the same time would
have been a small fraction of a watt, about of a
watt. In this transformer, therefore, which is in
this respect a fair sample of the Saranac trans-
formers, I found the iron loss at no load to be about
2000 times as great as the C* ſº, or copper loss.”
(g) Besides, it is proved and not disputed that the
defendant's transformers do not have the exact length
of wire which would be secured by following the C*R
rule. The length of wire in defendant's transformers
is determined with special reference to having it work
not with any particular dynamo but “with any dynamo
supplying alternating current of frequency and press-
ure within a reasonably wide range ’’ (Kennelly,
fol. 2398).
The Saranac transformers were designed for circuits
having 8000 alternations per minute. They were con-
nected to a dynamo in the Saranac plant having
16,000 alternations per minute. (Tr. p. 1411, fol.
2398–9).
6
In other words, the length of wire upon the trans-
former was such a length of wire as would have been
wound by connecting them up to a dynamo having
8000 alternations per minute and winding the primary
until the result specified in the Stanley rule as inter-
preted by this Court was secured. These transformers
were then connected up to a dynamo with 16,000 alter-
nations per minute.
Thus connected up, the C*R loss was very different
from what it would be if the dynamo gave 8000 alter-
nations, and the length of wire was not of the exact
length which Stanley's rule would have required, for
the 16,000 alternations, and no one pretends the con-
trary. -
In defendant's transformers the length of wire is
not specially adapted to any special frequency, but is
such as will make them suitable for use on circuits hav-
ing a very wide range of variations as to frequency.
They are therefore clearly outside of Stanley's rule
considered as a means for securing special adaptation
to the frequency as well as the Voltage of the dynamo.
Any such special adaptation would require a wire
something like 50% longer to get a given C* R loss
when used with a dynamo of 8000 frequency per minute
than would be required to produce the same C* R loss
when used in connection with double frequency.
(h) It seems to us clear beyond a doubt that on the
issue of infringement, where the burden of proof is on
the complainant, the testimony of an ex-president of the
American Institute of Engineers should overcome
that of Mr. Waterman, especially in view of the fact
that Dr. Kennelly's reasons are clearly stated and abso-
lutely convincing, and the whole procedure on the part
of complainants shows that when this suit was brought
they did not entertain the views finally expressed by
Waterman.
On account of the importance of this point in view
of the interpretation which the Court gives to the first
and third claims we respectfully submit that a rehear-
ing should be had.
SECONID POINT.
As we read the opinion, the Court seems to ascribe
to defendant's counsel and to their brief the concession
that the Stanley rule, construed so as to give the
proper length of primary coil in a transformer is not
found in any prior patents or publications and bases
thereon its decision that no anticipation is shown ; if
we are right in this, we submit that the Court erred in
a material matter.
Grounds in Support of Second Point.
(a) That we may not misrepresent the Court, we
quote as follows (italics ours) :--
“It is fortunate therefore that we find the con-
cession in defendants brief that the rule above set
forth for determining just what shall be the length
of primary coil [to remedy the Kennedy difficulty]
is not found in any prior patents or publications,
for, with this concession, it is easy to determine
from the record that there is no anticipation
shown.”
(b) The rule above set forth is stated thus:—
“The Stanley patent, recognizing these variable
elements gives a rule applicable to all conditions.
It says you may determine the proper length of
the primary coil by connecting the transformer in
circuit with the dynamo with which it is to be
used, and then winding on wire until the loss indi-
cated by the formula C* R, with the secondary
circuit open, equals a certain loss of energy.”
(c) It was certainly not the intention of defendant's
counsel to concede that the Stanley rule construed so
as to cover the Saranac System was not found in any
prior patent or publication ; indeed, on a careful re-
examination of the brief we are unable to conclude
8
what statement therein this Court could have had in
mind in ascribing to complainant's counsel the conces-
sion referred to.
(d) But if any concession were to be found, the con-
cession would relate to the Stanley rule as understood
by defendant's Counsel, their understanding being
that the Stanley rule has nothing to do with varia-
tion of pressure (volts) on the secondary when the
latter is closed through all or some of the lamps. -
(e) Defendant's counsel and experts have contended
throughout that there is only One possible rule (ap-
plicable to the coils Or windings) for preventing the
lamps of such a system as that of the Kennedy patent
from varying in brilliancy on the secondary circuit, and
that is by making the resistance of the coils or spirals
of a negligible character. This rule defendant's counsel
and experts have found in the Z. & D. article of
August, 1885 and the contention that this rule found
in Z. & D. is the only possible rule for securing
constancy of pressure on the secondary (so far as de-
pends upon length of wire) involves necessarily the
contention that the Stanley rule when construed with
reference to that result is found in the Z. & D. pub-
lication referred to.
(f) Defendant's counsel and experts have always
contended that what is described in the Kennedy
patent was in the art prior to Zipernowski and Deri.
Complainant's eacpert Waterman carries the date of the
invention described in the Kennedy patent back to 1883,
If, now, in a system like that of the Kennedy patent,
(the transformer cores being of a proper size and con-
struction as set forth in the Z. & D. article) the can-
dle-power of the lamps grows dimmer as more lamps
are turned on, there is but one cause and there is but
one remedy. The cause is too great resistance in the
spirals and the remedy is to reduce that resistance so
as to make the resistance drop of pressure at the sec-
ondary terminals negligible at full load. The resist-
9
ance (R) must be made so small that when multiplied
by the full load current (full load C) the product (full
load C R, being the drop of pressure due to resistance)
shall be negligible in comparison with the normal
pressure, and therefore affect the lamp brilliancy. Only
to a negligible extent. The Z. & D. article says this
resistance R in their transformer spirals scarcely ex-
ceeds rºm of the external resistance. This is what
Stanley also said in his original specification of No-
vember, 1885. This is also approximately what is
found in defendant's system. (Tr. p. 1697, fol. 31 ; p.
1359 fol. 2196; p. 1238 fol. 1729–30.)
(g) In designing a new transformer wherein the
core is of the proper size and construction, it is
the value of R in the windings and the consequent
value of resistance drop CR, when the full current
is flowing, that must be predetermined or chosen
and good regulation depends upon this choice.
The Z. & D. article describes an operative and
operating plant wherein good secondary pressure is
secured with small leakage. This is conceded by
Waterman. The transformers are described as con-
nected to the dynamo to which they belong and the
rules laid down relate to the instrumentalities when so
connected and operated. The Z. & D. article expressly
points out that when the Z. & D. transformers are con-
nected to their own dynamo “the resistance of the wire
spirals is extremely small, and, even with the greatest
allowable current strength, scarcely exceeds Tºnth of
the external resistance.” (Tr. p. 1697 fol. 31). This exter-
mal resistance so far as the secondary is concerned is
explained six or seven lines further on as “the resistance
of the lamps, &c.'', which are upon the secondary. That
the rule here disclosed of keeping the resistance down to
a negligible amount is the true rule and the only true
rule does not admit of a particle of doubt. Professors
Anthony and Kennelly testify to it over and over again.
The corrollary of this rule is expressed in the re-
quirement that the counter electromotive force must be
practically equal to the applied electromotive force
10
when the secondary is closed through all the lamps as
well as when the secondary is open and this is also
stated in the Z. & D. article. It is only when, with a
proper core and construction, as described in the Z. &
D. article the rule as to resistance is followed that
the lamps can be prevented from fluctuating in bril-
liancy when more or less lamps are in use.
(h) The Zipernowski and Deri rule for designing
transformers, therefore, so far as it relates to the
spirals, was this : In winding your transformer as in
the prior art in other respects, with a core like the one
described in this article, see to it that the resistance is
made so small that, when the full load current is on,
the drop of pressure shall be negligible with reference
to the normal pressure and with reference to the
normal brilliancy of the lamps. - *
Now this rule for designing transformers such
as shown in the Z. & D. article with reference to keep-
ing the lamps from becoming dim as their number is
increased is the indispensable and only necessary rule of
transformer construction. It is not only the only per-
missible rule, but the only possible rule, and if the
Stanley rule is that rule, then the Stanley rule is
found in the Zipernowski and Deri article, and defend-
ant's counsel have never intended to concede that the
Stanley rule, construed so as to render the Saranac
transformers infringing devices, is not found fully
and clearly stated in the Z. & D. article. The use of
a large closed circuited core necessarily results in a
small leakage or magnetizing current. It follows that, if
we are right, the question whether the Stanley rule is
found in prior patents and publications, and should be
determined by the consideration of those prior patents
and publications and the testimony of experts relating
thereto, and a re-hearing is desired upon that question
so far as relates to the Zipernowski & Deri publica-
tion of August 1 and 8th, 1885, and the prior art
relating thereto.
11
(i) The Zipernowski and Deri description is a com-
plete description of all the necessary features of the
modern transformer system, such as that at Saranac.
The Zipernowski and Deri article describes the
system as having a constant potential alternating-
current dynamo supplying a constant potential to the
primary terminals of the transformers in multiple arc.
It shows and describes those transformers as having
closed circuited laminated iron cores of large size to
freely carry the magnetic flux. It shows and describes
the coils as being brought close together and inter-
mingled so that all the turns may be in the same “ho-
mogeneous magnetic atmosphere '' and explains that
these coils must be of such low resistance as to make
the full load drop negligible, and further points out
that the turns of the two coils are in the same ratio as
the desired co-efficient of conversion.
A transformer system so constructed will necessarily
have small leakage currents because of the closed
magnetic circuits, and will have constancy of potential
at the secondary terminals under varying loads because
of the low resistance, and except for mere details of
mechanical construction will be the same as any
modern system. It is the same in principle, Opera-
tion and results. The specifications are sufficient,
whatever may be the primary voltage to be used.
Brof. Anthony and Dr. Kennelly repeatedly show that
these specifications are set out in the article and tes-
tify that the article contains the full disclosure of all
that is necessary to construct the apparatus referred
to therein, and to construct a system such as that of
the Saranac plant. These statements are statements
of the truth. The Z. & D, article is a complete de-
scription of the way in which to construct a modern
transformer system having any frequency or any
primary voltage. -
12
THIRD POINT.
It seems to us very clear that the Stanley claims,
whether with or without the Stanley rule, are not
directed to remedying the “ Kennedy difficulty,” by
preventing the variations in candle power when lamps
are turned on or off, and, if we are right in this there
is manifestly a fundamental error in the decision which
should be corrected by a re-hearing.
Grounds in Support of Third Point.
(a) The Stanley claims specify a length of wire
which will result in a certain condition of things
when the secondary is Open, to wit: equality between
the counter electromotive force and the applied elec-
tromotive force at that time.
Now regulation of pressure on the secondary re-
quires that the counter electromotive force shall also
be practically equal when the Secondary is closed EVEN
THROUGH THE MAXIMUM NUMBER OF LAMPS. This, when
the resistance and core are right secures equal pres-
sure under varying loads as well as Small leakage.
This we have proved over and over again by ſennelly
and Anthony.
If the claims (the third claim for instance) wore
drawn with reference to specifying the proper
length of wire to prevent the candle-power from vary-
ing, the language would be
by making its primary coil of such length that
when supplied with its full proportionate share of
the entire normal electromotive force of the
machine, its secondary being Open, and also with
its secondary closed through any or all of the
lamps, the electrical pressure and counter-pressure
in its primary circuit shall be approximately
equal.
The first claim would have to have a corresponding
amendment, inserting the words, “ &nd also with its
13
secondary closed through any or all of the lamps,” the
word “equal” in this claim, as all admit, necessarily
meaning approa;imately equal.
The approximate equality of applied and counter
electromotive forces at no load does not compel
approximate equality at full load and therefore the
claim does not specify the necessary and controlling
characteristic for secondary regulation. The mere fact
that the characteristic which does not result in second-
ary regulation is specified shows that secondary regula-
tion was not in mind.
The maxim expressio uniws exclusio alterius applies.
Besides, a new result is never imputed to a claim by
implication.
(b) The Stanley claims were not framed by Stanley
to protect what he regarded as his invention. They
were framed by the attorneys of Westinghouse for the
purpose of securing an interference with Slattery's
patent and obtaining a judgment that Stanley made
Slattery's invention before Slattery did.
The claims of the patent were therefore literal copies
of Slattery's claims, errors and all.
Now the Stanley rule is not to be found in the Slat-
tery patent and there was no interference if the Stanley
Tule was the gist of his invention, and the attorneys of
Westinghouse had no right to demand an interference,
nor had the Patent Office any right to grant an inter-
ference in that case.
The rule is not mentioned in the interference testi-
mony consisting of over two hundred pages of printed
testimony.
The Stanley rule is not to be found in the decision
of the Commissioner upon the question of priority
excepting as it is impliedly declared to be immaterial.
The Commissioner decided in favor of Stanley upon
the ground that any length of wire which would cause
the counter electromotive force to be equal to the
applied electromotive force, the secondary being open
would satisfy the interference issues, and the interfer-
ence issues were in the words of the claims.
14
In so deciding the Commissioner supported the con-
tention of the counsel of Westinghouse against those
of Slattery.
The counsel for Westinghouse knew that it was on
this ground that Slattery was defeated and when Com-
missioner Simonds granted the patent they accepted it
with that understanding.
The act of Westinghouse counsel in demanding the
interference was a declaration that the Stanley rule,
which was not in Slattery’s patent, was utterly imma-
terial. Their act in accepting the patent was a similar
declaration.
(c) Stanley's specification of November 1885 (drawn
by himself) makes no mention or suggestion of the no-
load C2 R rule. If the Patent Office had regarded the
C* R rule as constituting the gist of Stanley's inven-
tion, then the decision was wrong, because it gave the
priority to Stanley on account of his specification of
November, 1885, and that does not disclose any no
load C2 R rule whatever.
(d) Stanley's specification of November 1885 did
disclose a rule directed to securing unvarying pressure
in the lamps.
The only directions there given call for a constant
potential at the primary terminals (fol. 2194) closed mag-
netic cores as shown in the figure (fol. 2.192 and 2198)
and low resistance of coils (fol. 2195—2196). Stating
that “perfect regulation * is only attainable when the re-
sistance, /ē, equals zero, and that very good regulation is
obtained when the respective resistances of primary
(ſºo) and secondary ( /ēs) are riºtſ of their respective ea:-
termal circuits (fol. 2195—2196) being the same value as
given by Z and D (p. 1697 fol. 31).
Stanley's rule as stated in the 1885 draft was that
of the Z. & D. article and the same as followed in pro-
ducing the transformers of the defendant.
This rule (that of the Stanley 1885 specification) was
omitted in the Westinghouse specification because a
succcessful interference with Slattery required that
15
Slattery's claims should be made, and Slattery’s claims
had nothing to do with Securing regulation on the sec-
Ondary.
Slattery's claims relate wholly to making the leakage
current Small by making the counter-electromotive
force equal to the applied electromotive force at no
load without reference to the condition in this respect at
all other times.
(e) The rule of the Stanley patent, although incon-
sistent and unworkable was intended to be a rule for.
Securing in practice a small and predetermined leakage
current. It was inserted with reference to the pur-
pose of taking Slattery's patent away from him by
patenting so much of Stanley's invention as was co-
extensive with his. -
Unless this no load CPR rule is embodied in the Z &
D rule given in Stanley's original draft, no trace of it
appears in any of Stanley's work before the filing of
the Stanley application in 1888, and except for its ap-
pearance in the Stanley patent it has never appeared
in any publication relating to transformers since that
time. It was not in fact the rule Stanley used in
practice. (Tr p. 441 Q 12). There is no proof that
it was ever used by anyone. Mr. Waterman's statement
as to this amounts to nothing. He had not begun his
technical education at the time of which he speaks.
The patent speaks of the method of constructing
the core as “indispensable.”
It makes no such declaration of the method of wind-
ing which the specification states the patentee adopted
in practice.
The decision of the Patent Office could not have
been rendered in favor of Stanley if the specification
had declared Stanley's rule to be indispensable.
In that case Slattery would have been the original
inventor of what he had claimed.
The Stanley patent on its face shows that the claims
include any length of wire that would make the leakage
current a negligible One.
16
The patent expressly states that when the counter-
electromotive force equals, the applied electromotive
force, the secondary being open, no current can be de-
tected by an ammeter. This makes the current a
negligible current, and the wasted energy necessarily
very small. This constituted his test for equality of
applied and counter electro-motive forces. The speci-
fication declares that (Pat. p. 1, lines 50–69) :
“The factors are * * * to the end of maintain-
ing a simple and accurate self-regulation, so that
the absorption of energy by the generator is pro-
portional to the energy usefully consumed. . The
current developed by the dynamo D may be of as
high potential as desired. In practice I have
found it convenient to employ a potential of a
thousand volts and to maintain that pressure as
constant as possible during the operation of the
apparatus.”
This end is secured by making the energy lost in the
leakage current very small because all the rest of the
current from the dynamo does effective work.
The truth is that Slattery had secured a patent for
the invention (if such it was) which Waterman ascribes
to Kennedy and dates back to 1883 and that
the Westinghouse attorneys who had taken no steps
to patent Stanley's work for nearly three years
seized upon the opportunity presented by the Slattery
patent to get for their assignors what the Patent Office
had granted to Slattery.
(f) The inapplicability of the Stanley rule to the
problem of Securing unvarying pressure in the lamps
lies on its face : The “ loss of energy inevitable in con-
version " which the rule mentions is necessarily loss
going on when the secondary is in place and the lamps
are burning and current is being converted. No energy
is lost in conversion when no secondary has been wound.
Now the rule which requires the C* R loss on the
primary coil before the secondary is wound to be
17
equal to a vastly greater loss experienced when the
secondary has been wound and conversion is going on, is
necessarily self-contradictory, unless the loss referred to
is one which is practically the same at all times. But
the C* R loss varies as the square of the current and is
therefore many thousands times greater when conver-
sion is going on supplying four hundred lights on a four
hundred light transformer than when a single lamp is
in use, and the C* R loss when one lamp is burning is
greatly in excess of what it is when no secondary has
been wound. There is no “loss of energy inevitable
in conversion " when only the primary coil is wound
and it makes no difference in this respect whether the
primary is an inch long or a mile long.
It would make nonsense of the rule to construe it as
being a rule for making the copper loss, the C* R loss
at no load, equal the loss of energy inevitable in con-
version.
The rule cannot be logically applied in any way ;
thus suppose a suitable transformer, and determine its
no load Cº. R. loss. If an equal number of turns of a
smaller wire (but one still large enough to carry the
current), were substituted, the resistance would be in-
creased and the full load drop correspondingly in-
creased, resulting in a greater variation of second-
ary potential under varying loads than in the first
transformer. The no load C2 R would also be in-
creased. To make this no load C* R loss as small
as before more turns would have to be added, which,
while increasing the resistance, would decrease the
no load current at a faster rate. When the old no
load CP R loss was thus reached, the resistance would
be greater than when the equal number of turns of
smaller wire was first substituted, and the secondary
regulation would be worse than if no attempt had been
made to reduce the no load CP R to the original value.
In the same way changes in the size of the core will vary
the secondary regulation, if the old C* R is adhered to.
The no load Cº R bears no relation to the matter of
secondary regulation and affords no rule for winding
to obtain secondary constancy under varying loads.
18
The designer reading the Stanley patent could not de-
sign according to it, but would have to disregard it
and go back to first principles, and that is what is
done to-day.
In any aspect of the case the rule is troublesome,
but the fact that Stanley stated in his specification of
1885 a totally different rule, and one which was, and is,
and always will be, the true rule shows that this so-
called C* R rule was never designed to take its place.
Westinghouse's attorneys sought to antedate the
Slattery Patent, and the bungling rule which has occa-
Sioned so much discussion was inserted in aid of that
enterprise. They copied his claims totidem vérbis and
they framed their specification with the intention that
the claims should have precisely the same meaning and
be lawfully in interference.
CONCLUSION.
In conclusion, we submit that in this intricate case
wherein such vast interests depend, justice would not
be done if the present decision were allowed to stand
without affording counsel an opportunity to be heard
upon the matters which in this petition we have only
been able to suggest.
SARANAC LAKE ELECTRIC LIGHT COMPANY
Defendant-Appellant,
By
C. E. MITCHELL,
H. B. BROWNELL, -
Counsel for Defendant-Appellant.
19
We certify that the foregoing grounds of petition
for re-hearing are in our opinion proper for judicial
inquiry” and consideration and that said petition is not
intended for delay, and that the reason that this cer-
tificate is not signed by appellant's other counsel, M.
B. Philipp, is that said counsel is, and ever since the
decision, has been, in Europe.
C. E. MITCHELL,
H. B. BROWNELL,
Counsel for Appellant, Petitioner.
20
UNITED STATES CIRCUIT COURT OF
APPEALS, º
SECOND CIRCUIT.
~
WESTINGHOUSE ELECTRIC AND MANU-
FACTURING COMPANY.,
WS. >
SARANAC LAKE ELECTRIC LIGHT
COMPANY.
2
Memorandum on Motion for Re-argument.
[Filed February 20, 1902.]
Per Curiam, .
The motion for re-argument is denied. It was sup-
posed that, upon the argument, defendant's counsel
practically conceded that the Stanley rule, as Stated by
the Court was not found in any prior patents or pub-
lications. If this supposition be incorrect, neverthe-
less we find in the record no prior patent or publica-
tion which states that one “may determine the proper
length of the primary coil by connecting the trans-
former in circuit, with the dynamo with which it is to
be used ; and then winding on wire until the loss
indicated by the formula C*R, with the secondary
circuit open, equals a certain loss of energy.” As to
infringement this Court in sustaining the Circuit Court
did not deem it necessary to add anything to the
opinion below. -
469,809.
No. 5.
Mandate—Court of Appeals.
Order—Circuit Court.
Self-Regulating Transformer Case.
(Stanley Patent No. 469,809).
Full text of Mandate and Order on Mandate filed in the
case of Westinghouse Electric and Manufacturing
Company, Complainant, vs. Saranac Lake
Electric Light Company, Defendant.
Mandate filed February 25, 1902.
Order on Mandate filed February 27, 1902.
C. G. Burgoyne, Walker and Centre Streets, N. Y.
MANIDATE.
UNITED STATES OF AMERICA, SS :
THE PRESIDENT OF THE UNITED STATES OF AMERICA,
To THE HONORABLE THE JUDGES OF THE CIRCUIT CourT
of THE UNITED STATES FOR THE NoFTHERN DIS-
TRIOT OF NEW YORK,
GREETING :
WHEREAS, lately in the Circuit Court of the United
States for the Northern District of New York, before
you, or some of you, in a cause between West-
inghouse Electric & Manufacturing Company and the
Saranac Lake Electric Light Company, an order was
entered in the office of the Clerk of said Court on the
7th day of May, 1901, in the words and figures follow-
ing, to wit : -
“This cause having come on to be heard at the
December term of Said Court, and Frederick P.
Fish, Esq., and J. Edgar Bull, Esq., having been
heard for the complainant, and C. E. Mitchell, Esq.,
and M. B. Philipp, Esq., having been heard for
the defendant, |
“NOW, therefore, on due consideration thereof, it
is hereby
“ORDERED, ADJUDGED AND DECREED that Letters
Patent of the United States granted to the com-
plainant, as assignee of William Stanley, Jr.,
for an improvement in System of Electrical Dis-
tribution, dated March 1, 1892, and numbered
2
469,809, are as to the first and third claims good and
valid in law ; that the said Williana Stanley, Jr.,
was the original and first inventor of the inven-
tion described and claimed in the first and third
claims of said Letters Patent ; that the title
to said Letters Patent and to the inventions
described and claimed therein is vested in the
complainant, and that the defendant has in-
fringed the first and third claims of said Letters
Patent and the exclusive rights of the complainant
thereunder.
“And it is further ORDERED, ADJUDGED and DE-
CREED. that the bill of complaint be, and the same
hereby is, dismissed as to Reissued Letters Patent
of the United States granted to the complainant,
as assignee of Rankin Kennedy, for System of
Electrical Distribution, dated September 24, 1889,
numbered 11,031.
“And it is further ORDERED, ADJUDGED and DE-
CREED that the complainant do recover from the
defendant the profits, gains and advantages which
the defendant has received or made, or which have
arisen or accrued to it by reason of the infringe-
ment by said defendant of the said first and third
claims of said Letters Patent No. 469,809, since
the date of said Letters Patent, as also the dam-
ages which the complainant has sustained by rea-
son of said infringement, to be assessed as pro-
vided by statute. &
“And it is further ORDERED, ADJUDGED and DE-
CREED that it be referred to William S. Doolittle,
Esq., whose long experience in such matters is de-
termined by the Court to be sufficient reason
for such appointment, as Master, to ascertain,
state and report to the Court an account of
the gains, profits and advantages which said
defendant has received, or which have arisen
or have accrued to it by reason of any infringe-
ment by it of the said first and third
claims of said Letters Patent No. 469,809, since
the date of said Letters Patent, and also the
damages which the complainant has sustained b
reason of said infringement, leaving all questions
as to increase of damages until the coming in of
the report of said Master.
“And it is further ORDERED, ADJUDGED and DE-
CREED, that the complainant on said accounting
3
have the right to cause an examination of said de-
fendant and its officers, ore tenus, or otherwise,
and also the production of the books, vouchers
and documents of said defendant, and that the
said defendant attend for such purpose before
said Master from time to time, as said Master
shall direct. - ." -
“And it is further ORDERED, ADJUDGED and DE-
CREED, that a perpetual injunction be issued in
this suit strictly enjoining and restraining the said
defendant, its officers, clerks, attorneys, agents and
workmen, from directly or indirectly making, con-
structing, using or selling or causing to be made,
constructed, used or sold, said improvement in
system of electrical distribution, claimed in said
first and third claims of said Letters Patent No.
469,809, and such as it is and has been using or
such as is substantially the same, or as embody
the said patented invention of said Stanley, and
from in any way directly or indirectly infringing
the said first and third claims of said Letters
Batent No. 469,809. * *
“And it is further ORDERED, ADJUDGED and DE-
CREED, that no costs be taxed by either party.
- “ALFRED C. Cox.E,
“. U. S. J.”
as by the inspection of the transcript of the record
of the said Court, which was brought into the United
States Circuit Court of Appeals for the Second Cir-
cuit, by virtue of cross-appeals agreeably to the act of
Congress in such case made and provided, fully and at
large appears.
AND WHEREAs, in the present term of October, in the
year of Our Lord one thousand nine hundred and
one, the said cause came on to be heard before the
said United States Circuit Court of Appeals for the
Second Circuit, on the said transcript of record, and
was argued by counsel. On consideration whereof, it
is hereby *
ORDERED, ADJUDGED AND DECREED, -
That the decree of said Circuit Court be, and it
hereby is, affirmed.
4
You, therefore, are hereby commanded that such
further proceedings be had in said cause, in accord-
ance with the opinion of this Court, as according to
right and justice and the laws of the United States
ought to be had, the said appeals notwithstanding.
WITNESS, the Honorable MELVILLE W. FULLER, Chief
Justice of the United States, the 25th day of Feb-
ruary, in the year of Our Lord one thousand nine hun-
dred and two.
WM. PARKIN,
Clerk of the United States Circuit Court of
[L. S.] Appeals for the Second Circuit.
Circuit Court Clerk’s Office,
UNITED STATES OF AMERICA,
NORTHERN DISTRICT OF NEW YORK.
I, WILLIAM. S. DooDITTLE, Clerk of said Court, do
hereby certify that I have compared the annexed copy
of Mandate, Westinghouse Electric and Manfg. Co. v.
Saranac Lake Electric Light Co., In Equity, No. 6500,
with the original now on file in this office, that the
same is a correct transcript therefrom and of the whole
of said original.
- In testimony whereof, I have caused the Seal
of the said Court to be affixed at the
[SEAL.] City of Utica, in said District, this
5th day of March, A. D. 1902.
W. S. DOOLITTLE,
Clerk.
ORDER ON MANIDATE.
At a stated term of the United States Cir-
cuit Court for the Northern District
of New York, held at the Court
rooms thereof at Utica on the 27th
day of February, A. D. 1902.
Present—The HONORABLE ALFRED C. COXE, District
Judge.
WESTINGHOUSE, ELECTRIC & MANU-
FACTURING COMPANY
WS. >
SARANAC LAKE ELECTRIC LIGHT
COMPANY.
J
The above cause having heretofore come on for
hearing in this Court, and a decree having been ren-
dered herein on the 8th day of May, 1901, and the
parties hereto having by cross-appeals thereafter
obtained the record and proceedings herein to be
taken into the United States Circuit Court of Appeals
for the Second Circuit, and the said Court of Appeals
having transmitted to this Court its Mandate by which
it appears that at the October term of said Court
for the year 1901 this cause came on to be heard and
was argued by counsel, and on consideration thereof
it was ordered that the decree of the said Circuit
Court in this cause be, and the same is, in all things
affirmed.
6
Now, upon reading and filing said Mandate, and
upon motion of J. Edgar Bull, Esq., counsel for com-
plainant, and after hearing Charles E. Mitchell, Esq.,
of counsel for defendant, it is
ORDERED, that the judgment or decree of the said Cir-
cuit Court of Appeals in this cause be, and the same
is hereby, made the judgment of this Court.
ALFRED C. CoxE,
& t - U. S. District Judge.
Assented as to form. * -
MITCHELL, BARTLETT & BROWNELL,
- Deft.’s Solrs.
[19877
a 22 : . . . 511,559.
7- A. C. MOTORS.–C.
, r? < * * * , 511,56O.
- Mr ºr . . .
Vº. 53 * * No. 3.
Opinion—court of Appeals.
Tesla Split-Phase Motor.
(Patents Nos. 51 1,559 and 5 II,560).
Full text of Opinion of Court of Appeals in the case of
Westinghouse Electric and Manufacturing Company,
- Complainant, Appellee, vs. The Dayton Fan and -
Motor Company, Defendant, Appellant,
filed in the U. S. Circuit Court of
Appeals, Sixth Circuit.
Decided April 8, 1902.
C. G. BURGoyne, Walker and Centre Street, N. Y.
No. 962.
ºlnited $5tated Circuit Court of Élppeal.g.,
SIXTH CIRCUIT.
DAYTON FAN AND MOTOR Co.,
Appellant,
Appeal from the
WS. Circuit Court of
w the United States
- - for the Southern
WESTINGHOUSE, ELECTRIC AND MAN- District of Ohio-
UFACTURING CO.,
Appellee.
SUBMITTED NOVEMBER 13, 1901.
DECIDED APRIL 8, 1902.
Defore LURTON, DAY and SEVERENs, Circuit Judges.
SEVERENS, Circuit Judge, delivered the opinion of the
Court :
The bill, which was filed in this cause by the above-
named appellee, complains of the infringement by the
appellant of rights secured by Tuetters Patent No. 511,–
559, issued December 26, 1893, to Nikola Tesla, and by
Letters Patent No. 511,560, issued on the same day to
the same grantee, both of which patents the appellee
claims to own by assignment. The patents, both of
them, relate to Tesla's System of Electrical Power
Transmission, and are for improvements in said sys-
tem. The ground upon which the appellant rested its
defense at the hearing in this Court was that the in-
ventions covered by the patents on which the appellee
founded its suit, had been the subjects of a former pat-
2
ent, No. 416,193, issued to the same inventor, and that,
as an invention cannot lawfully be twice patented,
these later patents were void. Other grounds for
disputing the validity of the patents were not pressed,
nor was infringement denied, if the patents were to be
held valid.
A brief description of Tesla's original invention, in
which he developed his system in its application to the
construction and operation of motors propelled by elec-
tro-magnetic power, is necessary to a clear understand-
ing of the patents in suit. It consisted of an electro-
magnetic generator so Organized as to develop and
transmit through two or more independent circuits
alternating currents proceeding in definite succession
to the motor ; and a motor constructed in circular
form and so organized as to receive the respective al-
ternating currents from the generator upon corre-
sponding segments into which the ring of the motor
was divided, and having an armature rigidly fixed in
the center of the motor to an operating shaft extend-
ing transversely therethrough, the Outer end of said
armature being free and extending to a close proximity
with the ring of the motor and so susceptible of being
actuated around its rigid center by the continuous
shifting of the pole produced by the successive alter-
nation of the currents proceeding from the generator
to the respective segments of the ring. This organiza-
tion is shown in the figure below.
A more particular description of the generator is un-
necessary to the purposes of the present case, for the
controversy relates almost wholly to the circuits and
the motor. But it will be useful to describe somewhat
more particularly the motor and the method of its op-
eration. We have stated that the ring of the motor
was in segments. It is only theoretically so, for, in
fact, it was entire. It was made of material which
constitutes a good conductor, and around each of its
Several segments was coiled one of the wires of a cir-
cuit coming from the generator. The currents coming
3
in successive alternations through the coils successively
energize the segments of the ring on which they are
respectively wound. The flow of the current develops
magnetism and this sets up polarity. If the two north
poles of the respective segments meet, as they do in
the ring of the motor, a consequent pole is established,
resulting from the conjoint influence of the two cur-
rents, and this consequent pole will be manifested mid-
way between the immediate sources of the currents
if the currents are equal, or, if unequal, then nearest to
the immediate source of the weakest current, the loca-
tion of the pole being governed in such case by the rel-
ative strength of the opposite currents; and the arma-
ture will constantly turn to this pole. Thus, when the
north poles meet in the ring, as they are always doing
when the motor is in operation, the consequent pole,
which they establish, will be shifted, as the current in
One segment of the ring grows stronger and the current
in the corresponding segment grows weaker, and vice
versa. The circuits are disposed in corresponding pairs
On the opposite segments of the motor ring, and by
alternately energizing them with their currents, the pole
is kept moving progressively from place to place around
the ring, drawing by its attraction the free end of the
armature and thereby rotating the shaft to which the
armature is attached.
4
The following figure illustrates the machine and its
mode of operation :
On the left is the generator; on the right is the
motor. Between them are shown two independent
circuits extending from the generator to the respective
segments of the motor, H., H, and K, K. When the
currents in the coils H, H, are equally energized, the
consequent pole will be equidistant between them on
the line ac, æ, as shown, and, of course, the armature
will stand on the same line. If now the current in the
right-hand coils, H, be diminished and that in the
left-hand coils, H, be increased, the pole will be
carried over to the right-hand toward the line 2, 2,
the armature following it. Then, if the coils in upper
K are receiving a strong current and those in lower
R. a weak one, the pole will be carried over to
the right still further toward the line y, y, the
armature continuing to follow it ; and so on progres-

5
sively through the rotation, the alternating of the cur-
rents effecting the changes above described.
In these patents the alternating currents are said to
be of differing phases, that is, as we understand, having
varying degrees of strength or voltage manifested at
the same moment of time.
We learn that very shortly after this original inven-
tion it was found that it was of great practical impor-
tance to dispense with the peculiar generators of the
Original structure, and, if possible, to substitute the
simple and common form of generators adapted to the
transmission of currents over single circuits. The pat-
ents in suit are some of a considerable number, contain-
ing many devices which the same inventor produced to
meet this requirement. The substantial improvement
made by them was to take out of the generator and to
carry over into the circuits the provision for effecting
the alternation of the currents by which the motor is
operated. The Circuit Court held the patents involved
in this suit valid and infringed. The defendant in that
Court upon this appeal submits the question whether
these patents are valid in view of a previously pat-
tented invention of the same patentee, relating to the
same subject, and, as is strenuously contended
by counsel, covering the identical inventions of the
patents in suit. The defense being planted upon this
single ground, we have thought it right to examine
with critical attention the former patent, in order to de-
termine the nature and scope of the invention covered
by it ; and having done this, to settle the proper con-
struction of the patents here involved. We shall then
have the data for comparison.
We insert here for reference Fig. 1 of the drawings
annexed to patent No. 511,559, which fairly illustrates
the changes made in order to bring the current from
the generator by a single circuit.
B B are the lines of the single circuit. At b b the
lines are divided, one of each of the divided lines pass-
ing uninterruptedly to the segments C C of the motor.
The other lines are connected with the primary coil,
P, of a transformer, or induction coil, T. A secondary
current is set up in the coil, P1, which is carried
by the secondary circuit to the segments D D of the
motor. The current, which is taken off the original
circuit, is delayed by the process of induction, and the
delay is so regulated that it evenly alternates at the
motor with that of the primary circuit. This method
of causing by induction one current to lag behind the
other is only one of many ways of effecting that result,
but it explains the scheme on which these later patents
were founded.
The former patent referred to as covering the inven-
tions of the patents in suit in Tesla's patent No.
416,193, was issued December 3, 1889, upon an appli-
cation filed May 20, 1889, and is for combinations of
motor and circuits. The claims are as follows:
“1. An alternating-current motor having two
or more energizing-circuits, the coils of one circuit
being composed of conductors of large size or low
resistance, and those of the other of fewer turns
of wire of smaller size or higher resistance, as set
forth.
“2. In an alternating-current motor, the com-
bination, with long and short field-cores, of ener-
gizing-coils included in independent circuits, the

7
coils on the longer cores containing an excess of
copper or conductor over that in the others, as set
forth.
“3. The combination, with a field-magnet com-
posed of magnetic plates having an open center
and pole-pieces or cores of different length, of
coils surrounding said cores and included in inde-
pendent circuits, the coils on the longer cores con-
taining an excess of copper over that in the others,
as set forth.
“4. The combination, with a field-magnet com-
posed of magnetic plates having an open center
and pole-pieces or cores of different length, of
coils surrounding said cores and included in inde-
pendent circuits, the coils on the longer cores con-
taining an excess of copper over that in the others
and being set in recesses in the iron core formed
by the plates, as set forth.”
This first claim represents the invention of certain
specific means for delivering at the motor approximately
equal alternating currents. This is done by so varying
the capacity in the two circuits for self-induction or re-
sistance, one or both, resulting from the difference of
material used in the circuits Or from their mode of con-
struction, one or both, as to accomplish the intended
purpose of making the currents equal, but delaying one
behind the other. The properties utilized by these
means for producing the alternation as well as the
equalization of the currents are those of self-induction
and resistance in the circuit. These terms, self-induc-
tion and resistance, are used to signify means of hin-
dering or delaying the current in circuits as contradis-
tinguished from induction proper, which consists in
taking off, in part, the current of the circuit by placing
a conductor in proximity to such circuit and within its
influence, which is thereupon transmitted over another
line or circuit. -
The second claim is for a subordinate feature, con-
sisting of the introduction into such motors of alter-
nate long and short field-cores carrying the coils of the
respective circuits, the longer cores having an excess of
8
copper or conductor over that in the others. This
claim is also for specific means aiding in the result in-
tended to be accomplised by the means mentioned in
the first claim.
The third claim, too, is for special means intended to
promote the advantages of the first claim.
The fourth claim consists of the same combination
as the third with the added feature that the coils are
“set in recesses in the iron core formed by the plates.”
This claim is also for auxiliary means introduced into
the mechanism already set forth in the preceding
claims. -
Thus it will be seen that the whole body of the
claims in this patent relates to the construction of
motors and circuits capable of utilizing the properties
of self-induction and resistance in the circuit to effect
the delivery of alternating currents of equivalent po-
tency in such a way as to induce a sustained rotation
of the motor. -
The first (in number) of the patents in suit is . No.
511,559, issued December 26, 1893, upon an application
filed Dec. 8, 1888. The claims are these :
“1. The method of operating motors having in-
dependent energizing circuits, as herein set forth,
which consists in passing alternating currents
through both of the said circuits and retarding the
phases of the current in one circuit to a greater or
less extent than in the other. -
“2. The method of operating motors having in-
dependent energizing circuits, as herein set forth,
which consists in directing an alternating current
from a single source through both circuits of the
motor and varying or modifying the relative re-
sistance or self-induction of the motor circuits and
thereby producing in the currents differences of
phase, as set forth.”
This patent relates to a method or methods of trans-
mitting alternating currents proceeding from one orig-
imal source through both of the energizing circuits of
9
the motor, and at the same time retarding the phases
of the current in one circuit to a greater or less extent
than in the other. The patentee disclaims the specific
means which he employs in the method or methods
which he discloses as his invention, reciting that they
are the subjects of other applications. -
Claim 1 consists of a method of Operating the motor
by passing alternating currents to it through inde-
pendent circuits and retarding the phases of the cur-
rent in one circuit more or less than in the other. The
main line is not included, except as it is implied from
the specification that the independent circuits will be
connected with it and be energized therefrom.
This is the broad statement of the method which
Tesla employs in such of his constructions as use sev-
eral circuits divided from one main circuit proceeding
from the generator. Having disclaimed the apparatus
by which the method is practiced, it is not particu-
larized, but is suggested in a general way. The inven-
tion consists in dispensing with more than one circuit
from the generator by dividing the main line at some
point, which may be near the motor, and by interpos-
ing in the divided lines some means known to the elec-
trical art for regulating the flow of the current through
the lines in such way as that they shall alternately
energize the different segments of the motor. The
patentee says in his specifications that this distribution
may be effected by induction of the one current from
the other, or by what is known as derivation, in which
case he inserts in one of the circuits a resistance or
self-induction coil, in either of which cases the current
is retarded so that it alternates with that over the
other line in arriving at the motor ; and he illustrates
by several forms of apparatus how his method may be
pursued. But these suggested forms are not exclusive
of other devices adapted to the purpose, which, as he
says, were well known.
The second claim is substantially the same as the
first, but is more restricted in that it limits the method
10
of producing the alternation of the currents by confin-
ing it to the use of means for varying the relative re-
sistance or self-induction in the motor circuits.
Patent No. 511,560, issued December 26, 1893, upon
an application filed December 8, 1888, is for apparatus.
It relates to means employed in the transmission of elec-
trical power to a motor through divided currents derived
from a single current proceeding from the generator,
the said divided currents being so regulated with refer-
ence to each as to arrive at their destination in the
motor alternately. With what has already been stated
about the nature of these inventions, it will be suf-
ficient to lead to an understanding of this patent, so
far as the purposes of this case require, to state those
claims which are supposed to be infringed, namely,
claims 1, 2 and 6, which are these :
“ 1. The combination with a source of alternat-
ing currents, and a circuit from the same, of a
motor having independent energizing circuits con-
nected with the said circuit, and means for render-
ing the magnetic effects due to said energizing
circuits of different phase and an armature within
the influence of said energizing circuits.
“2. The combination with a source of alternat-
ing currents and a circuit from the same, of a
motor having independent energizing circuits con-
nected in derivation or multiple arc with the said
circuit, the motor or energizing circuits being of
different electrical character whereby the alternat-
ing currents therein will have a difference of
phase, as set forth.
“6. In an alternating current motor, the com-
bination with the field magnets or cores and in-
dependent energizing circuits of different active
resistance and adapted to be connected with the
line or transmission circuit, of an armature wound
with closed energizing coils or conductors, as set
forth.”
Claim 1 is for a combination made up of a genera-
tor, a single circuit leading therefrom, independent
energizing circuits connected with said single circuit, a
11
motor connected with said circuits having an armature
within the influence of said circuits, and means for
rendering the current in the circuits of different phases.
With respect to this last element no specific means are
called for. They may consist of any means of the
class designated, which the skill of the art may sup-
ply. But the patentee in his specification disclaims
other means than those employed in case he takes one
of the currents from the other by derivation, that is,
by a circuit which is connected with the other so as to
divide the current, as distinguished from induction,
where the new line is not connected with the other ;
and the means are thereby limited to the former class.
This combination is of all the elements which make up
an entire machine.
Claim 2 is much like claim 1 when the latter is
limited by the statement in the specification above men-
tioned, except that the armature is not mentioned, with
the addition of specific means for effecting the alterna-
tion of phases in the currents by making the circuits of
different electrical character.
Claim 6 introduces a new element into the combina-
tion, namely, an armature wound with closed energizing
coils or conductors, a specific device to aid in effecting
the general result. -
It is contended by counsel for the appellant that
“the invention of claim 2 of the patent in suit,
No. 511,559, is necessary to the use of the motor
of the former Tesla patent, No. 416,193,”
and also
“ that the invention of claims 1, 2 and 6 of the
other patent in suit, No. 511,560, is necessary to
the use of the motor "
of said former patent; and, further, that claim 1 of the
patent in suit, No. 511,559, is a broad generic claim
which covers the said former patent. From these de-
12
ductions it is insisted that, so far as concerns the
claims of the later patents which are here relied on,
they are for the same invention as that of the earlier
patent and therefore void. We will take up these sev-
eral propositions in their order :
FIRST. Is the invention of claim 2 of patent No.
511,559 “necessary to the use ’’ of the motor of No.
416,1932 Claim 2 of No. 511,559 is for
“ the method of operating motors having inde-
pendent energizing circuits, as herein set forth,
which consists in directing an alternating current
from a single source through both circuits of the
motor and varying or modifying the relative re-
sistance or self-induction of the motor circuits
and thereby producing in the currents differences
of phase, as set forth.”
The claim is for a method of accomplishing a certain
result. That method may be practiced by the employ-
ment of any means adapted to the purpose and then
known to the art or, which might thereafter become
known. To be sure, if the mechanical means employed
are the subject of a patent, the party who uses the
process must have or secure the right to use the pat-
ented means.
Assuming for the Imoment that claim 2 just men-
tioned was for a combination of generic means, such a
claim would cover all known means of the kind enumer-
ated. And it would cover all equivalents which might
thereafter be discovered by the ordinary skill of the art
and were not the fruit of invention, and it would domi-
nate the latter, if the latter was an improvement
merely of the means covered by the former invention.
But the invention of means hitherto unknown would be
an independent invention not covered by the patent, and
according to the well-settled rule would of itself be en-
titled to a patent. If such an invention of improve-
ments were made by a stranger, it can not be doubted
13
that he would be entitled to a patent for it. It might
be that it would be impracticable for him to use it with-
out acquiring the privilege of the underlying invention ;
nor could the owner of the latter use the improvement
except by treaty with the owner of it. And no valid
reason exists why the patentee of an invention may
not enjoy the privilege of a stranger in thereafter Ob-
taining a patent for an independent invention made by
him, although it relate to the matter of his former
patent, and was described, but not claimed, therein,
provided he has not dedicated such independent in-
vention to the public ; and this, in the present instance,
the patentee had not done. And we applied the rule
where the same person was the author of both inven-
tions, in Thomson-I/ouston Flectric Co. vs. Ohio Brass
Co., 26 C. C. A., 107.
Now, as has already been stated, all the claims of
the patent, No. 416,193, are for special means or ap-
paratus designed to be employed in carrying out the
inventor's method of operating his motor, as described
in patent No. 511,559. It was not disputed at the hear-
ing that this latter patent is valid unless the inven-
tion covered by it had, at the date of that patent, been
already patented by letters No. 416,193 to the same in-
ventor. Since, therefore, the invention of the specific
means covered by these claims for the special means
and the generic invention were for independent inven-
tions and neither had been given to the public, it was
competent for the inventor to take out a patent for
each ; and we do not perceive that in such case it would
be material, that the taking Out of the one patent was
prior to that of the other. In the present instance the
invention of the method (or generic means, as we have
assumed for argument it might be), shown by claim 2
of the later patent no more covers the separate inven-
tion of the former patent than does every broad patent
cover every invention of special matter covered by such
broad invention. But we shall recur to this subject
later.
14
\
SECOND. It is further claimed that the invention of
claims 1, 2 and 6 of the other of said later patents, No.
511,560, is necessary to the use of the motor described in
the former patent, No. 416,193, and is, therefore, for the
same invention. But as has already been stated both the
claims of the earliest of these two patents, No. 416,193,
are for certain specific means for producing the requisite
alternation of the currents. Generally stated they are
means for producing that result by the particular methods
characterized as self-induction and resistance, whereby
the current in one of the circuits is made to lag behind
the other.
Claim 1 of No. 511,560 is this :
“The combination with a source of alternating
currents, and a circuit from the same, of a motor
having independent energizing circuits connected
with the said circuit, and means for rendering the
magnetic effects due to said energizing circuits of
different phase and an armature within the in-
fluence of said energizing circuits.”
This combination includes all the elements which
constitute the machine, which Tesla devised when
he reorganized his apparatus disclosing his first
invention of this class of motors by dispensing with
a generator which should be competent to send out
alternating currents over two or more independent
lines, and substituting a generator with a single
circuit and then, by dividing the current and
regulating its movement in the divided lines, pro-
duce the due alternation of the currents at the
motor. He transferred his division of the currents
and the alternation thereof from the generator to the
circuits which he specially designed for that purpose.
This was an important step and greatly advanced his
original invention for practical purposes. The new in-
vention permeated the whole structure. He was en-
titled to claim all the co-operating elements in his new
combination, and to have a patent therefor, and such
15
patent would cover the known means for effecting the
particular operations comprehended by it. If he also
invented specially arranged apparatus not theretofore
known for executing some of the subordinate functions
of the whole machine, he was, upon the principles
above referred to, entitled to a patent for that also.
This was what he did by his invention covered by the
patent No. 416,193. It was an independent invention,
representing an improvement upon the known means
for effecting a beneficial purpose, which improvement
was not within the compass of the patent for the prin-
cipal combination.
Claim 2 is as follows:
“The combination with a source of alternating
currents and a circuit from the same, of a motor
having independent energizing circuits connected
in derivation or multiple arc with the said circuit,
the motor or energizing circuits being of different
electrical character, whereby the alternating cur-
rents therein will have a difference of phase as set
forth.”
This claim is of the same character as claim 1. It
contains some modifications thereof, but it stands on
the same footing for the application of the principles
referred to in the consideration of the 1st claim, and
the like result to that there indicated must follow.
Claim 6 is this
“In an alternating current motor, the combin-
ation with the field magnets or cores and independ-
ent energizing circuits of different active resist-
ance and adapted to be connected with the line or
transmission circuit, of an armature wound with
closed energizing coils or conductors, as set
forth.”
This claim is also of the same character as claim 1,
though it also suggests a peculiar construction by
16
winding the armature with closed energizing coils or
conductors. We need not repeat the conclusions
(which we have already stated with reference to the
previous claims) respecting the result which follows
upon a comparison with the invention of patent No.
416,193.
Then it is also said that claim 1 of patent No.
511,559 is broad and generic, and that it covers the
patent No. 416,193 previously issued. It is true that
the claim referred to is of the character ascribed to it.
We have so treated it ; but it does not follow that it
covers the former invention. As we have explained,
it does not cover it because the former patent is for an
independent invention of special means for fulfilling
some of the requirements of the broad patent.
We have significantly referred to the fact, that some
of the claims in the patents considered are for methods
and others for apparatus, for the purpose of founding
a distinction in the nature of the inventions. We have
assumed for the purpose of the discussion that certain
claims for methods might be regarded as claims for
generic means, but, in fact, they are made as claims for
methods, and there is no doubt that it is established
by authority, that an inventor may be entitled to a
patent for the method or process for producing new
and useful results, and also for the means by which
it is produced, when the method or process is suscep-
tible of being performed by known means, and the
means invented are of such a character as to merit a
patent (Merrill v. Yeomans, 94 U. S., 568). If no
means were known for practicing the method, the
patentee would be obliged to specify some means,
otherwise the invention could not be used. This
doctrine has special application to the patent No.
511,559, which is wholly for methods, when compared
with No. 416,193, which is wholly for apparatus.
In support of his contention, the learned counsel for
the appellant relies with much confidence upon the au-
thority of the cases of Miller v. AEagle Manufacturing Co.,
17
151 U. S., 186, and Palmer Pneumatic Tire Co. v. Lozier,
62 U.S. App., 651 (33 C. C. A.,255), the latter being a case
decided by this Court. But these cases do not sup-
port the doctrine for which he contends ; On the con-
trary they are both founded upon principles which ex-
clude its application here. In Miller v. AEagle Man-
wfacturing Co. the patents being considered were
both founded on the invention of a spring, which the
inventor devised to put into the combination of parts
of a cultivator. It extended from the beam carrying
the hoes, to and under a grooved wheel pinioned on a
post standing on the axle of the cultivator. The spring
was so constructed that when the cultivator hoes were
down and at work the spring would tend to hold them
down to their place. It also had the capacity to assist
in raising the beam, and, of course, the hoes, out of
and free from the ground as soon as the operator should
start the upward movement. The first patent was for
this spring when adapted to perform both functions in
combination with other parts of the cultivator. The
second patent was for the same spring in so far as it
was adapted to the function of assisting in raising the
beam, but that part of the spring which was adapted
to holding the implement down, although described,
was not claimed, and was, in fact, immaterial, since the
lifting did not employ the peculiarities of that part of
the spring adapted to effect the depressing of the
beam. The Supreme Court held that, inasmuch as the
former patent included the in vention of those charac-
teristics which helped to lift the beam as well as those
which tended to hold it down, and the later patent was
for a spring having only the same characteristics for
lifting the beam, the so-styled new invention was par-
cel of that already patented.
Substantially the same doctrine was applied in
McClaim v. Ortmayer, 141 U. S., 419. McClain had
invented a pad for horse collars, which employed a
double spring having a hook at each end for the pur-
pose of securing the pad to the forward and rearward
18
rolls of the collar respectively, and he claimed as his
invention a pad provided with such an attachment.
Afterwards, perceiving that a single spring adapted to
attachment to the forward roll would, in many in-
stances, be more useful than a double spring, he ap-
plied for and obtained a patent for a single spring
adapted to securing the pad to the forward roll. This
second patent was held void for the reason that there
was no new invention, the inventor having patented
simply a part of the invention previously patented.
So in Palmer Pneumatic Tire Co. v. Lozier, the
former patent was for a rubber fabric of peculiar
construction, when put into a pneumatic tire in
combination with other elements. As in the case
of the spring, the fabric was the only thing new
in the combination of the parts of the tire, and was
only an improvement of the former fabric which had
been used in the same place and for the same purpose.
The whole invention was exhausted in devising the
fabric, and it was for that invention that the patent
was granted. Moreover, the invention could not be
practiced by any means generally known, but only by
the means thus specifically described. The later pat-
ent was for the same fabric, and that only. There
was no new inventive act. The patentee had simply
extracted the kernel of his former patent and brought
it over to constitute the consideration for a new grant.
Both the cases referréd to stand upon the ground that
the first patent had been given for the actual invention,
and could not be supported without it. And the Court
in each instance, disregarding mere formal appearances,
looked to the substance of things and refused to recog-
nize as original that which it knew was old. In the
Miller case, Mr. Justice JACKSON, after canvassing a
number of previous cases, said:
“The result of the foregoing and other author-
ities is that no patent can issue for an invention
actually covered by a former patent, especially
to the same patentee, though the terms of the
claims may differ.”
19
And in the Palmer Pheumatic Tire Co. case this
Court, following the Miller case, said :
“That decision shows that it is not necessary
to the rule, that the patents should be for co-ex-
tensive inventions, or that the subject-matter
thereof should be technically the same.”
We have no disposition to depart from the rules in
respect to the identity of patents, and the method of
determining it, here adverted to, which we deem sound
and reasonable ; but it would be a misapplication of
them, and contrary to their spirit and purpose, to say
that independent inventions may not be the proper Sub-
jects of independent patents even though they may
relate to the same subject-matter and one may dominate
the other in the same field. The distinction seems clear,
and pains were taken in both of the above cases to
point it out. In the Miller case, Mr. Justice JACKSON,
after referring to several cases, further said:
“A single invention may include both the ma–
chine and the manufacture it creates, and in such
case, if the inventions are really separable, the
inventor may be entitled to a monopoly of each.
It is settled also that an inventor may make a new
improvement on his own invention of a patentable
character, for which he may obtain a separate
patent, and the cases cited come to this point, and
to this point only, that a later patent may be
granted when the invention is clearly distinct from
and independent of One previously patented.”
And in the Palmer Pneumatic Tire Co. case this
Court said : &
“ Undoubtedly, as pointed out in Miller v.
Jºagle Manufacturing Co., supra, it the second
patent is for a distinct and separate invention, or,
to put the matter in another way, has not been
made integral with another invention already
patented so as to be fairly necessary to its use, it
should be sustained if the other requisite condi-
tions exist,”
20
and we referred to the opinion delivered by Judge
TAFT in a former case, that of Thomson-Houston Elec-
tric Co. v. Ohio Brass Co., 54 U. S. App., 1 (26
C. C. A., 107), which was an illustration of that
class of cases and was one where the patent was
sustained. Another case of the same class is that
of Allington dº Curtis Mfg. Co. v. Globe Co., 89
Fed., 865, where a patent for improvements on a ma-
chine had been taken out pending a prior application
for a patent for the machine itself. Subsequently a
patent was granted for the machine. It was held by
Judge TAFT, again distinguishing the case of Miller v.
Eagle Manufacturing Co., that the granting of the
former patent did not invalidate the latter. And in a
more recent case, Thomson-Houston Electric Co. v.
Jeffrey Mfg. Co., 101 Fed., 121, this Court again
emphasized the distinction made in the foregoing
cases, and held that, the device in the later patent
being substantially that patented by a former patent,
the latter patent was void. To the same effect is
Thomson-Houston Electric Co. v. Hoosick Jºy. Co., 82
Fed., 461, in the Circuit Court of Appeals for the
Second Circuit.
The learned counsel lays special stress in his brief
upon the language contained in the opinion of this
Court in the Palmer Preumatic Tire Co. case, where
we said, as a deduction from the Miller case, that
“the rule rests upon the broad and obvious ground
that, if the second patent is for an invention that
was necessary to the use of the invention first
patented, it cannot be sustained.”
But we were there considering a class of cases
where the subject-matter of the later patent was an
essential and necessary part of the former invention
and covered by the patent granted therefor; and
the observation quoted has no application to that
other class of cases where the subject-matter of , the
later patent that is, the invention covered by it, was
21
not a component part of the former invention, but
was an independent invention not necessary
to the composition of the first, or included
in it. And in a later part of the opinion, as has been
already stated, we expressly distinguished the latter
class of cases from the former.
We are of the opinion that the patents in suit are
not void by reason of the inventions covered by them
having been previously patented, and, infringement not
being denied, the judgment must be affirmed.
(A true copy.)
FRANK O. LOVELAND,
Clerk U. S. Circuit Court of Appeals [SEAL.]
For the Sixth Circuit.
KERR, PAGE & COOPER,
For Complainant-Appellee.
ALBERT H. WALKER,
For Defendant-Appellant.
[20183]
A. c. MoTorts.-A. “
381,968.
382,279. -.
382,280. lº & 3
(No. 3. LièR*,
\ tº " . - * : *-
Mºvoſ) tº
Opinion—Circuit Court.
Tesla Polyphase System.
(Patents Nos. 381,968–382,279–382,280).
Full text of Judge Brown's Opinion in the case
of Westinghouse Electric and Manufacturing
Company, Complaznant, vs. Royal
Weaving Company, Defendant,
filed in the U.S. Circuit Court,
District of Rhode Island,
May 12, 1902.
C. G. Burgoyne, Walker and Centre Streets, New York.
Circuit COIt Of the United States
DISTRICT OF RHODE ISLAND.
IN EQUITY, No. 2599.
WESTINGHOUSE ELECTRIC - & MANU-
FACTURING COMPANY.,
Complainant,
WS.
BOYAL WEAVING COMPANY.,
Defendant.
OPINION OF THE COURT,
May 12, 1902.
BROWN, J. :
This is a petition for a preliminary injunction against
infringement of patents No. 381,968, No. 382,279 and
No. 382,280, granted May 1st, 1888, to Nicola Tesla.
These patents have been sustained, after full con-
sideration, by the Circuit Court of the United States
for the District of Connecticut, in a suit against the
New England Granite Company et al., 103 F. R., 951;
and by the Circuit Court of Appeals for the Second
Circuit in the same case, 110 F. R., 753.
The defendant cites the language of the Supreme
Court of the United States in Mast, Foos & Co. v.
Stover Mfg. Co., 177 U. S., 485 :
“Comity, however, has no applićation to ques-
tions not considered by the prior Court, or, in
patent cases, to alleged anticipating devices which
2
were not laid before that Court. As to such, the
action of the Court is purely orig nal, though the
fact that such anticipating devices were not called
to the attention of the prior Court is likely to
opell them to suspicion.”
The defendant contends that this Court should not
be governed by the prior decisions, for the reason that
it has before it new issues and new evidence.
The defendant relies principally on the French
patent to Dumesnil, No. 161,564, dated August 8, 1884;
and upon the French patent to Cabanellas, No. 168,-
172, dated April 9, 1885. It is said that the Dumesnil
and Cabanellas patents disclose what was not before
the Courts of the Second Circuit, namely : that two
single-phase synchronous motors could be coupled to-
gether, as by having their armatures mounted on the
same shaft ; and that these two motors might be run
each by its own circuit of alternating currents, which
might be supplied either by two single-phase alterna-
ting current generators mounted on the same shaft,
but so as to give currents out of phase with each other,
or that a single generator such as was known in the
prior art and which furnished the alternating currents
of differing phase, might have been used as the source
of supply.
While some of the general expressions of the opin-
ions might have been modified, had the Dumesnil and
Cabanellas patents been presented to the Courts of the
Second Circuit, a somewhat car ful and laborious ex-
amination of these patents, and of the interpretations
of them by experts, leads to the conclusion that these
patents, if produced to the Courts of the Second Cir-
cuit, would not have affected their decisions as to the
nature and novelty of Tesla's invention, and as to the
validity of the patents in suit. Neither does it seem to
me that these patents would have affected the con-
clusion that the invention of Tesla was one of great
novelty and merit.
The question whether Tesla was anticipated in the
production of a rotary magnetic field for power pur-
3
poses by the use of alternating currents of different
phase was fully and elaborately argued in these cases,
and fully and closely considered by the Courts. By
the decisions it was found that :
“Tesla's invention, considered in its essence,
was the production of a continuously rotating or
whirling field of magnetic forces for power pur-
poses by generating two or more displaced or dif-
fering phases of the alternating current, trans-
mitting such phases, with their independence pre-
served, to the motor, and utilizing the displaced
phases as such in the motor.”
Also, that he was the first to produce by alternating
currents for power purposes the shifting of the polar
lines of an annular magnet through the entire circum-
ference of the ring by the action of the magnetizing
forces properly related.
A magnetic field wherein, by the cooperative action
of two alternating currents, a resultant polar line pro-
gresses continuously towards the strengthening cur-
rent, thus producing an effect as if a permanent mag-
net had been carried bodily around a rotatable arma-
ture, I am unable to discover in the patents of Dumes-
nil or Cabanellas.
It is immaterial, therefore, to consider whether Tesla
was the first to disclose the use of two alternating cur-
rents of different phase to rotate a shaft, or the criti-
cism of those expressions in the opinions which may
attribute to Tesla priority in the disclosure of the use
of alternating currents of different phase for power
purposes.
The decisions upheld the Tesla patents, and these
patents well describe and claim the rotary magnetic
field.
The sphere within which the defendant must show
anticipation is narrower than that of the use of alter-
dating currents of different phase, with an ultimate ob-
ject of rotating a shaft. This renders much of the
matter in the defendant's affidavits irrelevant to the
4 .
question whether the prior decisions are controlling
upon this petition for a preliminary injunction.
Narrowing the question, then, to whether the de-
fendant has disclosed any anticipation of the rotary
magnetic field for which Tesla's patents were upheld,
we will consider the contention based upon the Dumes-
nil and Cabanellas patents.
While the fact that these patents, though pleaded in
previous litigation, were not put in evidence or brought
before the Courts, tends to awaken the suspicion that
they have heretofore been considered too remote from
the real questions presented by the Tesla patents, the
defendant is still entitled to a consideration of the
argument which it bases upon these patents. -
Considering first the Dumesnil patent, and the draw-
ings which are offered to show the “double crank ac-
tion ” of the alternating currents, I find in this patent
no suggestion that two alternating currents could, by
their combined use, produce such magnetic effects as
would be sufficient in themselves to rotate an arma-
ture ; much less a suggestion that, by the combined
use of two currents, a continuous rotary effect could
be produced like that of a magnet carried bodily
around the armature.
To couple two single-phase synchronous motors
upon one shaft, displacing the poles of one armature
angularly with respect to the other, so that one motor
expends its maximum effort while the other expends
its minimum effort, does not seem to me to exhibit the
Tesla invention as described and claimed in the Tesla
patents. In the opinion of Judge SHIPMAN, it is stated
that “Tesla must have a continuously rotating field.”
The combination of two single-phase machines may
have a “resultant ’’ as distinguished from a summative
effect upon the shaft; but the resultant ’’ of the
operation of two machines is a different thing from the
magnetic resultant of two currents upon a common ele-
ment, as a Tesla ring or an armature within that ring.
If two single-phase machines are capable of rotating
a shaft better than one machine, it is because the
5
mechanical action of each single-phase machine is
communicated through a shaft to assist the other
machine. The armature of one machine would then be
subjected, first, to a magnetic effort from its own field
magnet, then to a mechanical effort from the shaft,
which would bring it in position for the next magnetic
impulse. The whole operation of the two single-phase
machines in combination would be from intermittent
magnetic and mechanical efforts; neither magnetic field
would be a rotary. t
To show Dumesnil's combination of two single-phase
machines, however, it is necessary to add another
factor : The action of the magnetic poles of his arma-
tures. Dumesnil nowhere suggests that continuous
rotary action or tendency will result without the
opposition of the magnetism of the armature to the
magnetism of the field poles, or that by induction the
field poles will properly magnetize the armature.
Dunlesnil, therefore, does not anticipate, since he fails
to show that two alternating currents can, merely by
combination of their magnetic effects, produce a con-
tinuous rotary effort, or that the action of two different
magnetic forces upon a common element will give a
resultant magnetic pole which exerts its force at posi-
tions intermediate of the field poles.
If we concede that figure 9 of the Hering affidavit
might be considered as a mere mechanical consolida-
tion of figures 7 and 8, we cannot accept the statement
that Dumesnil shows beyond question the arrangement
of figures 7 and 8 as adequate to produce a constant
rotary effect upon a shaft. Dumesnil nowhere dis-
closes or suggests the idea that such an electrical de-
vice as is shown in figures 7 and 8 can produce a
rotary effect upon a shaft. The magnetic poles of the
armature are described by him as features essential to
rotary motion. His patent must be considered as a
mere publication, giving a description and plan of
operation. To make the figures of the Hering affidavit
illustrate both Dumesnil and Tesla, it is necessary
6
to ignore what Dumesnil proposes as an essential
feature.
Dumesnil, in my opinion, does not show a magnetic
polar line, which is the resultant of two alternating
currents of different phase ; neither does he show any
plan for producing a rotary effect merely by the un-
aided action of two alternating currents.
THE PATENT TO CABANELLAs.
This patent, upon many readings, seems to me to be
fairly characterized by the complainant's counsel as
“expressed in such obscure and indefinite terms
as to be hopelessly unintelligible, except in a few
unimportant particulars,”
and as requiring an exceptional exercise of the imagi-
native powers in translating its phrases into electrical
diagrams.
It is contended that Cabanellas, like Dumesnil, con-
templated arranging two single-phase machines side by
side with the elements displaced so as to displace the
phases of the currents, and thus get a continuous ro-
tary effort from two currents. But, like Dumesnil,
Cabanellas fails to show a magnetic pole which is the
resultant of two alternating currents. When, there-
fore, the defendant's experts say that the armatures of
Dumesnil and Cabanellas are caused to rotate
“by the rotation of resultant magnetic attractions
set up by the joint action of two or more alter-
nating currents of different phases,”
and that
“ these features of the prior Dumesnil and Caba-
mellas patents cover the ground of the Tesla patents
in suit, and in substantially the same manner
when the said patents are given a broad inter-
pretation in accordance with the decisions of the
Courts,”
their testimony must be regarded as based upon a mis-
interpretation of the decisions of those Courts, and
7
upon a failure to recognize that it was expressly found
that Tesla must have as a resultant of the currents
a continuously rotating field of magnetic forces. The
“ resultant ’’ of the decisions is that which is produced
by combining upon a common element the magnetism
created by two alternating currents. This magnetic
resultant, applied to power purposes, I understand to
be the Tesla invention. The defendant’s “resultant ’’
is not a magnetic resultant, but merely the rotation
of the armature.
Conceding that Dumesnil, Cabanellas and Tesla all
rotate an armature, the point for comparison is as to
the way in which this rotation is accomplished. . Con-
ceding, further, for the purposes of this petition, that
all employ alternating currents of different phase, Tesla
alone discloses means whereby two alternating currents
may so magnetize a common element as to produce a
force with a constant rotary effect. Dumesnil and
Cabanellas, at best show the combined use of two motors
of an old type having the characteristic defects of such
motors, and lacking the characteristics of the Tesla
motors. Even if two of these motors can assist each
other by so timing their mechanical efforts that one
exerts its maximum effect, while the other exerts its
minimum effect, I do not find in such a combination
of two machines the invention of Tesla, nor the “rotary
field" which was apparently conceded by the defendant
in the prior suits to be the proper subject matter of
controversy in determining the validity of the Tesla
patent.
This defendant seeks to show anticipation by an in-
terpretation of the prior decisions which is too broad;
and does not, in my opinion, show anticipation of what
was decided to be the Tesla invention and the subject-
matter of his patents.
The question of infringement seems to be substan-
tially determined by the prior decisions.
The question of laches and estoppel do not require
extended discussion. These matters were ably and
carefully presented at the hearing, and the opinion
8
formed by me at that time was adverse to these con-
tentions. Upon an examination of the entire record
relating to these points, my opinion is confirmed that
this defendant decided the question of adopting its
motors as a mere business proposition ; that it con-
templated, as a part of this proposition, the risk of in-
fringing the complainant's patents, and took the risk
with its eyes Open, relying upon protection from its
vendors or from others ; consequently, upon this hear-
ing, it must stand by its business proposition. I fail
to see that the defendant has in any way been inequit-
ably treated by the complainant.
It is implied by the argument that if a patentee does
not see fit to shape his business to suit the wishes of
persons who desire to use his invention, this in some way
creates an equity which entitles such persons to use
the invention in such specific form as they prefer with-
out the consent of the patentee. I see no ground for
thus abridging the rights of the patentee.
The objection to granting a full preliminary injunc-
tion is the hardship which would result to the defend-
ant and its employees from preventing the use of the
motors now installed in the defendant's factory. This
objection, however, is insufficient to deprive the com-
plainant of all right to a preliminary injunction, but
goes rather to the question of the extent of the decree.
The record upon this petition is voluminous, and we
must recognize the possibility of error upon a subject
of considerable complication and difficulty, and should
seek to avoid, so far as possible, mischief which might
arise before such error can be corrected. It is also
due to the complainant that we should recognize that
it has established the validity of the patents after
meeting and overcoming a most skillful and elaborate
defense, and that its rights, thus established, should
not be evaded or rendered worthless by unnecessary
delay in their enforcement. While there are objec-
tions to determining questions like those raised upon
this petition, Save upon final hearing, the Court must
also consider that it is objectionable to refuse an in-
9
junction merely because of voluminous or complicated
matters of defense. t w
This defendant, to avoid the effect of the former de-
cisions, should show not only that new matters and
new issues are presented, but that the new matter
might require a different decision as to the character
of Tesla's invention and as to the validity of his pat-
ents. Though the argument for the defendant has been
presented forcibly and with ability, I am of the opinion
that the defense to this petition is insufficient, since it
does not seem to me to meet the points actually de-
cided by the Courts of the Second Circuit.
Upon the complainant's brief, it is suggested that
the order for a preliminary injunction can be granted
upon terms which will impose no hardship or unnec-
essary damage upon the defendant, its employees, or
the public. To such an injunction, with special terms
as to the motors actually installed and in use in the
defendant's factory, I am of the opinion that the com-
plainant is entitled. Under all the circumstances, it
would seem hardly necessary to make an immediate
order permitting or requiring the gradual substitution
of licensed for unlicensed motors. The complainant
probably can be sufficiently protected as to these mo-
tors by a suitable bond, and by terms as to the speedy
prosecution of the case to a final decision. The ques-
tions whether the defendant may be permitted to con-
tinue temporarily the use of the motors now installed,
and if so, upon what terms, are reserved.
I, WILLIAM P. CROSS, Clerk of the Circuit Court of
the United States for the District of Rhode Island do
hereby certify that the foregoing is a true copy of the
original now on file and of record in this office.
Witness my hand and the seal of said Court
at Providence in said district this
(SEAL. 13th day of May, A. D., 1902.
(Sd.) WILLIAM P. CRoss,
Clerk.
[20413]
223
366,362.
No. 2.
.7 °
W 5.5 º -
MC 23 ºn
Opinion—Court of Appeals.
Oil Cooled Transformer Case.
(Westinghouse Patent 366,362.)
Opinion in the case of Westinghouse Electric and
Manufacturing Co., Complainant-Appellee, VS.
Union Carbide Co., Defendant-Appellant,
filed in the U. S. Circuit Court of
Appeals, Second Circuit,
May 29, 1902.
C. G. BURGoyNE, Walker and Centre Streets, N. Y.
United StatestirClit00urtOfAppeals
FOR THE SECOND CIRCUIT.
THE WESTINGHOUSE ELECTRIC AND
MANUFACTURING COMPANY
WS.
THE UNION CARBIDE COMPANY.
J.
THE THOMSON-HOUSTON ELECTRIC CO.
WS.
THE SAME.
RERR, PAGE & COOPER, for Complainant-Appellee.
A. C. FOWLER, for Defendant-Appellant.
These causes come here upon appeal from a final
decree of the Circuit Court, Western District of New
York, granting an injunction and an accounting in a
suit for infringement of Patents No. 366,362, granted
to George Westinghouse, Jr., July 12, 1887, and No.
508,654, granted to Elihu Thomson, November 14, 1893,
for Cooling Transformers.
TOWNSEND, Circuit Judge :
The specification of the Westinghouse Patent in
suit states its subject matter as follows : -
“The invention relates to the construction of
a class of apparatus employed for transforming
2
alternating or intermittent electric currents of
any required character into currents differing
therefrom in certain characteristics. Such ap-
paratus are usually termed ‘induction coils,’ or
‘converters.’”
This apparatus comprises a core of soft iron wound
with two coils of insulated copper wire, the one a
primary coil, which receives and transmits the magnetic
current ; the other a secondary coil, which transforms
the pressure and quantity of the current according to
the purpose for which it is required. The type of
transformer here under consideration is known as the
step-down transformer. A current of high pressure and
small volume transmitted from a distance may by its
use be transformed to a current of low pressure and
large volume, and then adapted for ordinary house-
hold uses. The object of the Westinghouse improve-
ment is stated by the patentee as follows :
“The object of this invention is to provide a
simple and efficient converter which will not be-
come overheated when employed for a long
time in transforming current of high electro-
motive force, and which will be thoroughly
ventilated.”
The patentee primarily proposed to obviate the seri-
ous objection of loss of energy by Overheating in-
volved in such transformation by separating the plates
of the core and the primary and secondary coils from
each other so as to permit of ventilation. This con-
struction, adapted for ventilating purposes, is covered
by the other claims not in suit, and is not involved
herein. t
The particular construction which is the subject of
the fourth claim, the only one involved herein, is
suggested as follows:
“It may be preferred in some instances to
surround the converter with some oil or
paraffine or other suitable material, which will
assist in preserving insulation and will not be
injured by heating. This material, when in a
liquid form, circulates through the tubes and
the intervening spaces of the coils and plates,
and preserves the insulation, excludes the moist-
ure and cools the converter.
“The entire converter may be sealed into an
inclosing case, H, which may or may not con-
tain a non-conducting fluid or a gas.”
Said claim is as follows:
“4. The combination, substantially as de-
scribed, of an electric converter constructed with
open spaces in its core, an inclosing case, and
a non-conducting fluid or gas in said case
adapted to circulate through said spaces and
about the converter.”
Complainant contends that this claim covers a trans-
former whose surfaces are cooled by means of oil cir-
culating through said open spaces in said core and
confined in said inclosing case.
The first objection raised to this contention is
estoppel by reason of proceedings in the Patent Office.
There the patentee, it is true, erased a claim for a
combination of a converter and inclosing air-tight case
a fluid therein, which was identical with the claim in
another pending application, and modified his claims
for ventilating spaces between the core and the coils.
But the claim here in suit was filed with his original
application and it was never canceled or modified.
That other combinations originally claimed by him
were old appears from the prior art. Converters hav-
ing open spaces in the core to avoid heating were old.
In the Hindley & Buffham Patent of 1882, No.
266,290, for a Generator, is disclosed the arrangement
of wires
“whereby openings or spaces are provided for
the free circulation of air"
in order
4
“ to overcome in a great degree the generation
2 3 9 85
of heat,
and the patentees describe the winding of the coils
“ in separate groups so that air can freely circu-
late through them.”
And in this patentee's earlier patent, No. 342,553, of
1886, he stated that its object was to
“construct the converter in such manner that
there shall be but little loss of energy through
heating the iron,”
and described a core composed of thin plates
“separated from each other by intervening
washers or plates of non-magnetic material—
such as vulcanized fiber—and an air space may
be left, if desirable, between each two plates.”
The use of oil or other non-conducting fluid to re-
duce the conductivity of the wire coils of a dynamo
when driven at a high speed and thus reduce the heat
is described in the Millar Patent, No. 270,457, of
1883. -
Defendant's counsel chiefly rely on the Stanley Pat-
ent No. 349,612, of 1886, for an Induction Coil, in
which, they say, they &
“ have the identical combination of the fourth
claim of the Westinghouse Patent.”
This patent is for a converter. The plates of the
core are so stamped as to form interior and exterior
teeth. Of the plates the specification says:
“They are placed upon each other, the posi-
tions of the teeth coinciding; but they are in-
sulated or separated from each other by paper,
cloth, asbestos, oil-silk, air, or other well-known
insulating material, and they are firmly bolted
or otherwise secured together.”
5
The specification further says:
“The coil is preferably protected by being
placed within a suitable case consisting of a
base F, to which there is secured a removable
cover, Fl. In the cover there are preferably
formed perforations f f.”
Although the drawings do not show open spaces in
the core, and defendant’s expert assumes that there are
no such spaces, yet it appears from the foregoing de-
scription that the patentee conceived the idea of a
separation of the plates either so as to admit air or
to provide for the insertion of some fabric for purposes
of insulation. The description and drawings of the
Stanley Patent show a base plate and perforated cover
adapted to ventilate the converter and to protect it
from physical injury. We have, then, in the prior art
every element of the combination claimed and a phy-
sical combination of the same elements, except that
the separations in Stanley are not adapted to and the
construction of the enclosing case is prohibitive of the
purposes of the claim in suit. This claim covers such
an enclosing case as will confine the non-conducting
fluid, and such open spaces in the core as will permit
the circulation of the liquid through them.
Westinghouse, then, was the first to patent such an
air tight, closed converter. Does the combination
covered by the claim in suit show patentable inven-
tion ?
If the idea of ventilation be rejected, and the patent
be confined to the statement of and claim for the
enclosed construction, it embodies at least a combina-
tion radically modified from those of the prior art, in
order to adapt it to a novel purpose. The primitive
telegraph coils of the Brooks Patent of 1878 were
immersed in oil
“to protect them from the influence of the damp
atmosphere,”
6
and the Miller dynamo, without open spaces in its core,
had its coils suspended in a tank of oil. But the
construction of these devices excluded the novel idea
of oil which would
“circulate through the tubes and intervening
spaces of the coils and plates.” - -
And while the assumed or suggested separations
between the plates of the Stanley Patent would be
sufficient for insulation only and not for circulation, its
enclosing case is not sealed so as to contain the cir-
culating oil, and the use of oil is not suggested.
In these circumstances, the patentee seems to be
entitled to claim the means by which the external and
internal surfaces of the heat producing parts of a con-
verter were cooled by such an arrangement and separa-
tion of parts as would permit the circulation about
them of oil, and the means for the retention of said oil
within and about said surfaces, whereby the heat from
the oil radiated to the surrounding air. If there is any
doubt upon the question of patentability, the practical
and commercial results of this improvement must
resolve such doubt in its favor.
It appears that in the early history of the art only
small converters were used and the heat generated in
them was dissipated by radiation into the surrounding
air. But when the art began to call for converters ex-
ceeding ten kilowatts in capacity, it was found, as
stated by the expert for complainant,
“ that the capacity of the transformer increased
as the cube of the linear dimensions, and the
heat, if the amount of loss was held stationary,
would increase in like proportion, while the
radiating surface would increase only as the
square of the linear dimensions.”
Further difficulties were encountered resulting from
the inequality of the conductivity of iron and copper.
The testimony herein shows that these difficulties were
7
so serious that for some time it was feared that the
practical limit of such transformers had been reached ;
that experiments were made by grouping, by the use
of lower current densities, by filling the cases with oil
and by subdividing the iron and copper parts of the
converters by large ducts and using forced drafts. It
was only when, as the result of these experiments, it
was found that the oil would circulate through the
ducts that any practical progress was made. Then, as
complainant's expert says:
“ the problem of making large units became
greatly simplified. It became only necessary to
so subdivide the coils and iron so as to expose
a uniform surface as compared with the losses
in the transformer in all sizes, and to provide a
case having sufficient external surface to enable
the oil again to give up its heat to the surround-
ing air, to make transformers of the desired
capacity.”
The practical result of the invention in suit, as testi-
fied to by complainant's experts, was to so increase the
capacity of converters that while a dry converter cooled
by the natural circulation of air is limited to ten kilo-
watts, the oil insulated converters of the patent in suit
are commercially serviceable up to five hundred kilo-
watts. -
sº * P *- y * j, * gº
4 * * \ g # * 4 *
*
The decree is affirmed as to Patent No. 366,362, and
reversed as to Patent No. 508,654.
[20558] if
223 - A. C. MOTORS.—A.
, 7 % ! 381,968.
- . . - 382,279. º
No. 4.
Injunction Order—Circuit Court.
Tesla Polyphase System.
(Patents Nos. 381,968–382,279–382,280).
Full text of Order for Injunction in the case
of Westinghouse Electric and Manufacturing
Company, Complaznant, vs. Royal
Weaving Company, Defendant,
filed in the U. S. Circuit Court,
District of Rhode Island,
June 23, 1902.
C. G. BURGoyNE, Walker and Centre Streets, N. Y.
At a Stated term of the United States Cir-
cuit. Court, for the District of Rhode
Island, held at the United States
Court and Post Office Building in
the City of Providence, R.I., on the
23rd day of June, 1902.
Bresent—HoN. ARTHUR T. BROWN, Judge.
•=m-m- \
WESTINGHOUSE ELECTRIC & MANU-
FACTURING COMPANY,
- Complainant,
In Equity,
WS. No. 2599.
ROYAL WEAVING COMPANY.,
Defendant.
On reading and filing the complainant's papers on a
motion for a preliminary injunction herein, and the
defendant's papers in reply thereto ; and after hear-
ing arguments by counsel for the respective parties
and having duly considered the same and the briefs on
behalf of the said parties;
Now, on motion of Kerr, Page & Cooper, solicitors
for the complainant, it is
ORDERED that an injunction pendente lite issue
against the defendant above named, restraining it, its
officers, agents, attorneys, workmen, representatives
and employees from manufacturing, using, selling or
putting into practice the inventions or improvements,
or any of them, recited or specified in claims 1 and 3
of patent No. 381,968, claims 1, 2 and 3 of patent No.
2
382,279, and the claim of patent No. 382,280, or any
of them, or in any manner infringing upon the rights
of the complainant thereunder.
And it is furthered ordered, that said injunction
pendente lite be suspended as to those motors (not ex-
ceeding two hundred and seventy (270) in number)
which were actually installed and in operation
at the defendant's place of business in Pawtucket, R.
I. On February 7th, 1902, upon condition that the de-
fendant, within thirty days from the entry hereof, give
bond in the sum of fifteen thousand dollars ($15,000.)
with good and sufficient sureties, to pay all damages
and profits with reference to any account which may
be found or assessed against said defendant by reason
of the purchase and use of the two hundred and
seventy motors hereinbefore referred to (and the
system in which they are used); but that as to all
other infringing motors, apparatus and systems said
injunction shall be and remain in full force and effect.
ARTHUR L. BROWN,
U. S. Judge.
IEntered June 23, 1902.
I, WILLIAM P. CROSS, Clerk of the Circuit Court of
the United States for the District of Rhode Island, do
hereby certify that the foregoing is a true and correct
copy of the decree entered in said court on the 23rd
day of June, A. D. 1902, in the case of Westinghouse
Electric & Manufacturing Company vs. Royal Weaving
Company. tº
In witness whereof, I have hereunto set my
hand, and the seal of said Court,
[SEAL.] this 13th day of September, A. D.
1902.
WILLIAM P. CROSS,
Clerk.
[21156]
366,362.
No. 3.
--, -, S.
- **
- $
Order for Injunction.
Oil Cooled Transformer Case.
(Westinghouse Patent 366,362.)
Full text of Order for Injunction in the case of Westing.
house Electric and Manufacturing Co., Complainant,
vs. Wagner Electric Manufacturing Co.,
Pefendant, filed in the U. S. Circuit
Court, Eastern District of
Missouri, June 30, 1902.
C. G. Burgoyne, Walker and Centre Streets, N. Y.
At a stated term of the United States Cir-
cuit Court for the Eastern District of
Missouri (Eastern Division), held in
the United States Court and Post-
Office Building, in the City of St.
Louis, Missouri, on the 30th day of
June, 1902.
Present—-HONORABLE ELMER. B. ADAMS, Judge.
WESTINGHOUSE ELECTRIC & MANU-
FACTURING COMPANY.,
Complainant,
WS. In Equity,
e No.
WAGNER ELECTRIC MANUFACTURING
COMPANY.,
Defendant.
On reading and filing the bill of complaint herein,
the order to show cause dated June 24th, 1902, and
the affidavits of Thomas B. Kerr, Charles A. Terry,
Benjamin B. Hull and William J. Jenks and the ex-
hibits referred to therein, upon which said order to
show cause was granted.
Now, on motion of Byron K. Babbitt, Solicitor for
the Complainant, the defendant appearing by A. C.
Fowler, its Counsel, and not opposing but stating its
intention, as at present advised, of moving hereafter
for a dissolution of this order upon a proper showing,
if so advised, it is -
ORDERED, that an injunction pendente lite be issued
forthwith, in due form of law, against the defendant
2
the Wagner Electric Manufacturing Company restrain-
ing it, its officers, agents, servants, attorneys, workmen
and employees, and each and every One of them, from
making, constructing, vending, using or putting into
practice the invention or improvements recited or
specified in Claim 4 of United States Letters Patent,
numbered 366,362, issued on July 12, 1887, and now
owned by the above-named complainant, or in any
manner infringing upon the said fourth claim of said
patent, or upon the rights of the complainant there-
under, until the final determination of this suit.
- E. B. ADAMS,
Judge.
[20764]
A. c. Moroas-c.
511,559.
* 511,560. .
No. 4. . .
: f * f - ... * * * * * - -
ſº tl3}ARY
* . k * -
... W s . ''. A.; * : * *. ~, -
‘’’ x\,..ts,
* * . .
* . . $º
ºf . , s , , . .
• * , . . . . . ;,
Opinion—Court of Appeals.
-z-
Tesla Split-Phase Motor.
(Patents Nos. 51 1,559 and 511,560).
* * ~~~~~~--- * ~ *-*-º-º-º-º-º
Full text of Opinion of Court of Appeals in the case of
. Westinghouse Electric and Manufacturing Company,
* Complainant, Appellee, vs. The Dayton Fan and
Motor Company, Deſendant, Appe//ant,
filed in the U. S. Circuit Court of
Appeals, Sixth Circuit.
Decided. November 5, 1902.
*
--- … < * ~ - -º-º-º- - - -- * *** -- - -- ~~ *-*~ *-*.
C. G. Burgoyne, Walker and Centre Street, N. Y.
NO, 962.
UnitelSalesGirºlit(MItofA)Bils
SIXTH CIRCUIT.
DAYTON FAN AND MOTOR Co.,
Appellant,
Appeal from the
W. Circuit Court of
the United States
for the Southern
WESTINGHOUSE ELECTRIC AND MANU- District of Ohio.
FACTURING CO.,
Appellee.
SUBMITTED NOVEMBER 13, 1901.
DECIDED NOVEMBER 5, 1902.
Before LURTON, DAY and SEVERENs, Circuit Judges.
SEVERENS, Circuit Judge, delivered the opinion of
the court.
The bill, which was filed in this cause by the above
named appellee, complains of the infringement by the
appellant of rights secured by letters patent No.
511,559, issued December 26, 1893, to Nikola Tesla,
and by letters patent No. 511,560, issued on the same
day to the same grantee, both of which patents the
appellee claims to own by assignment. The patents,
both of them, relate to Tesla's System of Electrical
Power Transmission, disclosed in his patents Nos.
2
382,279 and 382,280, issued May 1, 1888, and are for
improvements in said system. The grounds upon
which the appellant rested its defense at the hearing
in this court were that the claims of the patents on
which the appellee founded its suit were void for want
of invention, and also that the inventions covered by
said claims had been the subjects of a former patent,
No. 416,193, issued to the same inventor, and that as
an invention can not lawfully be twice patented, these
later patents were void. Other grounds for disputing
the validity of the patents were not pressed, nor was
infringement denied, if the patents were to be held
valid.
A brief description of Tesla's original invention, in
which he developed his system in its application to the
construction and operation of motors propelled by
electro-magnetic power, is necessary to a clear under-
standing of the patents in suit. It consisted of an
electro-magnetic generator so organized as to develop
and transmit through two or more independent circuits
alternating currents proceeding in definite succession
to the motor ; and a motor constructed in circular form
and so organized as to receive the respective alternat-
ing currents from the generator upon corresponding
segments into which the ring of the motor is divided,
and having an armature rigidly fixed in the center of
the motor to an operating shaft extending transversely
therethrough, the outer end of said armature being free
and extending to a close proximity with the ring of the
motor and so susceptible of being actuated around its
rigid center by the continuous shifting of the pole pro-
duced by the successive impulses of the currents pro-
ceeding from the generator to the respective segments
of the ring. This organization is shown in the figure
below.
A more particular description of the generator is un-
necessary to be now stated, for the controversy re-
lates almost wholly to the circuits and motor, though
its construction and operation are incidentally involved
and will be referred to in the discussion of the princi-
3
pal subjects. But it will be useful to describe some-
what more particularly the motor and the method of
its operation. We have stated that the ring of the
motor was in segments. It was only theoretically so
for, in fact, it was entire. It was made of material
which constitutes a good conductor, and around each
pair of its several alternate segments is coiled one of
the wires of a circuit coming from the generator, in the
manner shown by the diagram. The alternating cur-
rents coming in succession through the coils, succes-
sively energize the segments of the rings on which they
are respectively wound. The flow of the current de-
velops magnetism and this sets up polarity. The poles
of the respective segments meet in the ring of the
motor and a consequent pole is established, resulting
from the conjoint influence of the two currents, and
this consequent pole will be manifested along the ring
between the poles of the two pairs of segments, the loca-
tion of the pole being governed by the relative strength
of the two currents; and the armature will constantly
turn to this pole. Thus when the motor is being oper-
ated, the consequent pole will be shifted as the cur-
rent in one pair of the segments of the ring grows
stronger and the current in the corresponding pair of
segments grows weaker, and vice versa. The circuits
are disposed in corresponding pairs on the opposite
Segments of the motor ring, and by successively ener-
gizing them with their currents, the pole is kept mov-
ing progessively from place to place around the ring
drawing by its attraction the free end of the armature
and thereby rotating the shaft to which the armature is
attached.
The following figure illustrates the machine and its
mode of operation :
wº
!—
—
On the left is the generator ; on the right is the
motor. Between them are shown two independent
circuits, carrying alternating currents, extending from
the generator to the respective segments of the motor,
H H, and K. K. When the current in the coils K K is
mil and the current in coils H H is at its maximum,
the pole will be equidistant between the latter on the
line a. oº, as shown, and, of course, the armature will
stand on the same line. If, now, the current in the
coils H H be diminished and that in the coils K K be
increased, the pole will be carried over to the righthand
toward the line 2 2, the armature following it. Then, if
the coils in K K are receiving a still stronger current
and those in H H a weaker one, the pole will be car-
ried over to the right still further toward the line y y,
the armature continuing to follow it ; and so on pro-
gressively through the rotation.
In these patents the alternating currents are said to
be of differing plases; that is, as we understand, having
varying degrees of strength or voltage manifested at the
same moment of time. It is not necessary to go into


5
an explanation of the method by which the generator
supplies the alternating currents and determines the
order of their succession.
We learn that very shortly after this original inven-
tion it was found that it was of great practical impor-
tance to dispense with the peculiar generators of the
Original structure, and, if possible, to substitute the
simpler form of generators adapted to the trans-
mission of currents over single circuits. The patents
in suit are some of a considerable number containing
many devices which the same inventor produced to
meet this requirement. The substantial improvnent
made by them was to take out of the generator and to
carry over into the circuits near to the motor the pro-
vision for effecting the succession of the alternating
currents by which the motor is operated. The Circuit
Court held the patents involved in this suit valid and
infringed. The defendant in that Court, upon this ap-
peal, submits the questions whether these patents are
valid in view of the then state of the art, and whether
they can be sustained as covering independent inven-
tions in view of a previously patented invention of
the same patentee relating to the same subject,
and, as is strenuously contended by counsel, covering
the identical inventions of the patents in suit.
Proceeding to the first question, we insert here for
reference Fig. 1 of the drawings annexed to patent No.
511,559, which fairly illustrates in a general way the
changes made in the original structure in order to
bring the current from the generator by a single cir-
cuit.
7& Z.
&zzera/oz:
O- 22
* .27 O , 29 —-mº.

(5 ©
B B are the lines of the single circuit. At b b the
lines are divided, one of each of the divided lines pass-
ing uninterruptedly to the segments C C of the motor.
The other lines are connected with the primary coil,
P, of a transformer, or induction coil, T. A secondary
current is set up in the coil, P1, which is carried by the
secondary circuit to the segments D D of the motor.
The current, which is taken off the original circuit, is
delayed by the process of induction and the delay is
so regulated that it reaches the motor in a predeter-
mined Order of succession to that of the primary cir-
cuit. This method of causing by induction one cur-
rent to lag behind the other is only one of many ways
of effecting that result, but it explains the scheme on
which these patents were founded.
It is not seriously disputed that the original inven-
tion of Tesla above mentioned was new and patentable.
But it is contended that the particular inventions of the
patents in suit were not new, or at most were not
beyond the skill of those practiced in the art, in view
of what had already been attained and published in the
development of the subject, at the time when these pat-
ents were applied for, by other scientific men and by
himself in previously patented inventions. The history
of this development involves too long an account to be
here given, and we must content ourselves with a gen-
eral statement of the conditions which existed at the
time to which the objection has reference. It was, of
course, known how alternating currents could be pro-
duced. It was also known that a current could be
divided and one of the divided currents be made to lag
behind the other, either by induction of one of them,
or by using smaller wire in One of the circuits, or dif-
ferent material, and probably in other ways. So the
method of generating electro-magnetism and the laws
of its operation and many methods by which it could
be employed for practical purposes were understood;
and, especially taking into account what Tesla had
himself discovered, devised and patented, it was known
that electro-motive power might be used for Operating
7
a motor distant from the generator. One method
was disclosed by his original invention which employed
two or more circuits. Other ways had been disclosed
in his later patents in which the special character-
istic was the method of Organization by which he
dispensed with all but one of the circuits leading from
the generator and thereby also dispensing with the
generator of double circuits; and in some, one or more,
he had disclosed special means for Operating a motor
upon his general scheme. But no one else had pub-
licly disclosed, so far as we can discover, nor had he
himself disclosed and dedicated to the public the par-
ticular inventions which are disclosed by the patents
in Suit.
An argument of great research and cogency was made
by counsel for the appellant to establish the fact of
the existence of the condition of the art at the date of
the application for the patents in suit as we believe it
was, and have conceded it to have been. But it is
still contended that conceding the fact to be that no
one had made these particular inventions, yet that so
much was known to men learned in the science or
skilled in the art of the subject that it did not involve
invention to devise these ways and means for accom-
plishing the desired result. As to this it must be said
that the subject is one af the most abstruse and subtle
of all the practical sciences, and its pursuit involves
the exercise of the keenest intelligence and most patient
research that gifted men can bestow upon it. We
ought, therefore, to be cautious, when a distinct aud
practical improvement is made in so useful an art, in
denying to the author the reward which the law gives
to meritorious inventions. -
It is true, then, that the laws governing the action of
electro-magnetism were in general understood and
many advances had been made toward applying it to
practical uses, but no one besides Tesla had ever been
able to devise practicable means for applying its en-
ergy to the operation of a motor with any substantial
result. Without going through with an analysis of the
8
testimony, this is the resultant fact as we gather it
from the record. The effect of Tesla's own previous
inventions, and particularly of his previous patent,
416,193, upon the patents in suit we shall discuss later
in connection with the question whether these patents
cover inventions which were the subjects of a patent,
or patents, already granted to the same inventor.
Recurring to the question of lack of invention, it is
further to be observed that both before and after
Tesla's original invention the public interest in the
development of ways and means for applying the forces
of electricity and magnetism to effect motive power for
practical use was intense, and many scientific men
were endeavoring to discover how and by what means
this could be done. And notwithstanding Tesla had
devised a general scheme by which it could be done,
and had supplied a form or forms of apparatus by
which it could be accomplished, the field remained
open to invent any new subordinate methods or means
for carrying to a useful result the scheme which he had
inaugurated. The fact that in such circumstances no
one accomplished it is cogent evidence that these later
inventions of Tesla were beyond the compass of the
ordinary skill of the profession and beyond the line
which divides the products of such skill from inven-
tion.
In the case of Dowagiac Mfg. Co. vs. Superior Drill
Co., 115 Fed. 886, 894, in commenting upon a case in-
volving similar conditions we emphasize the value, as
evidence of invention, of such facts.
In each of the applications for the pateuts in suit,
the inventor disclaims for the purposes thereof other
methods and means, which he had embodied in other
applications. We think the inventions of the patents,
which form the basis of the controversy, were not
anticipated by anything theretofore discovered by
others, and were, so far as concerns their merits,
patentable.
Then as to the objection that these patents are for
subject-matter which had been already covered by
Tesla's prior patent No. 416,193. The former patent
referred to, as covering the inventions of the patents in
suit, is Tesla's patent, No. 416,193, issued December 3,
1889, upon an application filed May 20, 1889, and is for
a combination of motor and circuits. The claims are
as follows:
1. An alternating-current motor having two or
more energizing-circuits, the coils of one circuit
being composed of conductors of large size or
low resistance and those of the other of fewer
turns of smaller size or higher resistance, as set
forth.
2. In an alternating-current motor, the combi-
nation, with long and short field-cores, of ener-
gizing-coils included in independent circuits,
the coils on the longer cores containing an ex-
cess of copper or conductor over that in the
others, as set forth.
3. The combination, with a field-magnet corn-
posed of magnetic plates having an Open center
and pole-pieces or cores of different length, of
coils surrounding said cores and included in
independent circuits, the coils on the longer cores
containing an excess of copper Over that in the
others, as set forth. *
4. The combination, with a field-magnet com-
posed of magnetic plates having an open center
and pole-pieces or cores of different length, of
coils surrounding said cores and included in
independent circuits, the coils on the longer
cores containing an excess of copper over that
in the others and being set in recesses in the
iron core formed by the plates, as set forth.
This first claim represents the invention of certain
specific means for delivering at the motor alternating
currents in a predetermined order of succession. This
is done by so varying the capacity in the two circuits
for self-induction or resistance, one or both, resulting
from the difference of material used in the circuits or
from their mode of construction, one or both, as to ac-
complish the intended purpose of delaying one of the
currents behind the other. The properties utilized by
these means for producing the succession of the cur-
10
rents are those of self-induction and resistance in the
circuit. These terms, self-induction and resistance,
are used to signify means of hindering or delaying the
current in circuits as contradistinguished from induc-
tion proper, which consists in taking off, in part, the
current of the circuit by placing a conductor in prox-
imity to such circuit and within its influence, which is
thereupon transmitted over another line or circuit.
The second claim is for a subordinate feature, con-
sisting of the introduction into such motors of alternate
long and short field-Gores carrying the coils of the re-
spective circuits, the longer cores having an excess of
copper or conductor over that in the others. This claim
is also for specific means aiding in the result intended
to be accomplished by the means mentioned in the first
claim. -
The third claim, too, is for special means intended
to promote the advantages of the first claim.
The fourth claim consists of the same combination
as the third, with the added feature that the cores are
“Set in recesses in the iron core formed by the plates.”
This claim is also for auxiliary means introduced into
the mechanism already set forth in the preceding
claims.
Thus it will be seen that the whole body of the
claims in this patent relates to the construction of
motors and circuits capable of utilizing the properties
of self-induction and resistance in the circuit to effect
the delivery of alternating currents in such succession
as to induce a sustained rotation of the motor.
The first (in number) of the patents in suit is No.
511,559, issued December 26, 1893, upon an applica-
tion filed December 8, 1888. The claims are these :
1. The method of operating motors having
independent emergizing circuits, as herein set
forth, which consists in passing alternating cur-
rents throngh both of the said circuits and re-
tarding the phases of the current in one circuit
to a greater or less extent than in the other.
2. The method of operating motors having
independent energizing circuits, as herein set
11
forth, which consists in directing an alternating
current from a single source through both cir-
cuits of the motor and varying or modifying the
relative resistance or self-induction of the motor
circuits and thereby producing in the currents
differences of phase, as set forth.
This patent relates to a method or methods of trans-
mitting alternating currents proceeding from One origi-
nal source through both of the energizing circuits of
the motor, and at the same time retarding the phases
of the current in One circuit to a greater or less extent
than in the other. The patentee disclaims the specific
means which he employs in the method or methods,
which he discloses as his invention, reciting that they
are the subjects of other applications. -
Claim 1 consists of a method of operating the motor
by passing alternating currents to it through independ-
ent circuits and retarding the phases of the current in
one circuit more or less than in the other. The main
line is not included except as it is implied from the
specification that the independent circuits will be con-
nected with it and be energized therefrom.
This is the broad statement of the method which
Tesla employs in such of his constructions as use
several circuits divided from one main circuit pro-
ceeding from the generator. Having disclaimed the
apparatus by which the method is practiced, it is not
particularized, but is suggested in a general way.
The invention consists in dispensing with more than
one circuit from the generator by dividing the main
line at some point, which may be near the motor, and
by interposing in the divided lines some means known
to the electrical art for regulating the flow of the cur-
rent through the lines in such way as that they shall
successively emergize the different segments of the
motor. The patentee says in his specifications that
this distribution may be effected by induction of the
one current from the other, or by what is known as
derivation, in which case he inserts in one of the cir-
cuits a resistance or self-induction coil, in either of
12
which cases the current is retarded so that it alter-
nates with that over the other line in arriving at the
motor ; and he illustrates by several forms of ap-
paratus bow his method may be pursued. But these
suggested forms are not exclusive of other devices
adapted to the purpose, which, as he says, were well
known.
The second claim is substantially the same as the
first, but is more restricted in that it limits the
method of producing the alternation of the currents
by confining it to the use of means for varying the
relative resistance or self-induction in the motor cir-
cuits. e *
Patent No. 511,560, issued December 26, 1893, upon
an application filed December 8, 1888, is for apparatus.
It relates to means employed in the transmission of
electrical power to a motor through divided currents
derived from a single current proceeding from the gen-
erator, the said divided currents being so regulated
with reference to each as to arrive at their destina-
tion in the motor alternately. With what has al-
ready been stated about the nature of these inven-
tions, it will be sufficient to lead to an understanding
of this patent, so far as the purposes of this case
require, to state those claims which are supposed to
be infringed, namely, claims 1, 2 and 6, which are
these :
1. The combination with a source of alternat-
ing currents, and a circuit from the same, of a
motor having independent energizing circuits
connected with the said circuit, and means
for rendering the magnetic effects due to said
energizing circuits of different phase and an
armature within the influence of said energizing
circuits.
2. The combination with a source of alternat-
ing currents and a circuit from the same, of a
motor having independent energizing circuits
connected in derivation or multiple arc with the
said circuit, the motor or energizing circuits
being of different electrical character whereby
13
the alternating currents therein will have a differ-
ence of phase, as set forth.
6. In an alternating current motor, the com-
bination with the field magnets or cores and in-
dependent energizing circuits of different active
resistance and adapted to be connected with the
line or transmission circuit, of an armature
wound with closed energizing coils or conduct-
ors, as set forth. -
Claim 1 is for a combination made up of a genera-
tor, a single circuit leading therefrom, independent
energizing circuits connected with said single circuit, a
motor connected with said circuits having an armature
within the influence of said circuits, and means for
rendering the current in the circuits of different
phases. With respect to this last element no specific
means are called for. They may consist of any means
of the class designated. But the patentee in his
specification disclaims other means than those em-
ployed in case he takes one of the currents from the
other by derivation, that is, by a circuit which is con-
nected with the other so as to divide the current, as
distinguished from induction, where the new line is
not connected with the other ; and the means are
thereby limited to the former class. This combination
is of all the elements which make up an entire machine.
Claim 2 is much like claim 1 when the latter is
limited by the statement in the specification above
mentioned, except that the armature is not mentioned,
with the addition of specific means for effecting the
alternation of phases in the currents by making the
circuits of different electrical character.
Claim 6 introduces a new element into the combina-
tion, namely, an armature’ wound with closed energiz-
ing coils or conductors, a specific device to aid in
effecting the general result. -
It is contended by counsel for the appellant that
“ the invention of claim 2 of the patent in
suit, No. 511,559, is necessary to the use of the
motor of the former Tesla patent, No. 416,193.”
14
And also
“ that the invention of claims 1, 2 and 6 of the
other patent in suit, No. 511,560, is necessary to
the use of the motor ‘’
of said former patent; and, further, that claim 1 of the
patent in suit, No. 511,559, is a broad generic claim
which covers the said former patent. From these de-
ductious it is insisted that, so far as concerns the
claimes of the later patents which are here relied on,
they are for the same invention as that of the earlier
patent and therefore void. g
We will take up these several propositions in their
order:
FIRST : Is the invention of claim 2 of patent No.
511,559, “necessary to the use ’’ of the motor of No.
416,193? Claim 2 of No. 511,559 is for
“The method of Operating motors having in-
dependent emergizing circuits, as herein set forth,
which consists in directing an alternating cur-
rent from a single source through both circuits
of the motor and varying or modifying the rela-
tive resistance or self-induction of the motor
circuits and thereby producing in the currents
differences of phase, as set forth.”
The claim is for a method of accomplishing a certain
result. That method may be practiced by the employ-
ment of any means adapted to the purpose and then
known to the art, or which might thereafter become
known. To be sure, if the mechanical means em-
ployed are the subject of a patent, the party who uses
the process must have or secure the right to use the
patented method.
Assuming for the moment that claim 2 just men-
tioned was for a combination of generic means, such a
claim would cover all known means of the kind
enumerated. And it would cover all equivalents which
might thereafter be discovered by the ordinary skill
of the art and were not the fruit of invention, and
15
it would dominate the latter, if the latter was of an
improvement merely of the means covered by the
former invention. But the invention of means hitherto
unknown would be an independent invention not
covered by the patent, and according to the well-
settled rule would of itself be entitled to a patent. If
such an invention of improvements were made by a
stranger, it can not be doubted that he would be
entitled to a patent for it. It might be that it would
be impracticable for him to use it without acquiring
the privilege of the underlying invention ; nor could
the owner of the latter use the improvement except by
treaty with the owner of it. And no valid reason
exists why the patentee of an invention may not enjoy
the privilege of a stranger in thereafter obtaining a
patent for an independent invention made by him,
although it relate to the matter of his former patent,
and was described, but not claimed, therein, provided
he has not dedicated such independent invention to
the public ; and this, in the present instance, the
patentee had not dome. And we applied the rule
where the same person was the author of both in-
ventions, in Thomson-Houstom Electric Co. v. Ohio
Brass Co., 26 C. C. A., 107.
Now, as has already been stated, all the claims of the
patent No. 416,193, are for special means or apparatus
designed to be employed in carrying out the inventor's
method of Operating his motor, as described in patent
No. 511,559. Since, therefore, the invention of the spe-
cific means covered by these claims for the special
means and the generic invention were for independent
inventions and neither had been given to the public, it
was competent for the inventor to take out a patent for
each ; and we do not perceive that in such case it
would be material, that the taking out of the one patent
was prior to that of the other. In the present instance
the invention of the method (or generic means, as we
have assumed for argument it might be), shown by
claim 2 of the later patent no more covers the separate
invention of the former patent that does every broad
16
patent cover every invention of special matter covered
by such broad invention. But we shall recur to this
subject later.
SECOND. It is further claimed that the invention of
claims 1, 2 and 6 of the other of said later patents, No.
511,560, is necessary to the use of the motor described
in the former patent, No. 416,193, and is, therefore, for
the same invention. But as has already been stated
both the claims of the earliest of these two patents,
No. 416,193, are for certain specific means for produc-
ing the requisite succession of the currents. Generally
stated they are means for producing that result by the
particular methods characterized as self-induction and
resistance, whereby the current in one of the circuits
is made to lag behind the other.
Claim 1 of No. 511,560 is this :
“The combination with a source of alternating
currents, and a circuit from the same, of a mo-
tor having independent energizing circuits con-
nected with the said circuit, and means for ren-
dering the magnetic effects due to said energiz-
ing circuits of different phase and an armature
within the influence of said energizing circuits.”
This combination includes all the elements which
constitute the machine which Tesla devised when he
reorganized his apparatus disclosing his first invention
of this class of motors by dispensing with a generator
which should be compent to send out alternating cur-
rents over two or more independent lines, and substi-
tuting a generator with a single circuit and then, by
dividing the current and regulating its movement in
the divided lines, produce the due succession of the
currents at the motor. This was an important step
and greatly advanced his original invention for practi-
cal purposes. The new invention permeated the whole
structure. He was entitled to claim all the co-operat-
ing elements in his new combination and to have a
patent therefor, and such patent would cover the
known means for affecting the particular operations
17
comprehended by it. If he also invented specially
arranged apparatus not theretofore known, for execut-
ing some of the subordinate functions of the whole
machine, he was, upon the principles above referred
to, entitled to a patent for that also. This was what he
did by his invention covered by the patent No. 416,-
193. It was an independent invention, representing
an improvement upon the known means for effecting
a beneficial purpose, which improvement was not
within the compass of the patent for the principal
combination.
Claim 2 is as follows :
“The combination with a source of alternat-
ing currents and a circuit from the same, of a
motor having independent energizing circuits
connected in derivation or multiple arc with the
said circuit, the motor or energizing circuits
being of different electrical character whereby
the alternating currents therein will have a
difference of phase, as set forth.”
This claim is of the same character as claim 1. It
contains some modifications thereof, but it stands on
the same footing for the application of the principles
referred to in the consideration of the 1st claim, and
the like result to that there indicated must follow.
Claim 6 is this :
“In an alternating-current motor, the com-
bination with the field magnets or cores and in-
dependent energizing circuits of different active
resistance and adapted to be connected with the
line or transmission circuit, of an armature
wound with closed energizing coils or con-
ductors, as set forth.”
This claim is also of the same character as claim 1,
though it also suggests a peculiar construction by
winding the armature with closed energizing coils or
conductors. We need not repeat the conclusions
(which we have already stated with reference to the
previous claims) respecting the result which follows
18
upon a comparison with the invention of patent
No. 416,193.
Then it is also said that claim 1 of patent No. 511,–
559 is broad and generic, and that it covers the patent
No. 416,193 previously issued. It is true that the
claim referred to is of the character ascribed to it. We
have so treated it ; but it does not follow that it cov-
ers the former invention. As we have explained, it
does not cover it because the former patent is for an
independent invention of special means for fulfilling
Some of the requirements of the broad patent.
We have significantly referred to the fact, that some
of the claims in the patents considered are for methods
and others for apparatus, for the purpose of founding
a distinction in the nature of the inventions. We
have assumed for the purpose of the discussion that
certain claims for methods might be regarded as
claims for generic means, but, in fact, they are made
as claims for methods, and there is no doubt that it is
established by authority, that an inventor may be en-
titled to a patent for the method or process for pro-
ducing new and useful results, and also for the means
by which it is produced, when the method or process
is susceptible of being performed by known means,
and the means invented are of such a character as to
merit a patent (Merrill v. Yeomans, 94 U. S., 568).
If no means were known for practicing the method, the
patentee would be obliged to specify soune means,
otherwise the invention could not be used. This doc-
trine has special application to the patent No. 511,-
559, which is wholly for methods, when compared with
No. 416,193, which is wholly for apparatus.
In support of his contention, the learned counsel
for the appellant relies with much confidence upon the
authority of the cases of Miller v. Eagle Manufacturing
Co., 151 U. S., 186, and Palmer Pneumatic Tire Co.
v. Lozier, 62 U. S. App., 651 (33 C. C. A., 255), the
latter being a case decided by this Court. But these
cases do not support the doctrine for which he
contends; on the contrary, they are both founded
19
upon principles which exclude its application here.
In Möller v. Eagle Manufacturing Co. the patents
being considered were both founded on the invention
of a spring, which the inventor devised to put into the
combination of parts of a cultivator. It extended
from the beam carrying the ſhoes, to and under a grooved
wheel pinioned on a post standing on the axle of the
cultivator. The spring was so constructed that when
the cultivator hoes were down and at work the spring
would tend to hold them down to their place. It also
had the capacity to assist in raising the beam, and, of
course, the hoes, out of and free from the ground
as soon as the operator should start the upward
movement. The first patent was for this spring when
adapted to perform both functions in combination
with other parts of the cultivator. The second patent
was for the same spring in so far as it was
adapted to the function of assisting in raising
the beam, but that part of the spring which was
adapted to holding the implement down, although
described, was not claimed, and was, in fact, im-
material, since the lifting did not employ the peculiari-
ties of that part of the spring adapted to effect the de-
pressing of the beam. The Supreme Court held that,
inasmuch as the former patent included the invention
of those characteristics which helped to lift the beam
as well as those which tended to hold it down, and the
later patent was for a spring having only the same
characteristics for lifting the beam, the so-styled new
invention was parcel of that already patented.
Substantially the same doctrine was applied in Me-
Clain v. Ortmayer, 141 U. S., 419. McClain had in-
vented a pad for horse collars, which employed a double
spring having a hook at each end for the purpose of
securing the pad to the forward and rearward rolls of
the collar, respectively, and he claimed as his invention
a pad provided with such an attachment. Afterwards,
perceiving that a single spring adapted to attachment
to the forward roll would, in many instances, be more
useful than a double spring, he applied for and Ob-
20
tained a patent for a single spring adapted to securing
the pad to the forward roll. This second spring was
held void, for the reason that there was no new inven-
tion, the inventor having patented simply a part of the
invention previously patented.
So in Palmer Pheumatic Tire Co. v. Lozier, the
former patent was for a rubber fabric of peculiar con-
struction, when put into a pneumatic tire in combina-
tion with other elements. As in the case of the spring,
the fabric was the only thing new in the combination
of the parts of the tire, and was only an improvement
of the former fabric which had been used in the same
place and for the same purpose. The whole invention
was exhausted in devising the fabric, and it was for
that invention that the patent was granted. Moreover,
the invention could not be practiced by any means
generally known, but only by the means thus specific-
ally described. The later patent was for the same
fabric, and that only. There was no new inventive
act. The patentee had simply extracted the kernel of
his former patent and brought it over to constitute the
consideration for a new grant. Both the cases referred
to stand upon the ground that the first patent had
been given for the actual invention and could not be
supported without it. And the court in each instance,
disregarding mere formal appearances, looked to the
substance of things and refused to recognize as original
that which it knew was old. In the Miller case, Mr.
Justice Jackson, after canvassing a number of previous
cases, said:
“The result of the foregoing and other au-
thorities is that no patent can issue for an in-
vention actually covered by a former patent,
especially to the same patentee, though the
terms of the claims may differ.”
And in the Palmer Preumatic Tire Co. case, this
court, following the Miller case, said :
“That decision shows that it is not necessary
to the rule that the patents should be for co-
21
extensive inventions, or that the subject matter
thereof should be technically the same.”
We have no disposition to depart from the rules in
respect to the identity of patents, and the method of
determining it, here adverted to, which we deem
sound and reasonable; but it would be a misapplica-
tion of them, and contrary to their spirit and pur-
pose, to say that independent inventions may not be
the proper subjects of independent patents, even
though they may relate to the same subject matter
and one may dominate the other in the same field.
The distinction seems clear, and pains were taken in
both of the above cases to point it out. In the Miller
case, Mr. Justice JACKSON, after referring to several
cases, further said :
“A single invention may include both the
machine and the manufacture it creates, and in
Such case, if the inventions are really separable,
the inventor may be entitled to a monopoly of
each. It is settled also that an inventor may
make a new improvement on his own invention of
a patentable character, for which he may obtain
a separate patent, and the cases cited come to
this point, and to this point only, that a later
patent may be granted when the invention is
clearly distinct from and independent of one
previously patented.”
And in the Palmer Pneumatic Tire Co. case this
Court said : -
“ Undoubtedly, as pointed out in Miller v.
Eagle Manufacturing Co., Sw)/7 a., if the second
patent is for a distinct and separate invention,
Or, to put the matter in another way, has not
been made integral with another invention
already patented so as to be fairly necessary to
its use, it should be sustained if the other re-
quisite conditions exist,”
and we referred to the opinion delivered by Judge
TAFT in a former case, that of Thomson-Houstom ſºlec-
22
tric Co. v. Ohio Brass Co., 54 U. S. App. 1 (26 C. C. A.
107), which was an illustration of that class of cases
and was one where the was sustained. Another case
of the same class is that of Allington & Curtis Mfg.
Co. v. Globe Co., 89 Fed. 865, where a patent for im-
provements on a machine had been taken out pending
a prior application for a patent for the machine itself.
Subsequently a patent was granted for the machine.
It was held by Judge TAFT, again distinguishing the
case of Miller v. Eagle Manufacturing Co., that the
granting of the former patent did not invalidate the
latter. And in a more recent case, Thomson-Houston
Electric Co. v. Jeffrey Mfg. Co., 101 Fed. 121, this
court again emphasized the distinction made in the
foregoing cases, and held that, the device in the later
patent being substantially that patented by a former
patent, the latter patent was void. To the same effect
is Thomson-Houston Electric Co. v. Hoosick ſty. Co.,
82 Fed. 461, in the Circuit Court of Appeals for the
Second Court.
The learned counsel lays special stress in his brief
upon the language contained in the opinion of this
Court in the Palmer Preumatic Tire Co. case, where
we said, as a deduction from the Miller case, that
“the rule rests upon the broad and obvious
ground that if the second patent is for an inven-
tion, that was necessary to the use of the inven-
tion first patented, it can not be sustained.”
But we were there considering a class of cases where *
the subject-matter of the later patent was an essential
and necessary part of the former invention and covered
by the patent granted therefor; and the observation
quoted has no application to that other class of cases
where the subject-matter of the later patent, that is, the
invention covered by it, was not a component part of
the former invention, but was an independent inven-
tion not necessary to the composition of the first, or
included in it. And in a later part of the opinion, as
23
has been already stated, we expressly distinguished
the latter class of cases from the former.
We are of the opinion that the patents in suit are
not void by reason of the inventions covered by them
having been previously patented ; and, infringement
not being denied, the judgment must be affirmed.
KERR, PAGE & COOPER,
[SEAL.] For Complainant-Appellee.
ALBERT H. WALKER,
For Defendant-Appellant.
(A true copy.)
FRANK O. LOVELAND,
Clerk U. S. Circuit Court of Appeals for the
Sixth Circuit.
[21506)
A. c. Motors.-A.
381,968.
382,279.
382,28O.
No. 5.
Opinion—Circuit Court—Contempt Motion.
Tesla Polyphase System.
(Patents Nos. 381,968–382,279–382,280).
Westinghouse Electric and Manufacturing Company,
Complainant,
VS.
Bullock Electric Manufacturing Company,
Defendant.
-ress **
Judge Thompson's Opinion, filed in the U.S. Circuit Court,
Southern District of Ohio, May 16, 1903. -
f
{
C. G. BURGoxNE, Walker and Centre Streets, N. Y.
Tilníteo $5tates Circuit Court,
SOUTHERN DISTRICT OF OHIO.
WESTERN DIVISION.
WESTINGHOUSE ELECTRIC &
MANUFACTURING COMPANY
No. 5510.
WS. In Equity.
BULLOCK ELECTRIC MANUFACTURING
COMPANY.
OPINION OF JUDGE THOMPSON.
Filed May 16, 1903.
RULE TO SHOW CAUSE WHY THE DEFENDANT SHOULD
|NOT BE PUNISHED FOR CONTEMPT.
This suit was brought to enjoin infringement of
Letters Patent Nos. 381,968, 382,279 and 382,280, and
for an accounting, etc. On the 23rd day of August,
1902, an injunction was issued pendente lite restraining
the defendant, its officers, etc. “from making, using or
selling any apparatus embodying the inventions recited
or specified in Claims 1 and 3 of Patent No. 381,968;
claims 1, 2 and 3 of Patent No. 382,279 ; and Claim of
Patent 382,280, or any of them, or in any manner in-
fringing upon the rights of the complainant there-
under.”
Afterwards, to fill an order previously given, by
John McDougal, of Montreal, Canada, the de-
fendant made, at its works in the United States,
near Cincinnati in the State of Ohio, and, on the
2
27" day of April, 1903, shipped to John McDougal,
at Montreal, Canada, a 500 horse power induction
motor, 13 feet in diameter, with 44 poles and operated
from a “60 cycle, 2200 volt, 3 phase circuit,” the
factory cost of which was $11,265.20. t
The defendant admits that this motor was made and
shipped to McDougal for the express purpose of
being used in the device of the patents in suit, and that
it was so used, but insists that the plaintiff's patents
were not infringed thereby, because the making of the
device took place in Canada. This claim is based on
the assumption that there can be no making of a
combination device, within the meaning of the patent
laws, until all its parts are assembled and joined to -
gether in accordance with the teachings of the letters
patent; and as the assembling of the parts and the
combination of the device in question, took place in
Canada, where the patent laws of the United States are
inoperative, the patents of the plaintiff are not in-
fringed. If this be true, the defendant, in evasion of
the patent laws of the United States, may make all the
parts of the device in the United States, ship them to
Canada, and there assemble them and sell the device
to its customers in disregard of the plaintiff's rights—
may thus appropriate the plaintiff’s invention to its
own use without making compensation therefor.
But is this true 2 In issuing the patents in suit, the
government of the United States granted to the plain-
tiff “the exclusive right to make, use and vend the
invention or discovery, throughout the United States
and the territories thereof.” and any making, use or
sale thereof within the territory of the United States,
against the will of the plaintiff, is an infringement of
its monopoly and a violation of the patent laws of the
United States. Neither the defendant nor McDougal
were licensees of the plaintiff, but on the contrary
joined in appropriating the plaintiff's inven-
tion to their own use without the plaintiff's consent
and against its will. What the defendant did was
done in the United States, for the express purpose of
enabling McDougal to complete the appropriation in
3
Canada, not as the licensee of the plaintiff but against
the plaintiff's will, and was an infringement of the
plaintiff's patents, and the wrong is not lessened by
the fact that McDougal is not amenable to the laws
which the defendant has violated. In making the mo-
tor the defendant not only infringed the plaintiff's
patents by contributing to the device set up in Canada,
but directly infringed the claim of Letters Patent No.
382,280, which provides that
“The method herein described of electrically
transmitting power, which consists in producing
a continuously progressing shifting of the polar-
ities of either or both elements (the armature or
field-magnet Or magnets) of a motor by develop-
ing alternating currents in independent circuits,
including the magnetizing-coils of either or both
elements, as herein set forth.”
The cases of Hobbie vs. Jennison, 149 U. S. 355, and
Gould vs. Sessions, 67 Fed. 163, cited by defendant's
counsel do not support defendant's claim. In Hobbie
vs. Jennison, the assignee of the patent for Michigan,
sold the patented articles in Michigan, knowing that
the purchaser intended to use them in Connecticut.
As assignee of the patent for Michigan he had the ex-
clusive right to make, use and vend the patented
articles in Michigan without reference to where they
might afterwards be used. The assignment contained
no provision forbidding him to sell the patented ar-
ticles to persons who might or would use them in other
states.
In Gould vs. Sessions, Judge SHIPMAN says:
“The record, which consists of the affidavits,
without a finding of facts, shows that, after the
injunction Order had been served upon the plaint-
iffs in error, they shipped to Canada a quantity
of the infringing articles, which häd been made
before the injunction, without previously offer-
ing them for sale, or notifying any one of
their wish to sell. The goods were followed
by one of the defendants, who sold them
to a trunk dealer in Montreal, who had been
4.
a customer of Sessions and had been in the
habit of buying the non-infringing articles.
Upon this naked state of facts, we are of opinion
that there was no violation of the injunction
order. The sale was made in Canada, of trunk
catches then in Canada, to a Canadian trunk
manufacturer, to be there placed upon trunks
in the Ordinary course of business, and, so far
as is known, no one of the articles was there-
after used in the United States.”
In that case the infringing articles were made be-
fore the injunction was issued and were afterwards
shipped to Canada and sold and used there. They
were not sold or used in the United States, and were
not made in the United States after the injunction was
issued. Judge SHIPMAN further said:
“Inasmuch as the articles were made before
the injunction, the manufacturer was not in
contempt of the court's Order; and, as no pre-
liminary arrangements for the sale were made
in the United States, the sale did not come with-
in the prohibition. It is probable that the
circuit court had misgivings in regard to the
good faith of the affiants, but as there is no con-
tradiction of their statements, we regard the
question as one of law, upon a state of facts not
in substantial controversy.”
Here there is an intimation that if there had been a
preliminary arrangement made in the United States,
for the sale of the infringing articles in Canada, the
sale would have come within the prohibition of the
injunction. In the case at bar there is evidence which
would perhaps justify the court in finding that the sale
of the motor was made in the United States. The
order for the motor was received by the defendant
through its agent in Canada, but the contract was not
made until the Order was accepted by the defendant.
Upon the evidence presented by the affidavits and
the admissions of the defendant, through its counsel,
the court finds that the defendant made the motor in
violation of the order of injunction, thereby commit-
5
ting a contempt of court for which it should be
punished.
It is urged in mitigation of the penalty to be im-
posed that the defendant acted under the advice of
counsel and believed that it might lawfully make
the motor. The defendant, however, made the motor
in deliberate disregard of the plaintiff's rights. The de-
fendant knew that it was to be used in the device of the
patents in suit, and made it expressly for that pur-
pose. The defendant may have believed that it was
acting outside of the scope of the Order of injunction,
but did not hesitate to violate the rights of the com-
plainant.
The court cannot permit litigants to construe orders
of injunction to suit their own convenience and in-
terest. If they be in doubt as to what is required of
them, they must come to the court for instruction or
for such modifications or amendments of the order as
will make their duty plain. Writs of injunction are
issued to meet emergencies and to prevent irreparable
injury, and these purposes may be defeated if the
courts permit them to be trifled with or disobeyed.
It must be understood that the court will require
prompt and implicit obedience to such orders. A fine
of $500 will be imposed upon the defendant which
must be paid within ten days. -
SouTHERN DISTRICT OF OHIO, ss :
A true and correct copy of the original on file in
this office.
Attest:
(S’d) B. R. CoWEN,
Clerk.
By -
(S'd) ROBT. C. GEORGI,
(SEAL) Deputy.
RERR, PAGE & COOPER, for Complainant.
STEM, HEIDMAN & MELHOPE, for Defendant.
|23005]
T-.
A. C. MOTORS.—A.
.222
- 381, 968.
, Ta 382,279.
W 52 382,280.
- No. 6.
Order—Circuit Court—Contempt Motion.
Tesla Polyphase System.
(Patents Nos. 381,968–382,279–382,280).
**
Westinghouse Electric and Manufacturing Company,
Complainant,
VS.
Bullock Electric Manufacturing Company,
Defendant.
Order filed in the U. S. Circuit Court, Southern District
of Ohio, May 22, 1903.
C. G. BURGox NE, Walker and Centre Streets, N. Y.
Clnited 5tates Circuit Court,
SOUTHERN DISTRICT OF OHIO WIESTERN
DIVISION.
WESTINGHOUSE ELECTRIC & MANU-
FACTURING COMPANY,
Complainant,
In Equity,
WS. No. 5,510.
BULLOCK ELECTRIC MANUFACTURING
Co.,
Defendant. |
Complainant having made a notion in the above
entitled cause to punish defendant, Bullock Electric
Manufacturing Company, for contempt of Court in dis-
obeying the order of this Court, filed and entered on
the 22nd day of August, 1902, and the injunction issued
by this Court thereunder on the 22nd day of August,
1902, and the same coming on to be heard upon the
affidavits of Drury W. Cooper, Victor S. Beam and
David J. Hauss (2), and the exhibits and papers re-
ferred to therein, filed by complainant in support of
the said motion; and upon the affidavits of Joseph S.
Neave (2), and the papers and exhibits referred to
therein filed by the defendant in opposition to the said
motion, (and after hearing Thomas B. Kerr, Esq. and
Parker W. Page, Esq., in support of said motion and
Arthur Stem, Esq., in opposition thereto, and after
due consideration had, it is,
ORDERED that the defendant Bullock Electric Manu-
facturing Company is guilty of contempt of this Court
2
it having disobeyed the order entered in this cause
on the 22nd day of August, 1902, and the injunction
by this Court thereunder on the 22nd day of
August, 1902, and duly served upon the said defendant
in that, since the date of the entry of the said order
and the date of service of the said injunction, on the
said defendant it has manufactured and sold the 500
H. P. alternating current induction motor referred to
in the complainant's affidavits, which manufacture and
sale is an infringement of the following claims of
letters patent of the United States granted on May 1,
1888, to Nikola Tesla, to wit:
Claim 1 of letters patent No. 381,968, which is as
follows:
“1. The combination, with a motor contain-
ing separate or independent circuits on the
armature or field magnet, or both, of an alter-
nating current generator containing induced
circuits connected independently to correspond-
ing circuits in the motors, whereby a rotation of
the generator produces a progressive shifting of
the poles of the motor, as herein described.”
Claim 3 of letters patent No. 381,968, which is as
follows:
“3. The combination with a motor having an
annular or ring-shaped field magnet and a cylin-
drical or equivalent armature, and independent
coils on the field magnet Or armature, or both
of an alternating current generator having cor-
responding independent coils and circuits in-
cluding the generator coils and corresponding
motor coils in such manner that the rotation of
the generator causes a progressive shifting of
the poles of the motor in the manner set forth.”
Claims 1, 2 and 3 of letters patent No. 382,279,
which are as follows:
“1. The combination, with a motor containing
independent inducing or energizing circuits and
closed induced circuits, of an alternating-current
generator having induced or generating circuits
3
corresponding to and connected with the ener-
gizing circuits of the motor, as set forth.
“2. An electro-magnetic motor having its
field-magnets wound with independent coils and
its armature with independent closed coils, in
combination with a source of alternating currents
connected to the field-coils and capable of pro-
gressively shifting the poles of the field-magnet,
as set forth.
“ 3. A motor constructed with an annular
field-magnet wound with independent coils and
a cylindrical or disk armature wound with closed
coils, in combination with a source of alternating
currents connected with the field-magnet coils
and acting to progressively shift or rotate the
poles of the field, as herein set forth.
The claim of letters patent No. 382,280, which is
as follows:
“The method herein described of electrically
transmitting power, which consists in producing
a continuously progressive shifting of the po-
larities of either or both elements (the arma-
ture or field magnet or magnets) of a motor by
developing alternating currents in independent
circuits, including the magnetizing coils of
either or both elements, as herein set forth.”
all of which was in violation of the aforesaid order
and injunction ; and it is further
ORDERED that for said misconduct the defendant,
Bullock Manufacturing Company, is hereby fined in
the sum of Five hundred dollars ($500.00), and that
said fine is to be paid by the said defendant on or
before the 1st day of June, 1903.
May 22nd, 1903.
A. C. THOMPSON,
U. S. J.
4
Southern District of Ohio,
THE UNITED STATES OF AMERICA,
SS
WESTERN DIVISION.
I. BENJAMIN R. CowRN, Clerk of the Circuit Court
of the United States of America, within and for the
district and division aforesaid, do hereby certify that
the foregoing entry is truly taken and correctly copied
from the Journal of said Court.
In Testimony whereof, I have hereunto set
my Hand, and affixed the seal of
[SEAL.] said Court at the city of Cincinnati,
Ohio, this 22nd day of May A. D.
1903.
B. R. CoWEN,
Clerk.
By RoPT. C. GEORGI
Deputy Clerk.
KERR, PAGE & CoOPER, for Complainant.
STEM, HEIDMAN & MELHOPE, for Defendant.
[23123]
A. c. MoroRs.—c.
511,559.
511, seo.
No. 5.
Opinion—Circuit Court—Final Hearing.
§
Tesla Split-Phase Motor.
(Patents Nos. 51 1,559 and 51 1,560).
Westinghouse Electric and Manufacturing Company,
- - Complainant,
VS.
H. C. Roberts and Sangamo Electric Company,
Defendants.
Judge Archbald's Opinion, filed in the U.S. circuit Court,
Eastern District of Pennsylvania, Sept. Io, 1903.
C. G. Burgoyne, Walker and Centre Streets, New York.
in the Künited States (ſircuit (Jourt
FOR THE EASTERN DISTRICT OF
PENNSYLVANIA.
WESTINGHOUSE ELECTRIC & MFG. CO.
• In Equity No. 47.
AGAINST April term 1901.
- On final hearing.
H. C. ROBERTS and SANGAMO
ELECTRIC Co.
ARCHBALD, District Judge.”
The patents in suit and those on which they are
based, or which are kindred to them, have been so fully
considered in previous cases which until recently have
also been uniformly in their favor, that little that
is new is left to be brought forward with regard to
them. In an admirable opinion by TOWNSEND, J.,
in Westinghouse Electric Company vs. The New
England Granite Company, 103, Fed. 951, the funda-
mental patents were reviewed and expounded and the
right of the patentee to stand as an inventor of great.
merit in the use of alternating electric currents for the
transmission of power was fully established. The alleged
disclosures of Siemens (1878), Baily (1879), Deprez
(1880, 1884), and Bradley (1887), were discussed, and the
claims advanced for them as anticipations held to be
unfounded; conclusions which were affirmed on appeal.
* Specially assigned.
;
2
110 Fed. 753. The essence of the invention was de-
clared by Judge TOWNSEND to be
“ the production of a continuously rotating or
whirling field of magnetic forces for power
purposes by generating two or more displaced
or differing phases of the alternating current,
transmitting such phases with their independ-
ence preserved to the motor, and utilizing the
displaced phases as such therein.” q
The same patents came up before BROWN, J., in
Westinghouse Electric & Manufacturing Company vs.
Jºoyal Weaving Company, 115 Fed., 733, and a similar
result was reached. The Dumesnil (1884) and the Caba-
nellas (1885), two French patents which had not been
brought forward before, were particularly relied on as
anticipations, but were distinguished from those in
suit in a carefully expressed and convincing opinion.
These French patents, however, according to Judge
BROWN, established that Tesla was not the first to em-
ploy alternating currents out of phase with each other
for power purposes, so that the expressions in previous
cases which attributed this to him would have, as he
thought, to be qualified if not recalled. But it was at
the same time pointed out that in neither the Dumes-
nil nor the Cabanellas was there a resultant magnetic
force, the distinctive feature of the Tesla invention ;
each of the others named providing for the independ-
ent action of separate alternating currents operating
on different ends of the motor armature without any
play of the magnetic and electric forces in between. As
it stands, the Cabanellas patent is unintelligible to me,
but taking it as it is explained by the Defendant's ex-
perts and illustrated by the exhibit in evidence (of the
correctness of which, however, I have much doubt),
there is nothing more at the best than a mechanical com-
bination of the two operative devices like the opposite
cranks on the same axle of a locomotive driving wheel.
There is no conjoint operation as in a Tesla motor
of the two energizing circuits by means of a
3
combined magnetic influence to produce a compion re-
Sult. It is important, however, to observe that while
in no sense anticipations, the Dunlesnil and Cabanellas
serve to limit the invention of Tesla—if not, indeed,
so limited in his patents themselves—to a device in
which a magnetic resultant of dephased alternating cur-
rents exist, the mere use of alternating currents out of
phase with each other made otherwise effective being
something aside and different.
The derivative patents in suit, numbers 511,559 and
511,560, were first considered in the Dayton Fan &
Motor case, 106 Fed, 724 ; affirmed in 118 Fed. 562,
and a decision rendered in substantial accord with
those which had preceded it. One defense there, as
here attempted to be made, was that it involved no in-
ventive skill when once the practicable use of alternat-
ing currents of different phase was established, to sub-
stitute a dephased split current which was a well
recognized equivalent ; but it was not so held, nor can
it be here. This question was practically put at rest
in this Court by the decision of Judge McPHERSON in
the Tesla Electric Company vs. Scott and Janney, 97
Fed. 588, where two of the earliest Tesla split phase
patents were sustained. But aside from that, and upon
an entirely independent consideration of it, the same
conclusion must be reached.
A serious doubt as to the economic value of the
polyphase Tesla motor was that it required inde-
pendently generated currents, and as so limited
lacked commercial adaptability, the alternating
current in Ordinary use, such as that on electric
light wires, being single. According to Mr. Brown
who was asked to become interested, he raised this
question at Once ; and it was the criticism made of
it by Swinburne in the Electrician of July 20, 1888, and
by Richard in La Lumiere Electrique of January 19,
1889. Tesla—if he is to be believed—immediately ad-
dressed himself to this problem, and it is successfully
solved in the patents in suit and others applied for
about the same time. It does not detract from the in-
4
ventive skill involved that he appropriated the experi-
ments of Oberbeck with regard to the splitting and
depliasing of alternating currents derived from a single
Source; nor yet that others took up the subject inde-
pendently and worked out similar ideas. All who are
thus brought forward—Ferraris, Shallenberger, Borel,
Professors Anthony and Jackson, were electricians
of the highest professional training, and the fact that
with study they attained the same result, by no means
proves that the adaptation and successful substitution
of a split phase alternating current in place of two or
more independently energized, was obvious to a person
of ordinary skill. It is always difficult to decide where
inventive genius ends, and this is particularly the case
in an art at best but little understood. As is well said
by Judge SEVERENS in the case last cited, 118 Fed.
562 :
“The subject is one of the most abstruse and
subtle of all the practical sciences, and its pur-
suit involves the exercise of the keenest intelli-
gence and most patient research that gifted
men can bestow. We ought therefore to be
cautious when a distinct and practical improve-
ment is made in so useful an art, in denying to
the author the reward which the law gives to
meritorious inventors.”
The patents in suit were also before Judge LACOMBE
in the Westinghouse Electric cé Manufacturing Co. vs.
The Catskill Illuminating and Power Co., 110 Fed
377. In addition to the attack made upon them in
other cases, it was further urged that, in a paper read
by Professor Ferraris before the Royal Academy of
Sciences, of Turin, Italy, March 18, 1888, a portion of
which was published on April 22nd following, at Milan,
in L'Elettricita, a journal devoted to electrical subjects,
not only was there a full disclosure of the transmission
of electric power by means of alternating currents of
different phase, but also the use for the same purpose
of a dephased split current derived from a single
source, the same as in the patents in suit. Upon a
5
due consideration of the opposing proofs the invention
of Tesla was held to be carried back of this publica-
tion ; but On appeal, the decision was reversed, the
evidence brought forward by the complainants not
being considered sufficient for that purpose; 121 Fed.
831 ; a conclusion which was followed by Judge CoIT
in a case by the same plaintiffs against the Stanley In-
strument Co., in the first Circuit, not yet in print.
This, and the matter of infringement, are the over-
shadowing questions in the present case.
Before proceeding to a discussion of the proofs, it is
necessary to determine what portions, if any, to which
Objections have been made, are to be excluded. The
complainants have brought in from the patent
office the record of interference proceedings be-
tween Tesla and Ferraris with regard to the first
of the two patents in suit, in which the right
of the former to priority was sustained. The good
faith of this contest is questioned, but whether ad-
versely conducted or not, it is evident upon the most
cursory consideration, that as against the defendants,
the complainants are entitled neither to the result nor
the evidence by which it was obtained. The contro-
versy was between parties with whom the defendants
are in no privity, and they cannot, therefore, be affected
thereby. AEdward Baer Co. v. Sprinkling Co. 32
Fed., 79 ; Western Electric Co. v. Wm. Abbott Electric
Co., 83 Fed. 842. -
The defendants have also moved to strike out—or, as
we should say, suppress—certain depositions taken by
the complainants subsequent to the argument on final
hearing. The defendants at that argument asked to
have the case reopened for the purpose of taking the
deposition of Frederick Darlington, which was granted,
leave being given to the complainants at the same time
to take evidence in reply. The testimony of Darling-
ton was directed to his relations with Tesla in the
summer and fall of 1888, when the latter was experi-
menting in the Westinghouse laboratory at Pittsburgh,
with regard to polyphase motors, the purpose being to
6
show that up to that time Tesla had not evolved his
split phase method. In answer to this the complain-
ants introduced the testimony of several witnesses, in-
cluding Tesla himself, a considerable portion of which,
it is claimed, was not confined to a strict reply. So
far as a reply to Darlington is concerned, this may be
true ; but it is not of a reply generally. It all directly or
indirectly bears on the issue raised by the introduction
of the Ferraris publication, on which the life of the
patents depends, and is too important to be lightly set
aside. So far as Tesla was called to contradict
Darlington, no exception can be taken. But in going
further and examining him with regard to the date of
his invention, the complainants have appropriately
supplied a gap in the proofs, which was the subject
of serious criticism by the opposing counsel at the
argument, and the lack of which in the Catskill case,
according to the opinion of the Court, contributed not
a little to the adverse result there reached. It is to
be regretted that Tesla was not cross-examined, but
after consulting the record made by the Examiner, and
hearing what counsel have to say upon the subject, I
am not persuaded that a fair opportunity for it was
not given. The motion to strike out, the disposition
of which was reserved until this time, must, therefore,
be refused.
The Ferraris publication, as we have seen, was
April 22, 1888, and the patents in suits were not
applied for until December 8th following. To relieve
from this apparent priority the invention has, there-
fore, to be carried back of the earlier date by
competent and convincing evidence. Of necessity a
high character of proof is required in such cases, and
that which was before the Court in the Catskill case
was not upon appeal considered up to the standard.
It is more ample here, however, warranting a re-
examination of the question. That Tesla, early in May,
1888, had a complete grasp of the split-phase idea is
established by his application of May 15th for patents,
Nos. 511,915 and 555,190, which embody it, the same
7
that were before Judge MCPHERSON in the Scott & Janney
case, 97 Fed. 582, already alluded to. This is im-
portant evidence which cannot be contradicted and I,
therefore, start with it. Not only is the invention
beyond question carried back by it to the date named,
which is within 23 days of the Ferraris publication,
but from the known order of events, a patent not being
able to be worked out in a day, ground is thus per-
suasively laid for an earlier date if there is any fair
evidence to warrant it. In the face of it, I hardly see
how we can doubt the accuracy of Mr. Page's state-
ment that Tesla disclosed to him the principles of the
invention somewhere in the first part of April of that
year. His testimony on this point is specific and con-
vincing. In the fall of 1887 and spring of 1888, as he
says, he was engaged in developing in the Patent
Office, a number of Tesla's inventions, and among
them the polyphase motors and transformers which
were patented May 1, 1888. These were prosecuted to
an allowance in the early part of April, the final fees,
as shown by the books of the firm of which he was a
member having been forwarded to Washington on
April 6th. After having secured the allowance of this
group and made arrangements for similar applications
in a number of foreign countries for patents to issue
simultaneously therewith, Tesla gave him the material
for an application, One feature of which was the in-
ducing of one current from another in the operation
or construction of a motor, and in this connection dis-
closed to him his plan for operating his polyphase
motors by means of a single split phase circuit.
Startled by this revelation and questioning whether
the claims which he had drawn in the pending
cases would protect this new improvement he had a
long conference with Tesla, getting from him all that
he could as to the different ways he proposed to oper-
ate this two wire system. He also discussed with his
partners, General Duncan, now dead, and Mr. L. E.
Curtis, of Denver, whether the applications on
which patents were about to issue had not better be
S
stopped and amended, and soon afterwards went to
Washington to consult with Major Bailey, who had
charge of them there. The disclosure of Tesla which
brought about this action is fixed by Mr. Page as very
shortly after the fees in the polyphase motor patents
were paid, which as we have seen was April 6th. The
visit to Washington, according to charges made for it
in the books of the firm was April 27th. Between
these dates, on April 18th, is a charge for the applica-
tion for the invention in connection with which, as he
testifies, Tesla told him of the improvement, and fol-
lowing this, on May 7th, is a charge for the drawings
to be used in connection with the application for the
first of the split phase patents filed May 15th, the ap-
plication itself being charged for May 10th. Mr. Page
says that the work on the application was complete
when this latter charge was made and that he must
have been engaged on it at least three weeks, which
carried it back of the Ferraris date. On what basis
this testimony can be passed over or explained away,
I do not see. While the interval which has elapsed is
considerable, the transactions in their nature were
such as were likely to impress themselves on his
trained professional mind and his memory has been kept
fresh by being called upon to testify on several occa-
sions beginning with the interference proceedings
which were soon afterwards. The dates are also sub-
stantiated by reference to the bill-book of the firm
to which no objection was made. It seems to me there-
fore, convincingly established that prior to April 22nd,
the date of the Ferraris publication, Tesla had dis-
closed to Mr. Page, his solicitor, the principle of his
split phase adaptation. We may not be able to assign
the exact date, but it must evidently have been some-
where, as Mr. Page says, between the 8th and the 18th
of April, the reason why these dates are selected ap-
pearing in what has already been said. The only
question then is as to the extent of the disclosure and
whether it embraced the patents in suit. Mr. Page is
9
sufficiently cautious upon this, not to the point of
doubt, but of conviction. *
“I cannot state now from my recollection " he
says “how many of the specific ways of oper-
ating these motors Tesla told me of at that time,
but my recollection is entirely clear as to this
fact, that at the conference which I had with
Tesla in the early part of April, 1888, and as the
result of my closely questioning him, he de-
scribed to me so that I fully understood the
general plan of construction and mode of Oper-
ation, the three forms of motor to which I
have referred. That is to say, the two-wire in-
duction motor, as we then called it, in which the
currents in One energizing circuit are induced by
the currents which pass through the other ener-
gizing circuit ; Secondly, the derivation motor,
in which the two circuits have different elec-
trical character, that is to say, one circuit has
a higher self-induction than the other circuit,
and in which both are derived from the same
supply circuit ; and thirdly, the long and short
core motor in which the difference of phase in
the magnetic effect of the energizing current is
obtained by making One set of cores longer or
of greater mass than the other set of cores.”
The two-wire induction motor, that is the one cov-
ered by the application of May 15th, was considered
at the time, as he says, of more importance than the
other, a circumstance which explains why it was first
put in shape ; and the other two forms, which he de-
scribes, are those of the patent in Suit. Communicat-
ing his ideas in this way, as he did, to one who was
thoroughly competent to understand and perpetuate
them in case of his death, the inventor effectively gave
his invention to the world, and by all the authorities,
he is entitled to bring forward this disclosure now to
maintain the priority which he asserts. Walker on
Patents, Sect. 70. The burden is, no doubt, upon him,
and the courts are called upon to scrutinize the evi-
dence closely, but they are not required to go out of
10
their way to discredit it coming from a reliable source.
Where an inventor has gone on and developed his in-
vention and secured a patent, there is in fact a certain
equity which ought to operate in his favor. It seems
to me that the testimony of Mr. Page, uncontradicted
and unskaken as it is, and materially corroborated at
points, is sufficient in itself to sustain the priority
claim. It is said, however, that if Tesla had perfected
this invention in the fall of 1887, as he testifies, it is
impossible to believe that he would have kept it back
from Page until the next April, as he confessedly
did, having already revealed it in the meantime,
as it is claimed, to Mr. Brown. But the idiosyn-
crasies of inventors, which do not seem to lessen
with their genius, are not to be so reckoned with.
Mr. Page says the only explanation he could ever get
from Tesla why he did so, was that he was afraid if he
(Page) knew that the polyphase motors could be run
on a circuit, he would not believe the invention
amounted to anything, and might not in conse-
quer.ce draw as good claims. This may seem a pecu-
liar, if not an unsatisfactory reason, but what we are
concerned with is that an explanation was demanded
and given, and it hardly discredits Mr. Page be-
cause it may not be altogether up to the mark.
But the testimony of Mr. Page is by no means all
there is upon this subject. Mr. A. S. Brown, who has
already been alluded to, an electrical engineer of ex-
perience, formerly connected with the Western Union
Telegraph Co. became interested in the summer or fall
of 1887 in bringing out the original Tesla motor ; and
he testifies that at once when it was first brought to his
notice it occurred to him as a great objection that it
required two separate currents ; not long after which
Tesla showed him how it could be operated on a single
main line from the generator. The means proposed,
as he says, was to put an induction resistance in One
of the circuits derived from the main line, thereby
causing a retardation, and producing a difference of
phase ; another way being to have alternate pole
11
pieces differently wound, one with a finer wire than the
other. He further identifies an old experimental
motor which he saw operated by Tesla, with de-
rived circuits, one of which was retarded in the way
suggested ; and he recognizes a photograph of
another similarly run, the original of which,
it is said, was destroyed in 1895, when the Tesla
laboratory was burned. It matters not whether these
motors, in and of themselves, have a split phase con-
struction, although I am convinced that one at least
has ; it was a sufficient disclosure of the system if they
were run by that method, as he affirms. The only
question as to this witness is one of time. He fixes
the occurrence at one place in the Summer of 1887, and
at another in the summer or fall, and as Tesla, as it is
claimed, did not make the discovery until September,
doubt is supposed to be thrown on his testimony and
the idea advanced that the information could not have
been given him until the next year. But that is not
what he says, and whatever be the uncertainty as to
the season of the disclosure, it cannot consistently be
put over a whole year. He unquestionably became
interested in the summer or fall of 1887, and, for
reasons which he gives, soon after this, in Order to re-
move an important objection, Tesla disclosed to him
how it could be overcome. This is the significant
point in his testimony, rather than whether it was sum-
mer or fall. The probability is that it was the latter,
as he says may have been, and if so it was still earlier
than the disclosure to Page, anticipating by months
the Ferraris publication of the next spring.
It is urged, however, that the testimony of these
witnesses cannot be reconciled with that of Prof.
Anthony and Mr. Darlington without assigning to the
invention a later date than they give. It seems that
early in 1888, the Tesla motor inventions were sub-
mitted to Prof. Anthony, as expert adviser of the
Mather Electric Co., to whom it had been offered, and
as nothing—as it is said—was disclosed by Tesla
in that connection about a split phase method of
12
operating his motors, the conclusion is that it had not
then been devised. This might be true if the two
were brought together under such circumstances that
Tesla would be expected to communicate all his ideas
On the subject and did not do so, but neither assertion
is sustained by the proofs. The only patents pending
at that time were those of May 1, 1888, covering the
Original polyphase invention, and there is nothing to
show—to say nothing of the probabilities—that the
negotiations with the Mather Electric Co., which soon
fell off, extended to anything else. It is true that Mr.
Drown says he presumes it was intended to have that
Company fully informed with regard to all the Tesla
patents and inventions, but this, without more, can
hardly be accepted as a fact. Even more conclusive of
the matter, however, is it that there is nothing in the
record to show that Tesla did not disclose to Prof.
Anthony all that could be expected or asked. What
Prof. Anthony says is that he never suggested any
other mode of operation than such as involved a mag-
netic resultant, shifting in position as the phases of
the alternating currents changed. This is an entirely
different matter, bearing on another branch of the
case, and is of no significance here. I am aware that
he testified otherwise in the Catskill case, but whether
he has had occasion to reconsider and recast his state-
ments, we must take them as they now appear, and
they leave the defendants nothing on which to build.
Neither do I see that the testimony of Mr.
Darlington is of any material aid. He states that
from some time in May to the last of October, 1888, he
was intimately associated with Mr. Tesla in the West-
inghouse laboratory at Pittsburgh, where the latter was
conducting experiments for the purpose of perfecting
his alternating current motors and adapting them to
commercial use ; and that during this period several
split phase devices were tried and failed, the argument
being that up to this time Tesla had not advanced with
them beyond the experimental stage. This is abso-
lutely refuted by the uncontrovertible fact that as early
13
as May 15th Tesla applied for the first of his split
phase patents; but passing this by, there is nothing of
serious consequence in what he has to say. Only two
experiments are mentioned, one of which was success-
ful and developed into patent No. 390,820. The other,
as he says, was an attempt to use a single phase cur-
rent dephased by means of a greatly elongated pair of
coils and extra amount of iron in the transformer core,
and did not succeed. Tesla denies the close intimacy
asserted, and states that Darlington did not understand
the nature of the experiment, and that from the size
and character of the test device, it was impossible for
it to have been used for the purpose which he sup-
posed. Be that, however, as it may, it merely proves,
if true, that the one experiment failed ; but it at the
same time substantiates that Tesla was fully alive at
the time, whenever it was, to the possible adaptation
of the split phase system to the operation of his
motor, and for all that Darlington knew he
might have already worked out all the de-
vices that are now claimed. That he said no-
thing about them is entirely without consequence.
He was not called upon to do so, and that is all that needs
to be said. Inventors are notoriously reticent about
their inventions, as they have to be to protect them
and it affords no occasion for comment that Tesla was
not more communicative than he seems to have been.
So far as I have considered only the proofs, about
which no question can be raised, and basing my de-
cision solely upon them, I am satisfied that the patents
should be sustained. The testimony of Tesla outside
of this, to which objection is made, goes mainly to the
date of his invention, which he fixes as some time in the
summer or early fall of 1887 and his disclosures to
Mr. Brown soon after that, whose statements he en-
tirely confirms. By calling him, the complainants have
no doubt strengthened their case as already pointed
out, although they do not have to depend on it ; but in
the combined evidence thus secured, there can be no
reasonable doubt as to the clear priority over the
14
Ferraris publication for which they contend. There is
other testimony which might profitably be alluded to in
this connection, such as that of W. S. Beam, with regard
to the inherent split phase character of the old ex-
perimental motor (pictured at page 273 of complain-
ant's record) of which I am convinced. But the
length to which this opinion has already extended,
precludes it, and that to which I have referred must
suffice.
The question of infringement still remains. At the
time suit was brought, the defendant, Roberts, was en-
gaged at Philadelphia in the sale of Gutmann record-
ing watt meters, as agent for the Sangamo
Electric Co., of Springfield, Ill., by whom they
were made. There was some controversy at the out-
start as to whether sufficient evidence of an infringing
sale by him had been produced ; but the complainant,
by permission, having taken supplementary proofs
upon this point, it was abandoned, and the Sangamo
IElectric Co., at their own request, have now been made
parties defendant with all the responsibility which that
entails.
It is contended that a meter is not a motor, and that
on this ground of itself no infringement can be
charged. But as pointed out by Judge LACOMBE in
the Catskill case, 110 Fed., 377, while the Tesla pat-
ents contemplate the production of power, they are
silent as to the amount of it ; and as a meter armature
rotates against the action of a permanent magnet and
turns a spindle which Operates the registering devices,
the production of some power is necessarily involved.
It is somewhat aside from the question, but still it is a
circumstance that Gutmann himself, in accordance
with whose patents the meters in question are con-
structed, recognizes and claims therein that this device
may be used for power purposes also. No doubt the
strict object of a meter of this class is to measure and
record the element which passes through or actuates
it, gas, water, the electric current, or whatever it may
be ; but where, as here, it is, in mechanical construc-
15
tion, nothing more than an adapted motor with meter
attachments, it cannot escape infringement on that
plea. There is nothing in conflict with this, when
rightly considered, in what is said in the National
Meter Co. v. The Neptune Meter Co., 122 Fed., 75. The
attempt there made was to defeat a special safety ap-
pliance of a water meter by references drawn from the
general motor art, and it was in that connection that it
was held that the two were not the same.
The meter manufactured by the defendant company
is portrayed in the accompanying figure, and is de-
scribed as follows :
-
- ---
- - - - - -
.
- - -- - .
- ... * º " A
- - - - - - -
ºr " - º º -
- -
- *- -- tº-------> -- º
- -
- - - --- -- --
- - - - - - - -
- - - -
º - º
- --------- - -
B
AA are two coils of fine wire, wound upon laminated
iron cores, whose poles are presented to the lower part
of an aluminum armature D, and embrace the rear










16
half of it, the magnetic circuit between the poles be-
ing continued by a crescent shaped laminated core
within the cylinder. BB are coils of coarse wire on
Opposite sides of the upper part of the armature,
above and in a plane parallel with the poles of the
cores CC. The armature D is cylindrical, and is
mounted on a vertical shaft, capable of rotation, to
which a registering device R is attached. By diagonal
slots sawed in its surface and slanting upwards to the
left at considerable of an angle, the exterior of the
cylinder is divided up into predetermined circuits. To
the bottom of the cylinder is attached a disk or ring
E, which rotates with the armature and is located be-
tween the poles of a permanent magnet M, thereby
furnishing a load for the meter which varies with the
speed of the rotations of the armature, causing such
rotations to be proportionate to the energy passed
through it and furnishing a basis for measuring the
same thereby. The two sets of coils, it will be noted
—are differently constructed, BB being composed of a
relatively small number of turns of coarse wire with-
out a core, the recognized construction where a rela-
tively low self induction, which will not dephase the
alternating current, is desired ; while the coils, AA,
on the other hand are made up of a large number of
turns of fine wire wound about an iron core, a well
known way for bringing about a large self induction
with the effect of greatly delaying or dephasing the
current. The current which severally energizes the
two circuits proceeds from a single source, but is
divided before it reaches them, one part passing
through the coarse coils BB and thence through the
lamps to be measured, and so back into circuit, while
the other flows through the coils AA to the same
point. The former is spoken of as being in series and
the latter as in shunt, the connection with the shunt
windings being preferably taken off from the circuit
first, and that of the series coils afterwards, or on the
load side, by which arrangement everything is meas-
ured except the inconsiderable current passing through
17
the shunt coils. The construction so described is in
effect a motor in which the armature is operated upon
by two independent-energizing circuits, produced by
passing through them a divided and dephased alter-
nating
current derived from a single source, thus ap-
parently realizing the patents in Suit.
Before definitely reaching this conclusion, however,
some further observation of them is required. The
two claims of No. 511,559 are as follows:
The
which
“1. The method of operating motors having
independent emergizing circuits, as herein set
forth, which consists in passing alternating cur-
rents through both of the said circuits and
retarding the phases of the current in One cir-
cuit to a greater or less extent than in the
other.
“2. The method of operating motors having
independent energizing circuits, as herein set
forth, which consists in directing an alternating
current from a single source through both cir-
cuits of the motor and varying or modifying the
relative resistance or self-induction of the motor
circuits, and thereby producing in the currents
differences of phase, as set forth.”
following are the first two claims of No. 511,560,
also are relied on :
“ 1. The combination with a source of alter-
nating currents, and a circuit from the same, of
a motor having independent energizing circuits
connected with the said circuit, and means for
rendering the magnetic effects due to said ener-
gizing circuits of different phase and an arma-
ture within the influence of said energizing
circuits. -
“2. The combination with a source of alter-
nating currents and a circuit from the same, of
a motor having independent energizing circuits
connected in derivation or multiple arc with the
said circuit, the motor or energizing circuits
being of different electrical character, whereby
the alternating currents therein will have a dif-
ference of phase, as set forth.”
18
By the first of these the method or system was
patented, and by the last, certain special forms devised
for carrying it out. Both adopt as a necessary founda-
tion the “Tesla effect” exemplified in his original in-
vention, to which they are merely an adaptation of
the split phase idea. To realize either there must,
therefore, exist in any infringing device, a resultant
action of the two energizing circuits. This, as held
by Judge BROWN in the Royal Weaving case, 115 Fed.
732, before referred to, is the limitation imposed by
the Dumesnil and Cabanellas patents, and is in fact
all that is claimed by Tesla in describing his invention
in this and other patents. But it is conceded, or if
not conceded, satisfactorily proved that the eddy cur-
rents formed in the armature under the field poles AA
at one end, are deflected by the slots in the cylinder so
as to come under the influence of the field poles BB
of differing phase at the other, and that it is the re-
sultant magnetic effect of the two that causes the ro-
tation of the armiature. That it is this resultant effect
that is sought and obtained is manifest, else why the
deflecting slots, the only function of which is to ex-
tend the eddy currents from one to the other ? Cut
this off, or dispense with one set of poles and you
have no rotation, or only a most feeble one, explain-
able on other principles. Or if the slots are made
parallel to the axis of rotation, Or, if with their angu-
larity retained the two sets of poles are set at an angle
exactly opposite thereto, there is the same lack of re-
sult. The angularity of the poles when in the same
horizontal plane must be retained when they are in
independent planes, or it must be made up by an
equivalent angularity of the slots, so that each set of
poles shall always operate on the same armature bars.
Reversing the angle of the slots reverses the relative
position and action of the poles, causing the armature
to turn in the opposite direction. The action which is
thus secured is theoretically produced in each instance
by the rotary progression of an ideal pole, the
resultant of the two sets of poles acting independently.
19
That this is dependent on the intermediate eddy cur-
rents being deflected along the armature, from One set
of poles to the other, does not affect the character of
the action or the result ; or in other words, it is no
less a resultant because one set of poles acts in one
plane and the other in another. The supposed
mechanical resultant of a parallelogram of forces is a
convenient diagrammatic fiction to illustrate a physical
effect, and may exist whether the co-operating forces
act in the same plane or in planes that are parallel,
and there is nothing to impose any stricter limit on
that which is relied upon here. The action of the two
energizing circuits has been spoken of graphically as a
whirling field of force, and compared to that of a mag-
net rotated about the armature, which no doubt con-
ceives of the resultant as moving in a single plane at
right angles to the axis. But the inventor himself
simply speaks of it as a rotary progression of the poles
or points of magnetic effect, and this, as already
stated, is satisfied, although the energizing poles act
in independent planes, provided only there is a con-
joint magnetic influence to produce a rotary effect.
The Tesla motor as an invention, was first in its own
peculiar field, and is entitled in consequence to a
liberal application of the doctrine of equivalents, and
of the substantial equivalency of the defendants' de-
vice I am fully convinced. The fundamental idea is
appropriated, whatever improvement or adaptation
there may be besides. Nor can I see that there
is any difference whether we consider the eddy cur-
rents, which are carried by means of the slots from
the lower to the upper part of the armature, as
there attracted or repelled, that is to say, as drawn
tangentially or pushed tangentially by the field poles
under whose influence they are so brought. The sig-
nificant thing in each is the conjoint or resultant ac-
tion of the two opposite sets of poles, the magnetic
influence, whether of attraction or repulsion, waxing
and waning, and shifting progressively about the ar-
mature, of the existence of which there can be little
20
doubt. It is persuasive of the equivalency of opera-
tion which is so contended for, although by no means
conclusive of it, that Tesla in a patent applied for May
20, and granted December 3, 1889, suggests that where
the two main or primary sets of energizing poles there
employed are at right angles, and a single armature
core is used, it is to be wound in close circuit from end
to end; but that if the poles are in line—that is in
vertical plane with each other, as in the present
meter—there should be an angular displacement of the
armature coils. This equivalency is assumed without
explanation as being within the terms of the invention.
So in another patent applied for March 26, 1890, and
granted August 5th following, the two sets of field
poles there found are located at either end of the ar-
mature, out of line with each other, forming practically
two fields of force, as it is said, alternately disposed,
with the poles of one set or field, opposite the spaces
of the other. Much in the same way, Gutmann in the
patent under which the meters in controversy are con-
structed, shows an armature with straight slots and poles
out of line, interchangeably with slanting slots and poles
in line. Other confirmations of the equivalency of the
two arrangements with that of a Tesla motor, as well
as with each other, could be drawn from this record,
but these must suffice. They establish to my satis-
faction the general infringing character of the de-
fendants' meter as is charged.
A special defence of non-infringement is made, how-
ever, as to the second claim of patent No. 511,560, on
the ground that the energizing circuits in these motors
are not in derivation or multiple arc with the circuit
from the source of supply ; and the decision of Judge
LACOMBE in the Catskill case is relied upon, where it
was held that the Scheeffer meter did not infringe,
both energizing circuits not being connected in
multiple arc with the main circuit. This decision is
said to be the result of a mistake as to the exact
character of the circuit connection, but of that I shall
21
not undertake to speak. In the case before me, which
is illustrated by the following diagram,

º:
the circuit from the generator is divided, one branch
being taken off to go to one set of poles and the other
to the other, both uniting again after the latter has
passed through the lamps to be measured. This would
seem to make each of the branches which constitute
the energizing circuits to be in derivation or multiple
arc with that from the source of supply, realizing the
terms of the patent. While the so-called series coils,
DD, may be in series with the lamps LL, the lamps
are certainly in multiple with the circuit from the
generator, and so of necessity also are the coils. The
distinction attempted by Prof. Jackson, and particu-
larly the suggestion that the insertion in one of the
branch circuits of a set of incandescent lamps destroys
the derivative relation, is too refined, as it seems to
me, to stand.
Finding therefore that the patents in suit are valid
and have been infringed, a decree is directed in favor
of the complainants in the usual form, with costs.
True copy certified to from the records.
[SEAL.] (Sgd.) GEORGE BRODBECK, J.R.,
pro Clerk.
Sept. 11th, 1903,
KERR, PAGE & COOPER, for Complainant.
FREDERICK J. RNAUS, CHARLEs A. BROWN and SEWARD
DAVIS, for Defendants.

223 ºv- of ſº ** A. C. MOTORS.–C.
7–4 - Ža-04 / 7 zº 511,559.
; 511,56O.
No. 6.
Opinion—Circuit Court—Final Hearing.
Tesla Split-Phase Motor.
(Patents Nos. 51 1,559 and 51 1,560).
*-* *-* -- *** -º-º-º-º-º-º-º-º-º-º-º-º-º-º- ºr-º-º-º-º:
..Westinghouse Electric and Manufacturing Company,
•ºsº
Complainant,
VS.
Muttial Life Insurance Co. of New York
and H. C. Mandeville,
Defendants.
Judge Hazel's Opinion filed in the U. S. Circuit court,
Western District of New York, February 9, 1904.
C. G. BURGoxNE, Walker and Centre Streets, N. Y.
(ſluited States (ſircuit (ſourt,
WESTERN DISTRICT OF NEW YORK.
WESTINGHOUSE, ELECTRIC AND MANU-
FACTURING COMPANY.,
Complainant,
WS. In Equity,
No. 188.
MUTUAL LIFE INSURANCE COMPANY
OF NEW YORK and H. C. MANDE-
WILLE, -
Defendants.
RERR, PAGE & CoOPER, for complainant.
MARTIN CAREY, SEWARD DAVIS, for defendants.
CHARLES A. BROWN, of counsel.
HAZEL, D. J.
This suit in equity is brought to establish infringe-
ment by the defendants of two United States letters
patent granted to Nikola Tesla, of which complainant
is the owner by assignment. The applications for both
patents were filed December 8, 1888, but on account
of interference proceedings in the patent office, they
were not granted until December 26, 1893. Their
numbers are 511,559 and 511,560 respectively. The
infringements consist in the use by the defendants of
an alternating split-phase motor in an instrument for
measuring the amount of electric energy supplied
2
to a consumer. The instrument containing the motor is
technically known as a recording watt meter. The
infringing apparatus used by the defendants in a build-
ing at Elmira, New York, is the Gutmann meter. The
defense is want of patentability, non-infringement and
anticipation. Patent No. 511,559 has two claims, both
of which are said to be infringed. They read as, fol-
lows:
“1. The method of operating motors having
independent energizing circuits, as herein set
forth, which consists in passing alternating cur-
rents through both of the said circuits and re-
tarding the phases of the current in One circuit
to a greater or less extent than in the other.
2. The method of operating motors having in-
dependent energizing circuits, as herein set forth,
which consists in directing an alternating cur-
rent from a single source through both circuits
of the motor and varying or modifying the
relative resistance or self-induction of the motor
circuits and thereby producing in the currents
differences of phase, as set forth.”
The first claim relates broadly to the method and
extent of retardation of the phase of the current. The
second claim refers specifically to the method of ac-
complishing in the electric currents a difference of
phase. Infringement is also charged of Claims 1 and
2 of the Patent No. 511,560, which read as follows:
“1. The combination with a source of alter-
nating currents, and a circuit from the same, of
a motor having independent emergizing circuits
connected with the said circuit, and means for
rendering the magnetic effects due to said ener-
gizing circuits of different phase and an armature
within the influence of said energizing circuits.
2. The combination with a source of alterna-
ting currents, and a circuit from the same, of a
motor having independent energizing circuits
connected in derivation or multiple arc with the
said circuit, the motor or energizing circuits
being of different electrical character whereby
the alternating currents therein will have a dif-
ference of phase, as set forth.
3
These claims with particularity refer to an apparatus
for effecting the object of process patent, No. 511,559,
and specifying the devices constituting the split-phase
motor with a single line or circuit. It is practically
conceded that infringement of either of the claims in-
volves the complete use of the entire system described
in the specifications. The patents in suit are improve-
ments on a series of five earlier patents which are the
basic inventions for a class of motors called the poly-
phase motors for power transmission, or rotating
field alternating motors. They are operated by al-
ternating currents of electricity. The improvement
patents here considered relate to the split-phase motor.
It is not intended to discuss the scope of these
patents in detail for the reason that the claims in-
volved have been uniformly construed in one form
or another in a variety of litigations which have
followed the Tesla polyphase and the split-phase
patents from the time of their issuance. The pat-
ents in suit especially have been attacked with well
directed, vigorous and resolute pertinacity. The
fundamental principles upon which a difference of
phase in circuits is based have been set forth with
elaborate detail in prior opinions by circuit courts
and circuit courts of appeals, notably by Judge TOWN-
SEND in the case of Westinghouse v. New England
Granite Co. et al., 103 Fed. Rep., 951, which was a
suit upon the broad Tesla patents of May 1, 1888, Nos.
381,968, 382,279 and 382,280; by Judge SHIPMAN in
the same case for the Circuit Court of Appeals, 110
Fed. Rep., 753; by Judge BROWN in Westinghouse Co.
v. Royal Weaving Co., 115 Fed. Rep., 733; by Judge
MCPHERSON in Tesla Electric Co. v. Scott & Janney
et al, 97 Fed. Rep., 558 ; by Judge THOMPSON in West-
inghouse Co. v. Dayton Fan & Motor Co., 106 Fed.
Rep., 724, and in the same case by Judge SEVERENs,
who wrote the opinion for the Circuit Court of Appeals
for the Sixth Circuit, 118 Fed. Rep., 562; by Judge
LACOMBE in Westinghouse Co. v. The Catskill
Illuminating Co., 110 Fed. Rep., 377, and in
the same case by Judge TOWNSEND for the Circuit Court
4
of Appeals, reversing the decision of the Circuit Court,
121 Fed. Rep. 831; and recently by Judge COLT in
Westinghouse Co. v. Stanley Electric Co., and by
Judge ARCHBALD in Westinghouse Co. v. Hiram C.
foberts, which cases are not yet reported. It would,
indeed, be a work of supererogation to here attempt
an analysis of the involved claims and their scope
especially in view of the extremely technical character
of the abstruse questions involved and their previous
exhaustive and comprehensive consideration by the
courts. In the Catskill case the Circuit Court consid-
ering the Tesla patents in suit and the defenses therein
raised, sustained their validity and unqualifiedly con-
curred in the decisions of Tesla Electric Co. v. Scott
& Jauney et al and Westinghouse Co. v. Dayton Fan &
Motor Co. supra. The Circuit Court of Appeals, how-
ever, reversed the decision upon the ground that the
publication of a magazine article on April 22, 1888,
by Professor Galileo Ferraris, fully described and
disclosed the system covered by the patents in suit.
This publication upon the evidence in that case
was found to be prior to the date of the inventions
in suit and constituted an anticipation. It is quite
apparent that the Circuit Court of Appeals did not
intend to disaffirm or disapprove the conclusion of
the Circuit Court upon any other ground, although
no other issues were expressly discussed. By im-
plication at least, the novelty and validity of the
patents Nos. 511,559 and 511,560, as found by the
Circuit Court were concurred in and sustained. Upon
that point the opinion of the Circuit Court of Ap-
peals states:
“By the method and means therein described
Tesla dispensed with one of the line circuits,
and was able to run the motor by means of
alternating currents from a single Original
source. This was accomplished, as appears
from the foregoing claims, by means which re-
tarded the phases of the current in all circuits,
or so varied the relative resistance of the motor
circuits as to maintain the necessary difference
in phase in the currents. Such utilization of a
5
single original source by thus splitting a single
current into two currents was an improvement
of great practical value.” e
This construction will be adopted by this court.
The conclusions in patent cases by courts of concurrent
jurisdiction, though the parties are different, are in
themselves strongly persuasive of their soundness; but
when these questions have been reviewed on ap-
peal and sustained the doctrine of res adjudicata,
provided no new evidence upon the subject is
shown, has undoubted application. I am now
brought to the question of anticipation. Are patents
Nos. 511,559 and 511,560 invalid because anticipated
by the admitted publication of Professor Galileo Fer-
raris on April 22, 1888, in Turin, Italy 2 It is not
controverted that this publication completely de-
scribed the process and method of operating motors
as set out in the specifications and claims in suit.
The Tesla split-phase patents, as has been stated, were
granted December 23, 1893, upon applications filed
December 8, 1888, eight months after the Ferraris pub-
lication. Upon careful consideration of the proofs I
have arrived at the conclusion that the actual date of
the Tesla inventions is prior to this publication and
that the patents were not void for anticipation. Ac-
cording to the evidence, Tesla conceived his invention
in his laboratory No. 89 Liberty Street, New York
City, and completed the same in the month of Sep-
tember, 1887. He made disclosure thereof to others
during the fall of 1887, especially to Mr. Brown and
Mr. Nellis, witnesses for complainant, and subse-
quently in the month of April prior to the Ferraris
publication to his solicitor, Mr. Page. The defense of
anticipation raises a question of much importance.
Bvidence in support of the claim of earlier conception
than the date of the application, disclosure of the in-
vention and its actual reduction to practice must be
received with great caution. Unless such inventions
were actually made and perfected before the date
of the Ferraris publication, the patents cannot be sus-
tained. The burden is upon the complainant under the
6
circumstances to establish by clear, unequivocal and
convincing proof that the anticipation has been an-
ticipated. Westinghouse Co. v. Saranac Lake Electric
Light Co., 108 Fed. Rep., 221; Thayer v. Hart, 20 id.
693; St. Paul Plow Works v. Starling, 140 U. S. 184.
Has the complainant complied with the rule 2 Tesla,
to sustain an earlier date of invention than the date of
the application, and as a part of complainant's prima
facie case, gives testimony tending to establish the
following facts —
In the autumn of 1887, assisted by Mr. Szigeti, he
was engaged in his laboratory at No. 89 Liberty Street,
New York, in perfecting different types and sizes of
alternating current motor. Complainant has been un-
able to locate Szigeti, which tends to explain his failure
to corroborate Tesla upon this point. In July, 1888,
Tesla sold his polyphase and split-phase patents to
the complainant corporation and entering its employ
took up a temporary residence in Pittsburg, where com-
plainant's factory was located. During his absence of
one year from New York, the laboratory was moved by
his assistant from Liberty Street and later after his
return to New York, again moved to South Fifth Ave-
nue, where in 1895, it was consumed by a fire which
destroyed all his motors, except the “Exhibit Tesla
motor.” This apparatus had been reduced to practical
form, according to the evidence, in September,
1887, and was in the patent office at Washington
at the time of the fire. It had been used as
an exhibit in proceedings in interference with
Eerraris, and was produced as new evidence
upon the hearing of this case. It is shown to
be capable of successful operation by two wires as indi-
cated in the specifications of patent No. 511,560. The
transaction to which Tesla's narrative relates occurred
fully fifteen years ago. Examination and considera-
tion of all the testimony disclosed by the record
satisfies me even after this lapse of time of its truth-
fulness and its accuracy. The conclusion is not
reached without some degree of hesitation, solely due,
however, to the views expressed by the Circuit Court
7
of Appeals of this Circuit in the Catskill case, regard-
ing the proof there submitted upon this question. This
proof constitutes a portion of the evidence here, and
will be treated hereafter. The standard of proof re-
quired where anticipation has been clearly shown, to
carry the invention back to a date earlier than the ap-
plication, has been abundantly supplied in the present
record. Here, the testimony of Tesla emphatically
and unequivocally narrated, sufficiently supported by
other witnesses as to the specific construction of the ex-
hibit motor and its operativeness as a split-phase de-
rivative motor in the month of September, 1887,
impels me to the conclusion that its actual invention
is prior to the date of the Ferraris publication. In
the case at bar, the circumstances surrounding the
earlier date of invention and the subsequent facts in-
dubitably lead to the conclusion that an earlier date of
invention has been definitely fixed and established.
According to Tesla, the experimental motor in evi-
dence was one of the earliest constructed and was op-
erated by him almost daily in September, 1887, upon
the split-phase derivation system. His description of
the way in which the two circuits were connected prep-
aratory to securing the necessary difference of phase
for the operation of the motor is entitled to weight
and is fairly corroborated by the testimony of Mr.
Brown, to whom with others the single wire system of
motor operation was disclosed and explained. Tesla
testifies further that subsequently and early in April,
1888, he disclosed the invention to his solicitor Mr.
Page, who was then engaged in preparing an appli-
cation for an improvement patent upon one of Tesla's
earlier inventions. This communication is corrob-
orated by Mr. Page, who testifies that the subject
of such application was thereafter fully and fre-
quently discussed. The two wire induction motor was
regarded by them as being the most important type of
motors and, accordingly, was fully described in the ap-
plication filed May 15, 1888, without mentioning the
derivation feature. Nellis, witness for complainant,
S
testifies to the practicability and operativeness of the
Tesla exhibit motor in the years 1887 and 1888. His
testimony is to be received with caution, as he was not
an electrician. It appears from the proofs that the
experimental motor admittedly was capable of use in
various ways, either as a transformer or polyphase
motor, and, therefore, the testimony of Nellis, aside
from his observations, which would be entitled to no
probative effect, ought not to be entirely disregarded.
So far as such testimony shows an independent
recollection of facts and details, it is entitled to weight.
I am unable to perceive any sufficient reason why his
narrative of what he saw at particular times should not
be given credence. Certainly his opportunity for Ob-
servation was enticing; the laboratory was guardedly
closed to the public and open to few, and the experi-
ments of a trained expert in the intricate subject of
electricity, fascinating to a mechanic, may well have
made an impression. He testifies that he furnished
power at night whenever Tesla tested his apparatus.
It appears that Tesla showed him the method of
operating with two wires the exhibit motor, which
the witness says was thus revolved and reversed.
The testimony leaves an undoubted impression upon
the mind that however unskilled this witness may
have been shown, he had a clear recollection that
the armature was revolved and reversed by the mani-
pulation of two wires. Such operation of the apparatus
crudely and superficially stated, was substantially
the discovery described in the Tesla patents in suit.
It is argued that little stress ought to be placed
upon this evidence in the absence of facts showing that
the experimental motor was capable of Operation with-
out the use of auxiliary devices. As already observed,
standing alone it would not be entitled to considera-
tion but when considered with the testimony of Tesla
and Brown, it cannot be denied some degree of weight.
The complainant's witness Brown by his admission
was financially interested in the patents of Tesla and
this fact undoubtedly tends to detract from the force of
his testimony, but no sufficient reason is apparent to
9
disregard it. He testifies substantially that the motors
of the derivative split-phase type were first made by
Tesla in his laboratory in the summer or fall of 1887,
and that the exhibit Tesla motor was successfully
operated many times in his presence, he says,
“It was operated by means of an alternating
current from which were taken two derived
currents, One passing through one winding and
the other through the other. It was operated
as an induction motor, or by means of putting
external resistance is one of the derived circuits.”
The witness had some skill in the practical applica-
tion of electricity and his description of the apparatus
conforms to the appearance of the exhibit motor. It
was prior to or during September, 1887, that Tesla
communicated to him the method of effecting a re-
tardation to produce a difference in phase by putting
an inductive resistance on one of the two derived cir-
cuits from the main circuit. Tesla also communicated
to his solicitor that the rotary field motor was capable
of direct operation from a single circuit as well as from
two or more independent circuits from the current
source. To one who had thus recently drawn specifi-
cations covering the polyphase system of motors, the
communication that such motors were capable of suc-
cessful operation from a single circuit by a method of
“splitting" or “derivation,” thereby dispensing
with one of the circuits, must have been not only
interesting but surprising. I quite agree that it was
astonishing that the disclosure by Tesla to his solicitor
was not made earlier; but the reason assigned by Mr.
Tesla himself deserves more than passing attention.
Upon this point he testifies that he did not wish to
apply for a patent for the later invention until the
patents for his polyphase system were granted, being
apprehensive that the later would minimize the im-
portance of the earlier. It appears from the evidence
of Mr. Page that upon receiving the disclosure early
in April he became apprehensive that the applications
then filed and for which patents were soon to be
10
granted were not sufficiently specific to include the
later method. Accordingly, he advised with his asso-
ciates at home and later in Washington in relation to
modifying or amending the pending claims and in de-
vising a future course to protect the later invention.
The conclusion reached was that an earlier patent
covered the invention and hence the delay in not at
once filing application. Attention is called to a written
charge for services rendered by Mr. Page, under date
of April 27, upon which stress is laid by complainant
and to which Judge ARCHBALD in his opinion in the
Roberts case attached much significance. I do not
attach like emphasis to this point. In my mind it is
quite probable that the said charge as well as the trip
to Washington may have related to the application of
May 15, which as I understand the evidence, had refer-
ence to the inductive split-phase feature and not to a
laotor “connected in derivation or multiple arc with
the circuit.” Irrespective therefore, of the entry in
Mr. Page's lost diary of a charge for services rendered,
the result of all the evidence establishes the disclosure
by Tesla in the manner and at the time stated by him,
clearly, directly and persuasively. This conclusion is
strengthened by many other facts and circumstances
disclosed by the record tending to corroborate an
earlier date for the invention. The testimony of Mr.
Stanley, witness for defendant, deserves to be noted.
On his direct examination he testifies that between
May 15th and June 15th, 1888, he had an interview
with Mr. Tesla in his laboratory ; that nothing was
said on the subject of a two wire motor ; nor were any
experiments made by Tesla in his presence. Later
when confronted with a letter addressed to George
Westinghouse written by him under date of June 24,
1888, he admitted the truth of its contents. The
letter states that Tesla spoke of having run
the motors by one circuit with a retarding
coil in one set of circuits and mention is made
of the manner in which the result is achieved, namely,
by “changing the lag in One set of circuits and using
11
the difference in phase between direct and indirect
magnetization.” True, this letter was written and the
interview took place two months after the Ferraris
publication, but it is a circumstance which has weight
in support of complainant's contention. It certainly
dissipates the argument based upon the witness Dar-
lington's testimony that when Tesla was in Pittsburg
he was ignorant of the derivation method. Further-
more, Tesla has satisfactorily explained his failure to
disclose his invention to Professor Anthony, while at
the factory of the Mather Electric Company, whereby
two currents of different phase could be derived from
a single source. It appears that he was admonished
by Mr. Brown and Mr. Peck, both financially asso-
ciated with him, to remain silent, and later upon the
advice of counsel he again declined to furnish informa-
tion sought regarding his invention. These are all
significant facts which in my judgment supply the
definiteness and certainty on the question of priority
of invention which the court found absent in the
Catskill case. For these reasons the date of the inven-
tions in suit is carried back to September, 1887.
As to infringement.
It was held by Judge LACOMBE in the Catskill case
and by Judge ARCHBALD in the Roberts case, cases in
which the infringing devices were equivalent, that in-
asmuch as the meter armature of the defendant’s appa-
ratus “rotates against the action of a permanent mag-
net, and turns the spindle which operates the register-
ing device,” the production of some power is necessa-
rily involved, and accordingly it was held to be imma-
terial that the structures of the patent involved power
transmission systems while that of the defendant in-
volved a meter. The defendant's apparatus in the
Boberts case being practically identical with the de-
fendant's device in this case, the conclusion and rea-
soning of the court in that case upon the question of
infringement, will be followed here. It is contended
by the defendant that the disc or armature of its appa-
ratus is rotated as a result of the energizing out of
12
phase currents acting in unison upon it; that
the position of the disc in the defendant's apparatus
is horizontal, having two electro-magnets placed
in relation thereto in such a way that the magnetism
intersects the same on the same radius; that one of
the magnets located near the disc's edge receives a
“shunt” current, that is, a current derived from the
main circuit, and the other is energized by the
“series” or main current. It is further contended
that the said electro-magnets are so arranged in the
meter as to produce electric currents of differing phase,
namely, that the construction of the shunt magnet and
the coils which surround it produces a certain amount
of self induction, while, on the other hand, the func-
tion of the series magnet which has little or none of
the retarding effect mentioned, is to create a magnetic
force in the plane of the disc, and by their joint action
cause it to rotate. The rapidity of its rotation accord-
ing to defendant's view is “arranged to be proportional
to the flow of the current employed by the consumer,
passing through the series coil and also proportional
to the electrical pressure between the mains or the flow
of current through the shunt coil.”
This description and the manner of operating de-
fendant's meter in my opinion does not differentiate
the same from Tesla's primary patents, to which refer-
ences are made in the patents in suit and which describe
a mode of operation depending entirely upon a rotation
or “whirling field of force,” in which the magnetic pole
shifts from point to point about the periphery of the
armature resulting in its rotation. No evidential value
is attached to the defendant's theory upon this point in
view of the indisputable proof that the effect of the
achievement by the defendant's meter practically con-
sists in the utilization of the Tesla method of produc-
ing a difference of phase in the energizińg circuits. In
the Roberts case the armature consisted of a hollow
vertical cylinder having Slanting slots, while in the case
at bar the armature in the form of a horizontal disc
has spiral slots and the poles of different phase are so
13
constructed in relation thereto, as has already been
pointed out, as to deflect through the radial slots of the
disk the magnetic effect produced by the poles. I concur
in the analysis of this feature of the defendant's appara-
tus, as stated by Judge ARCHBALD. In referring to
the eddy currents formed in the armature under the
field poles, he says:
“ the field poles AA at one end, are deflected
by the slots in the cylinder so as to come under
the influence of the field poles BB of differing
phase at the other end, and that it is the result-
ant magnetic effect of the two that causes the
rotation of the armature. That it is this result-
ant effect that is sought and obtained is mani-
fest, else why the deflecting slots, the only func-
tion of which is to extend the eddy currents
from one to the other ? Cut this off, or dis-
pense with One set of poles and you have no
rotation, or Only a most feeble one, explainable
On other principles.”
The record discloses that the Tesla patents describe
armatures as disks wherein field poles are presented
radially to their periphery; while in the defendant's
motor the poles are perpendicular to the disk. These
structural differences are immaterial. Other differ-
ences have been pointed out, but it is thought that
they are merely a difference in form and not such as
affect the merits of the patents in suit. The Gutmann
meter without the registering attachment is appro-
priately described by the following diagram prepared
by complainant's expert witness Waterman.
|Here insert diagram found on page 56, Vol. 1, Com-
plainant's record.]
M ©ood,
~$2— A. AA-7/2S.
© P
GEA/EAEA 7TOR.
- F
...ſº º
Al-
“D represents a disk of aluminum, which
serves as the armature. B B are two coils of
coarse wire with short iron cores, which are
placed on opposite faces of the disk near its
centre, and C is a magnetic core carrying a fine
wire coil A and having its poles presented to
opposite faces of the disk at a point near the
edge of the latter. The coarse wire coils B con-
stitute one emergizing circuit, while the fine
wire coil A is the other energizing circuit.
These two circuits form paths through which
the current proceeding from an alternating cur-
rent generator G divides, and as the path or
branch including the coils B has but a few
turns of coarse wire surrounding a small
amount of iron, while the path including the
coil. A has very many turns of fine wire sur-
rounding a large iron core, the latter path will
have a very high self-induction as compared
with the first, and hence, the current which
passes through it will be greatly delayed in
phase with respect to that in the other or coarse
wire path.”
It is wholly unnecessary to comment upon the in-
ventions of Cabanellas, Dumesnil and others relied on
in anticipation or to again construe with greater parti-




15
cularity the claims in suit. This has been exhaustively
and comprehensively done in the later adjudications in
the circuit courts, to which attention has been called.
Furthermore, the distinguishing features described
in the alleged anticipatory patents have often with
great particularity been explained by the courts. It
is enough that it is satisfactorily shown by the proofs
that the apparatus of the defendant is constructed by a
method of applying the energizing circuits in different
phases, and that the effective results of the armature
or disk are achieved in the defendant's motor by the
mode of operation described by both claims of patent
No. 511,559 and claims 1 and 2 of patent No. 511,560.
These claims therefore are held to be infringed. Two
other points pressed at the argument, viz.: that the
defendant Mandeville is not a proper party defendant,
and that the meters which are the subject of this suit
were sold to the defendant insurance company by the
Western Electric Company, against which this complain-
ant has already had a decree, need to be decided. The
first point is sustained. The defendant Mandeville in
the absence of special cause is not chargeable with in-
fringement in his capacity as agent, especially as the
real substantial infringer is before the court, and hence
the bill as to him is dismissed with costs. The second
point is overruled on the authority of Birdsell v.
Shaliol, 112 U. S., 485; Kelley v. Ypsilanti Mfg. Co.,
44 Fed., 19; Electric Gas-Lighting Co. v. Wollensak,
70 Fed., 790. It follows that the patents in suit are
valid. The defendant has failed to establish any of
the grounds upon which complainant's right to sue
for infringement depends, and complainant is there-
fore, entitled to a decree in the usual form, with costs
and disbursements.
[24605]
Af
2 :23 - A. c. MoToRs.—c.
511,559.
T4 - 511,560
wº- */~. */ Nº. e.
Opinion—Circuit Court
*

Motion for Injunction.
Tesla Split-Phase Motor.
(Patents Nos. 5 II,559 and 5 II,56O).
Westinghouse Electric and Manufacturing Company,
*
sºº’s - Complainant,
VS.
Jefferson Electric Light, Heat and Power Company,
Defendant.
Judge Buffington's Opinion filed in the U. S. Circuit Court,
Western District of Pennsylvania, March 28, 1904.
C. G. BURGoyNE, Walker and Centre Streets, N. Y.
gº p *
Printed irº, . . . . . . . . . . . .33%
--- * * * *4 * * * - t y ', ' ' '.
if Ç Ki # R K. A A. : : ... " * . * * s' s : • ‘. . .'s " * * * .. * y ſº
* *
II, the CirClit (Ollrt Of the United StăţS
FOR THE WESTERN DISTRICT OF
PENNSYLVANIA.
WESTINGHOUSE ELECTRIC & MFG. Co.
WS. No. 13 May Term
1904.
In Equity.
JEFFERSON ELECTRIC LIGHT, HEAT alty
& POWER COMPANY.
BAKEWELL & ByRNES ; KERR, PAGE & COOPER, for
Complainant.
ARTHUR KEITHLEY, for Defendant.
[Filed March 28th, 1904.]
BUFFINGTON, J.
This is an application by the Westinghouse Electric
& Manufacturing Company for a preliminary injunc-
tion against the Jefferson Electric Light, Heat &
Power Company to enjoin infringement of Nikola
Tesla patents, No. 511,559 and 511,560. These patents
were sustained by the Circuit Court of Appeals for the
Sixth Circuit, in the case of the Dayton Fan & Motor
Company v. Westinghouse Electric & Mfg. Co., 118 Fed.
Rep. 562; by Judge ARCHBALD sitting in the Eastern
District of Pennsylvania ; and by Judge HAZEL sitting
in the Western District of New York. The Diamond
Meter Company, the maker of the meter complained
of, appears in the present case and resists the grant of
a preliminary injunction. It is conceded the meter is
an infringement of said patents. All the requisites to
entitle the complainant to a preliminary injunction
therefore appear ; Putnam vs. Keystone Co., 38 Fed.
2
Rep. 234 ; Conover vs. Mers, 3 Fish. Pat. Cases, 386,
E'ed. Cases No. 3123. The Diamond Meter Company
while conceding the general right of the complainant
to an injunction by reason of the foregoing adjudica-
tions of these patents contends it is relieved from
the effect thereof by reason of an adverse decree
against the complainant in a bill in equity brought by
it against the Catskill Illuminating & Power Company
(121 Fed. Rep. 831). Res adjudicata constitutes a
valid defense, but the burden of establishing it rests
on the respondent : 3 Robinson, Sections 983 and
1046. Inasmuch as the Diamond Meter Company was
not a party to or appeared on the record in that case,
but bases its plea of estoppel and res adjudicata on
the fact that it defended the same, the law is clear
that such defence in Order to constitute an estoppel,
must not only have been made by it, but it must have
been done openly and to the knowledge of the other
party and this in order that the estoppel be mutual :
LaCroix vs. Lyons, 33 Fed. Rep. 439; Herman on
Estoppel, page 157; Bigelow on Estoppel, page 99;
Cramer vs. Singer Mfg. Co., 93 Fed. Rep. 636; Lane
vs. Wells, 99 Fed. Rep. 286; Walker on Patents, page
358 ; Litchfield vs. Goodnow, 123 U. S. 550. Tested
by these authorities, we think that the Diamond Meter
Company has not shown that its defence in the Cats-
kill case was openly made and with the knowledge of
the complainant and that therefore such case is not
'res adjudicata as between it and the complainant.
The facts were as follows: The latter filed a bill in
equity against the Catskill Illuminating & Power Com-
pany charging infringement of these patents in the use
of a Scheeffer meter made by the Diamond Company.
The Diamond Meter Company was not a party to the
cause and did not appear on the record. On August
22nd, 1901, Judge LACOMBE at Circuit sustained the
validity of the patents. Thereupon the complainant
company in the latter part of 1901, began suit
against the Diamond Meter Company in the United
States Circuit Court in Illinois charging infringement
of these patents. On January 25th, 1902, the
3
solicitor for the meter Company filed an answer sworn
to by the secretary of the Company in which it was
stated : “This defendant is not informed, save by the
allegations in said bill of complaint, whether the al-
leged suit against the Catskill Illuminating & Power
Company was begun, prosecuted and decided as
alleged in said bill of complaint it therefore denies, on
information and belief, that any such proceedings in
manner and form alleged were had, and denies that it was
formally agreed and undertaken to secure the said Cats-
kill Company not only against the expense of all legal
proceedings in the said alleged suit, but also all loss by
reason of any judgment for damages and profits which
may be entered against defendant in Said alleged suit.
And this defendant therefore denies that it was privy to
said alleged suit against said Catskill Company and that
all questions alleged to have been passed upon in said
suit are res adjudicata as between the parties hereto.” On
April 20th, 1903, this suit was discontinued. On Feb-
ruary 25th, 1903, the decision of Judge LACOMBE, re-
ported at 110 Fed. Rep. 377 was reversed by the
Circuit Court or Appeals (121 Fed. Rep. 831) on
grounds which, as will be noted were successfully met
in the later cases in the sixth and other Circuits. On
March 21st, 1903, which was after the opinion of the Cir-
cuit Court of Appeals was announced, but before a revers-
ing decree therein was entered, a letter was addressed
by Mr. Seward Webb to Judge WALLACE (who had sat
in the case in the Court of Appeals) and to complain-
ant's counsel, resisting an application to withhold
sending down the Mandate. In such letter this state-
ment is made : “The grounds of complainant's counsel
to you were the importance of the case to the com-
plainant. On behalf of the defendants it is sub-
mitted that the matter is of still greater importance
to the Diamond Meter Company, which is the
manufacturer of the meter involved herein and
which has defended the suit.” In the present
case affidavits are presented by the secretary of
the Diamond Meter Company who made the affidavit
to the answer in the Illinois case above noted and by
4.
the solicitor who filed such answer, setting forth that
the Diamond Meter Company assumed the defense
of the Catskill case. There is no allegation, however,
in such affidavits, that the Diamond Company informed
complaimant it was defending the suit or authorized
the Catskill Company to do so. The only allegation
in that respect is : “I am informed and believe that
the said Catskill Company or its representative noti-
fied said complainant or its representative of that
fact,” and “ that the said complainant, the Westing-
house Electric & Manufacturing Company knew that
the said Diamond Meter Company was making and
conducting that defense.” We have seen, however,
that the defence of a suit by one not a party is not
of itself sufficient to constitute the case res adjudicata
as to such defending party : LaCroix vs. Lyons, Supra,
and cases cited.
The opponent must be informed of the fact ; the
estoppel must be mutual. It will be noted as above
that there is no allegation the Catskill Company was
authorized to notify complainant that the Diamond
Meter Company was defending the case or to place
the Diamond Meter Company in that relation to it,
or that the Diamond Company itself notified the
complainant it was defending the cause. Moreover,
there is no allegation that such notice as was given
was conveyed to any officer of the complainant com-
pany whose relation was such that notice to him con-
stituted notice to the Company. Indeed, all the
allegations made are consistent with the fact that the
Diamond Company was simply defending the suit, a
thing it could do without binding itself by the decree.
And the letter of March 21st, 1903, is in keeping
with that view. It simply states the Diamond Com-
pany had defended the suit and the fact that one of
the Judges of the Appellate Court was then informed
of that fact rather tends to show that the connec-
tion of the Diamond Company had not been dis-
closed before. In view of the open and unequivocal
stand the Diamond Meter Company took in the Illi-
nois case, its sworn answer that the Catskill case was
5
not res adjudicata as to it and the absence of all
specific averment that the complainant was informed
of its defense of the Catskill case, we are of opinion
the Diamond Company has not shown on this appli-
cation that the matter here involved became as to it
pes adjudicata by the decree in such case. Such
being the situation the right of the complainant to an
injunction is clear. In view of the fact that the im-
mediate issue of such injunction might work hardship
to innocent users, we will, if desired, hear counsel as
to form of decree before entering same.
UNITED STATES OF AMERICA, {
Western District of Pennsylvania,
I, H. D. GAMBLE, Clerk of the Circuit Court of the
United States of America for the Western District of
Pennsylvania, in the Third Circuit, do hereby certify
the foregoing to be a true copy of the Original opinion
of the Court filed March 28th, 1904, in the suit of the
Westinghouse Electric and Manufacturing Company
against Jefferson Electric Light, Heat and Power Com-
pany, at No. 13 of May Term, 1904, in equity, on file
and now remaining among the records of the said
Court in said clerk's office.
In Testimony Whereof, I have hereunto
subscribed my name and affixed the
seal of the said Court, at Pittsburgh,
in said district, this fourth day of
|SEAL.] April, in the year of Our Lord one
thousand nine hundred and four,
and of the independence of the
United States the one hundred and
twenty-eighth.
H. D. GAMBLE,
Clell; U. S. Circuit Court.
[25018.
223 ºv,
. Tº º ". . . . . ;- 511,559
VV 53 * ' ' ' - a c 9 tº
3%.- */~ * ºr º
, , ; , A. C. MOTORs.-C.
• * * : * :

Opinion—Circuit Court.
Motion for Injunction.
Tesla Split-Phase Motor.
(Patents Nos. 5 II,559 and 5 II,56O).
Westinghouse Electric and Manufacturing Company,
ºr- Complainant,
VS,
Electric Appliance. Company,
Defendant.
Judge Kohlsaat's Opinion filed in the U. S. Circuit Court,
Northern District of Illinois, March 26, 1904.
C. G. BURGoyne, Walker and Centre Streets, N. Y.
In the Circuit Court Of the United States
FOR THE NORTHERN DISTRICT OF ILLI-
NOIS NORTHERN DIVISION.
WESTINGHOUSE ELECTRIC & MFG. CO.
V. No. 27,066.
ELECTRIC APPLIANCE Co.
ROHLSAAT, J.
This cause comes now on to be heard upon com-
plainant's motion for an injunction pendente lite re-
straining defendant from infringing letters patent Nos.
511,559 and 511,560. The inventions relate to the
operation of rotating field motors upon a single alter-
nating current circuit, under what is known as the .
Tesla split-phase system, applied in the present case
to the operation of Electric meters. The former pat-
ent covers the method of operating the motors while
the latter covers the means for so doing. The inven-
tions may be said to consist in splitting the current, at
the motor, into two or more branches constituting the
independent circuits of the motor and producing by
artificial means the difference of phase necessary to
operate the motor. The drawings of the patents seem
to call for an armature in the form of a cylinder.
The defendant's armature consists of a disc. The
specification and claims however of the patents in suit
are not limited to details of form, but call broadly for
“an armature within the influence " of the energizing
circuits. I am of the opinion that defendant's device
is fairly embraced within the terms of the patent in
suit. Both are operated under the principles of
Tesla's patent of May 1, 1888, the invention of which
was the production, by means of a series of stationary
2
magnet poles, energized by alternating currents of
different phase, of an effect upon an armature,
mounted within the influence of such poles,
similar to that which would be produced upon the
same armature’ by rotating around it bodily the pole
or poles of a physical magnet. The equivalency of
the two is shown in Gutmann Patent No. 614,225 un-
der which defendant's device is manufactured. The
difference in the location and application of the mag-
netic influence is equalized and compensated by a cor-
responding difference in the angles of the slots in the
cylinder or disc. The principle of the rotary impulse
and progression is the same. The question is satis-
factorily settled for the purposes of this motion by the
respective decisions in the suits brought by complain-
ant herein vs. Roberts, decided by Judge ARCHBALD of
the Eastern District of Pennsylvania, September 10,
1903, and Same vs. Mutual Life Ins. Co. et al., decided
by Judge HAZEL of the Western District of New York,
Tebruary 4, 1904. I deem the question of infringe-
ment duly established. From the record it appears
that the validity of the patents in suit is assailed prin-
cipally upon the Bailey and Ferraris publications set
out. The former was practically eliminated from this
case by the decision of Judge TownsLND of the Second
Circuit in the original suit upon Tesla's fundamental
patents Nos. 381,968, 382,279 and 382,280 entitled
Westinghouse Electric & Mfg. Co. v. New England
Granite Co., 103 Fed. Rep. 951, which ruling was af-
firmed on appeal 110 Fed. Rep. 753, and again by Judge
ARCHBALD in the Roberts case, supra. In the case of this
complainant against The Catskill Illuminating & Power
Co., 121 Fed. Rep. 831 the Court of Appeals for the
2nd Circuit reversed the decision of Judge LACOMBE
110 Fed. Rep. 377, largely upon the ground that it
did not appear from the record that Tesla's said inven-
tions were not anticipated or described in the paper
read by Professor Ferraris before the Royal Academy
of Sciences of Turin, Italy, on March 18, 1888, and
published, in part, in an Electrical Journal issued at
Milan on April 22, 1888. This ruling was followed by
3
Judge CoIT of the First Circuit in the case of Com-
plainant's herein vs. Stanley Instrument Co., not yet
published. In the case of Roberts and Mutual Life
Ins. Co. of N. Y., Supra, as herein, this difficulty was
overcome. The records in those cases together with
certain original proofs herein, corroborative thereof, are
now before the court, from which I am satisfied that
Tesla's inventions in suit antedated the Ferraris article,
and were original with him, and that the said patents
are valid.
It therefore becomes unnecessary to pass upon the
other questions raised by complainant.
The patents being found valid for the purposes of
this motion, and also infringed, it follows that the pre-
liminary injunction should be granted. Complainant's
counsel may prepare an order in compliance here with.
[ENDORSED :] Riled March 26 1904,
MARSHALL E. SAMPSELL, Clerk.
NORTHERN DISTRICT OF ILLINOIs,
Northern Division ! SS.
I, MARSHALL E. SAMPSELL, Clerk of the Circuit Court
of the United States, for said Northern District of
Illinois, do hereby certify the above and foregoing to
be a true and complete copy of the Opinion filed in
said Court on the 26th day of March, A. D. 1904, in
the cause wherein Westinghouse Electric & Mfg. Co. is
the Complainant and Electric Appliance Co. is the De-
fendant, as the same appears from the original. now
remaining in my custody and control. -
In Testimony whereof, I have hereunto set
my hand and affixed the seal of said
[SEAL.] Court at my office in Chicago, in
said District, this 29th day of March,
A. D., 1904.
MARSHALL E. SAMPSELL,
Clerk.
[24984]
22.5 º .. 469,809.
,7-? : ; ; ; i . . . . . .
; : .i ( , ; ; ; ; No. 7.
W 53
Opinion—Circuit Court.
~
Self-Regulating Transformer Case.
(Stanley Patent No. 469,809.)
Westinghouse Electric and Manufacturing Company,
Complainant,
VS.
Montgomery Electric Light and Power Company,
2** Defendant.
Opinion filed in the U. S. Circuit Court, Northern District
of New York, June 18, 1904. 4.
C. G. BURGoxNE, Walker and Centre Streets, N. Y.
|Printed from certified copy.]
{{\mited States (ſitcuit (ſouvt.
NORTHERN DISTRICT OF NEW YORK,
WESTINGHOUSE ELECTRIC AND MANU-
- FACTURING COMPANY
WS.
MONTGOMERY ELECTRIC LIGHT AND
POWER COMPANY.
Motion for a Preliminary Injunction.
The patent in suit, No. 469,809, was granted to Wil-
liam Stanley, Jr., March 1, 1892, for improvements in
systems of electrical distribution. The patent has
been considered and sustained in this circuit in the so-
called “Saranac Case,” 108 Fed. Rep., 221, affirmed
113 Fed. Rep., 884.
The patent was also considered by the circuit court
for the district of Massachusetts in 117 Fed. Rep., 309,
and by the circuit court for the southern district of
New York in 119 Fed. Rep., 365.
J. EDGAR BULL for complainant.
A. C. FOWLER for defendant.
COXE, J.
To what was said at the close of the argument but
little need be added. It is agreed by counsel that the
2
only question to be decided on this motion is the fol-
lowing:
Does the defendant use a length of wire
substantially equal to the length of wire prescribed by
the Stanley Patent 2
In other words, it was admitted at the argument
that in this circuit the question of infringement is the
Only One left open for discussion and that it must be
determined in favor of the complainant if the fore-
going question be answered in the affirmative.
The specification of the Stanley patent says:
“The first thing to be determined is the length
of the primary wire. This should be of such
length that reacting self-inductively upon its own
magnetic circuit the average counter-potential so
produced approximately equals the potential ap-
plied to the primary circuit. When so constructed,
an ammeter will practically show no current when
the secondary circuit is opened.” -
It was conceded by counsel for the defendant, in
response to a question by the court, that if this direc-
tion were followed the correct length of wire would be
obtained. In other words, if wire be wound on the
primary coil until the ammeter practically shows no
current when the secondary current is opened the
result will be the invention of the Stanley patent. But
counsel insists that this method was previously shown
by Zipernowski and Deri and, therefore, that the pat-
ent is anticipated. -
Several answers suggest themselves but at the
present time it is sufficient to say that the courts of
this circuit have decided that the patent is not antici-
pated by the Zipernowski and Deri publication.
The circuit court says: *
“The article in question imparts no informa-
tion upon the one subject which is the all essen-
tial feature of the Stanley invention, namely, the
length of the primary wire and the method of
determining the same.”
The circuit court of appeals says:
“Concededly the man skilled in the art would
not have found in that art anything which would
3
have told him precisely what that length of wire
should be. * * * But when the patentee in
his claim enumerates as one element of his combi-
nation a wire of a length which will accomplish
the result sought to be achieved, and his patent
discloses a method for determining that length
with mathematical exactness, his claim may fairly
be sustained for the length thus shown.”
It would seem, therefore, that the argument that the
method for ascertaining the length of the primary wire
as pointed out in the specification is vague, uncertain
and indeterminate cannot be maintained.
We have, then, a clear statement that existing diffi-
cmlties can be remedied by regulating the length of the
wire on the primary coil and a simple method of ascer-
taining that length.
In view of all that has been decided by the courts of
this circuit it cannot be contended that the so-called
Stanley rule is a part of the claims involved. The
essence of the invention is the length of the wire on
the primary coil and not the instrument or method by
which that length is determined. If this were other-
wise any one who reaches the same result by a different
method will escape infringement.
* The court is not prepared to say that a combination
can be appropriated by one who adopts a different
rule for the measurement of one of its elements from
that pointed out in the patent.
As was said by the court in the Orange County
case (119 Fed. Rep., 365):
“It seems to this Court that the Court of
Appeals found that the claims of the patent were
for a combination of the elements therein set
forth, of which one element was a primary coil
having a length of wire equal to what would be
found to produce the indicated results when ap-
plying the Stanley rule; and that the claims were
sustained for a combination of the enumerated
elements into a converter, not merely for a pro-
cess of determining one of those elements.”
Coming now to the question of fact, as indicated
above, the court cannot resist the conclusion that it
must be answered in favor of the complainant.
4.
It is not pretended that the length of wire on de-
fendant's coil was ascertained by an application in
each instance of the Stanley rule, but it is established
that the length required by that rule is, approximately,
used by defendant.
The tremendous advance in the electrical art during
the eighteen years since Stanley's invention, has placed
in the hands of electricians means for ascertaining the
correct length of the wire on the primary coil more
expeditiously and accurately than those pointed out in
the patent, but this does not enable them to appropri-
ate the invention. They cannot use the Stanley length
of wire because modern methods have enabled them to
secure that length without applying the tedious and
comparatively primative method of the patent.
The defendant's transformers are automatically self-
regulating and possess all the characteristics of the
transformers held to infringe in the “Saranac Case.”
They have substantially the same length of wire meas-
ured in feet as the complainant's transformers, which
appear to be constructed in accordance with the pro-
visions of the patent. This is shown by the following
table :
Westinghouse. Wagner.
13 k. W. size----------------- 1490 feet. 1480 feet.
2 k. W. size-------, - sº - - - - -, -e s- = 1400 “ 1416 “
3 k. W. size. ---------------- 1235 “ 1296 “
5 k. W. size-------, --------- 1095 “ 1130 “
From the maze of contradiction and dispute pre-
sented by these papers the court is enabled to extract
a few fundamental propositions.
FIRST. Stanley made a valuable invention.
SECOND. The patent describes the invention with
sufficient clearness to enable skilled electricians to
practice it without difficulty.
THIRD. The defendant has appropriated the inven-
tion although its transformers were not designed in
the manner pointed out by Stanley.
These conclusions render it unnecessary to follow
the experts into the realms of speculation, even if the
5
court were sufficiently versed in electrical science to
enable it to reconcile their numerous disagreements.
The other questions mooted in defendant's brief
were either disposed of at the argument or by the
decisions of this circuit in previous litigations.
Stanley's contribution to the art should be judged
by the conditions existing when he made his in-
vention over eighteen years ago. It is unfair to
belittle that invention by comparing his crude recom-
mendations with the scientific methods which have
been discovered since that time. His invention re-
mains unchanged, but experience has substituted im-
proved methods of carrying it out. The defendant
uses transformers constructed by the improved meth-
Ods, but they are none the less the tranformers invented
by Stanley.
The motion is granted.
|SEAL.]
A True Copy.
Attest :
Clerk.
Circuit Court Clerk’s Office,
UNITED STATES OF AMERICA,
NORTHERN DISTRICT OF NEW YORK.
I, WILLIAM. S. DOOLITTLE, Clerk of said Court, Do
Hereby Certify that I have compared the annexed copy
of Decision, COXE, J., Westinghouse Electric and Mfg.
Co. v. Montgomery Elec. L. and Power Co., In Equity,
No. 7035, with the original now on file in this office,
that the same is a correct transcript therefrom and of
the whole of said original.
IN TESTIMONY WHEREOF, I have caused the
seal of the said Court to be affixed
[SEAL.] at the City of Utica, in said District,
this 18th day of June, A. D. 1904.
W. S. DOOLITTLE,
Clerk.
[25636]
A. c. Morons.—c.
511,559.
511,56O.
No. 9.
Opinion—Court of Appeals.
Tesla Split-Phase Motor.
(Patents Nos. 51 1,559 and 51 1,560).
Westinghouse Electric and Manufacturing Company,
* - Coinplainant, Appellant,
VS.
Stanley Instrument Company,
Defendant, Appellee.
Opinion filed in the U. S. Circuit Court of Appeals
for the First Circuit, September 9, 1904.
C. G. BURGoyne, Walker and Centre Streets, N. Y.
Stanley Instrument Case.
[Printed from certified copy.]
ºil mited $fates (Jircuit (Jourt of Appeals
FOR THE FIRST CIRCUIT.
OCTOBER TERM, 1903.
No. 504.
WESTINGHOUSE ELECTRIC AND MANU-
FACTURING COMPANY.,
Complainant, Appellant,
V.
STANLEY INSTRUMENT COMPANY,
Defendant, Appellee.
Appeal from the Circuit Court of the United States
for the District of Massachusetts.
Before PUTNAM, ALDRICH and BROWN, JJ.
Opinion of the Court.
September 9, 1904.
BUTNAM, J. There is so much judicial literature bear-
ing on this case that only a brief preliminary statement
is required. The bill alleges an infringement of the
two claims of Letters Patent for an invention, No. 511,–
559, issued to Nikola Tesla on December 26, 1893, on
an application filed on December 8, 1888, and of the
first claim of No. 511,560, issued to Tesla on the same
December 26, on an application filed on the same De-
cember 8. No. 511,559 is captioned “Electrical Trans-
2
mission of Power ", and opens with the statement that
Tesla had invented “certain new and useful improve-
ments in electrical transmission of power ‘’. No. 511,-
560 is captioned “Systems of Electrical Power Trans-
mission ", and opens with the claim that Tesla had
invented “certain new and useful improvements in
systems of electrical power transmission ''. The claims
of No. 511,559 are as follows:
“1. The method of operating motors having
independent energizing circuits, as herein set
forth, which consists in passing alternating cur-
rents through both of the said circuits and re-
tarding the phases of the current in one circuit
to a greater or less extent than in the other.
2. The method of operating motors having in-
dependent emergizing circuits, as herein set forth,
which consists in directing an alternating cur-
rent from a single source through both circuits
of the motor and varying or modifying the rela-
tive resistance or self-induction of the motor
circuits and thereby producing in the currents
differences of plase, as set forth.”
The claim of 511,560 in issue is as follows:
“1. The combination with a source of alter-
nating currents, and a circuit from the same, of
a motor having independent energizing circuits
connected with the said circuit, and means for
rendering the magnetic effects due to said ener-
gizing circuits of different phase and an arma-
ture within the influence of said emergizing cir-
cuits.”
The bill was dismissed by the Circuit Court by an
opinion passed down on March 11, 1903, 129 Fed. Rep.
140. The only reason for dismissal given was that the
complainant had failed to establish by sufficient proofs
a conception of the invention by Tesla prior to April
22, 1888, the date of a certain publication in Italy
known as the Ferraris publication. The opinion refers
to one of the Circuit Court of Appeals for the Second
Circuit, Westinghouse Co. v. Catskill Co., 121 Fed. Rep.
831, passed down on February 25, 1903, wherein it was
3
held that the proofs were insufficient to establish in-
vention by Tesla prior to April 22, as rendering un-
necessary an extended statement by himself. There-
upon, the complaimant appealed to us. -
The patents in suit relate to the conversion of alter-
nating currents of electricity into a continuous current.
The latest condition of the prior art is shown by pat-
ents issued to Tesla under date of May 1, 1888, re-
ferred to over and over again in the judicial literature
of this topic. These describe a system “ of electrical
power transmission in which the motor contains two
or more independent energizing circuits through which
were caused to pass alternating currents’”, “ conveyed
directly from the generator to the corresponding motor
coils by independent lines or circuits’. The improve-
ment of the patents in suit dispenses with one of the
lines, or circuits. -
The fundamental nature of Tesla's invention in issue
we think was clearly and correctly put by Professor
Main, an expert called by the complainant. He testi-
fied that, in the patents in suit, it was pointed out
that, without the use of a commutator, an alternating
current could be received from a single circuit, be sub-
divided, and then caused to react in such manner as to
produce continuous and sufficient energy for practical
power purposes. But he also testifies, and we accept
this testimony as correct, as follows :
“I do not understand that, in the patents in
suit, Tesla claims to be the first to discover that
the phase could be split, either by induction or
by the use of electrically dissymmetrical cir-
cuits.” “ It is my understanding that Mr.
Tesla, in his search for a method of driving a
polyphase motor from a single circuit, availed
himself of an item of merely philosophical
knowledge, never before applied in driving
motors, and that, for reasons explained, this ap-
plication was not obvious even in the light of
his own prior patents.”
We find nothing in the complainant's case, or in the
patents themselves, which indicates that Tesla's appli-
4
cation of principles Scientifically known, as explained
by Professor Main, was found to involve any special
difficulties requiring the exercise of the inventive fac-
ulty. Therefore, the invention consisted in merely
applying to practical uses facts that were known scien-
tifically, but never before thus applied. Indeed, both
parties have taken this view of Tesla's invention in
issue here. The complainant says that the invention,
“stated in its simplest form, was based upon the con-
ception that, instead of employing two independent
sources of current and two transmission circuits be-
tween the source and the motor, he ", that is, Tesla,
“might employ but a single source, and a single circuit
leading to the motor; at the latter, divide the circuit
into two paths, and by artificial means retard the
current in one of these paths to a greater extent than
in the other ”. Also, at another place, it says that the
invention did not in the slightest reside in any of the
mechanism employed, and that, therefore, it might be
described in a few words. The respondent took the
same view until a different one seemed necessary in
order to cover the issue of anticipating the Ferraris
publication. In opening the case, the respondent
maintained as follows: The alleged invention of the
patents in suit is not addressed to the utilization of
two-phased currents in a motor, but to an alleged new
way of producing the necessary two out-of-phase cur-
rents; this specific way of producing two out-of-phase
currents was old and well known in the art, and was
old and well known as an equivalent of the method
set out in the May 1, 1888, patents; all the methods of
producing two or more out-of-phase alternating cur-
rents set out in the Tesla patents were, in and of them-
selves, old and well known in the art as means and
methods of producing such out-of-phase currents; and
their laws and limitations had been known and set
out in a way not even approximated in accuracy or
fullness in any of the Tesla patents. The respondent
then further maintained that Dr. Kennelly, on pages
207 and 209 of this record, explained the fact that
the alleged invention in the patents in suit involved
5
merely the substitution of one means of obtaining two-
phase currents for another means, and that, on pages
234 to 249 inclusive, he shows that these two means
were old and well-known equivalents. Of course, all
this was with the purpose of maintaining that there
was no invention in any view of the patents now in
issue. It unavoidably concedes, however, that, if there
were invention, it was of the fundamental and simple
nature which we have described. It is true, as already
said, that subsequently the respondent took a different
position ; but, as the one we have just explained was
the one into which it naturally fell, we are safe in
affirming, as we do, that the experts on each side, and
the parties themselves, have accepted the invention in
issue as we have stated it.
When, under special circumstances like those re-
ferred to by Professor Main, a particular practical ap-
plication of a known principle proves to be of advan-
tage in the arts, and yet the thought of making it had
not occurred to those expert therein, such application,
at times, involves invention. This, within a somewhat
narrow range, was shown by us in Watson v. Stevens,
51 Fed. Rep. 717, in Heap v. Thiemont dé Suffolk Mills,
82 Fed. Rep. 449, and in some other cases. More
striking illustrations are found in Western Electric
Company v. Larue, 139 U. S. 601, National Cash /ēeg-
ister Company v. Boston Company, 156 U. S. 502, Dw-
Bois v. Kirk, 158 U. S. 58, and many other decisions
of the Supreme Court. Neither of these strikes the
imagination, or demands a verdict in favor of inventive
genius, to such an extent as does the application in
the case at bar of electrical principles already philo-
sophically known.
The corollary of this proposition, which we will
apply later, is that, in cases of this character, where
the originator has boldly struck out into a practical
application, and stated it, though only in general
terms, he has, for the most part, made his conception
clear even though the mechanical details have not
been expressed or thought out. The Telephone Cases,
126 U. S. Therefore, Professor Main was right in
6
testifying to the effect, that if Tesla made clear his con-
ception in a general way, he made clear his invention,
leaving the artisan skilled in electrical science to work
out the practical details required in applying what was
previously within the bounds of philosophical knowl-
edge. The importance of this last proposition will
become more clear when we take up the testimony
offered by the complainant to show that Tesla antici-
pated Ferraris.
It must be admitted that Ferraris, in the publica-
tion of April 22, 1888, disclosed alternating currents
transformed by derivation, so called, and, also, by in-
duction. Tesla's conception was in this respect at
least as broad as Ferraris's. Nevertheless, he pro-
ceeded in a singularly fragmentary way. As the re-
sult of an application filed on May 15, 1888, which
was subsequently divided, he secured two patents, one
No. 511,915, issued on January 2, 1894, and one No.
555,190, issued on February 25, 1896. No. 511,915
we need not further trouble ourselves about. No.
555,190 claims the combination which represents the
alleged invention of Tesla as practiced by the method
of induction. We may observe that, although both
of these patents were applied for before the patents in
suit, yet they issued after them, and it is not claimed
that those in suit are invalidated by them. We have
no occasion to enlarge on this proposition. There is
no claim that the respondent uses the method by in-
duction. On the other hand, it is conceded that, if it
infringes, it is by the derivative method. Therefore,
patent No. 555,190 comes in here on the part of the
complainant solely for establishing certain dates to
which we will hereafter refer, and on the part of the
respondent as leading up to the proposition to which
we will again refer, that Tesla's original conception
was limited to the inductive method, and that his
broadening out so as to cover the derivative method
did not precede the filing of the application of May 15,
1888.
It may be plausibly maintained that the first claim
of No. 511,559 should be construed to cover Tesla's
r-r
/
broad invention. The second claim covers only the
method by derivation. The self-induction spoken of
in it means, of course, the peculiar results which come
from inserting a coil in an electric conductor, in con-
sequence of the various portions of the coil reacting
on each other, and thus delaying the current without
necessarily diminishing its ultimate force. No.
511,560 must be construed broadly to cover Tesla's
entire conception, except that it is limited by the word
connected to the method by derivation, or self-induc-
tion. We must refer to this topic again.
The patents now in issue were sustained by Judge
THOMPSON in the Circuit Court for the Southern Dis-
trict of Ohio in Westinghouse Company v. Dayton
Company, in an opinion passed down on February 6,
1901, reported in 106 Fed. Rep. 724. Judge THOMP-
SON was affirmed on appeal by the Circuit Court of
Appeals for the Sixth Circuit, in an opinion passed
down on November 15, 1902, and reported in 118 Fed.
Rep. 562. This opinion was rendered by Judges LUR-
TON, DAY and SEVERENs, all judges of high repute. The
relations of the Ferraris anticipation to this decision
we will explain further on. The patents were also
sustained by Judge LACOMBE in Westinghouse Company
v. Catskill Company, in an opinion passed down on
August 22, 1901, and reported in 110 Fed. Rep. 377.
This was reversed on appeal by the Circuit Court of
Appeals by an opinion passed down on February 25,
1903, reported in 121 Fed. Rep. 831. This opinion
was unanimously concurred in by three judges, also
of high reputation, WALLACE, TOWNSEND and COXE. It
rested wholly on the Ferraris anticipation. The
proofs are claimed to have been substantially the
same as in the case at bar, but wé will show hereafter
that at least one very important fact was not formally
in the case, and, therefore, was not thoroughly con-
sidered. Afterwards, in the same circuit, in the West-
ern District of New York, in Westinghouse Company
v. Mutual Life Insurance Company, by an opinion of
February 9, 1904, reported 129 Fed. Rep. 213, Judge
HAZEL reviewed the proofs which were before the
S
Circuit Court of Appeals for the Second Circuit,
in connection with the testimony of Tesla himself,
reached a conclusion overruling the Ferraris de-
fence, and sustained the patents. In the Eastern
District of Pennsylvania, in Westinghouse Company
v. Roberts, in an opinion passed down on Septem-
ber 10, 1903, reported in 125 Fed. Rep. 6, Judge
ARCHBALD reached the same conclusion as reached
by . Judge HAZEL. The proofs in behalf of the
complainant had been strengthened by a reference
to the interference proceedings between Tesla and
Ferraris, and, also, apparently, by the testimony
of Tesla. In the Northern District of Illinois in West-
inghouse Company v. The Alectrical Appliance Com-
pany, by an opinion passed down on March 26, 1904,
reported in Fed. Rep. , Judge KOHLSAAT sus-
tained the patents, following Judge ARCHBALD and
Judge HAZEL. Judge KOHLSAAT did not make clear
what evidence he considered, and he merely said that
the difficulty which the Circuit Court of Appeals for
the Second Circuit found had been overcome. Also,
in the Western District of Pennsylvania, in Westing-
house Company v. Jefferson Company, by an opinion
passed down on March 28, 1904, 128 Fed. Rep. 751,
Judge BUFFINGTON stated that infringement was con-
ceded, and that the difficulties which the Circuit Court
of Appeals for the Second Circuit found had been suc-
cessfully met. He granted an ad interim injunction.
The result is that, as the decisions now stand, a Cir-
cuit Court to which an application might be made for
an ad interim injunction against an alleged infringer of
the patents now in issue, would perhaps refuse it in
all the districts in the Second Circuit except the West-
ern District of New York, but would grant it in the
last named district, and also in the Third, Sixth and
Seventh Circuits ; while elsewhere the question would
probably need to be litigated as litigated before us. On
several occasions we have explained our disposition to
follow the decisions of the Circuit Court of Appeals in
other circuits, recognizing them as carrying practically
the same weight as our own. We have especially
9
shown the propriety of this with regard to decisions
touching Letters Patent for inventions in Beach v.
Hobbs, 92 Fed. Rep. 146, 147, and Hatch Storage Bat-
tery Company v. Electric Company, 100 Fed. Rep. 975,
976. The Supreme Court laid down a like practical
rule in Hobbs v. Beach, 180 U. S. 383,388, 389. In the
present case, however, while the Circuit Court might
well have felt constrained to follow the result in the
Circuit Court of Appeals for the Second Circuit, the
body of prior judicial decisions is of such an inhar-
monious character that we may well make an inde-
pendent investigation, based on the evidence before us.
Yet, of course, our judicial foresight will not enable us
to determine whether by so doing we will clarify the
condition or increase the confusion.
Inasmuch, however, as we must examine the prior
decisions to a certain extent in reaching whatever con-
clusions we may reach, it is necessary that we should
point out the principles which should guide us in doing
so. How are the cases to be brought together for
this purpose 2 An answer based on necessary rules of
procedure seems clear. It is essential that the facts
brought out in the earlier litigation should be proved
in the pending cause independently and according to
the ordinary rules of evidence, and that, thereupon,
the court in the pending cause should advise itself as
best it may of what appeared to the courts making the
prior decisions, from the opinions rendered by them,
or from an informal ascertainment otherwise of what
was laid before them. As this ascertainment is merely
to inform the conscience of the court in the pending
cause, and to enable it to follow the lines of reasoning
and the conclusions of the tribunals rendering the
earlier decisions, it involves only a gathering of the
history thereof from any reliable source. This may be
done by the informal production of the records in the
earlier cases, as well as by a perusal of the opinions of
the courts. The court in the pending suit may accept
the statements of counsel so far as they are not con-
troverted, or, if controverted, so far as the court can,
by informal methods, satisfy itself in regard thereto.
10
In these ways we have discovered that the proofs on
which the Circuit Court of Appeals for the Second
Circuit proceeded, were substantially the same as those
in the record before us, with the exceptions we will
discuss, including the fact that the only reference by
that court to the application of May 15, 1888, was in-
cidental. It is true that it twice referred to this ap-
plication and Mr. Page's testimony concerning it ; but
we use the word incidental because neither the ap-
plication nor the patent on which it issued was for-
mally put in evidence, and apparently they were not
pressed on the court so carefully as they have been
on us. In one other respect the proofs essentially
differ, and that is in the omission here of the facts
in regard to the relations of Tesla to the Mather
Electrical Company, proved, as we understand, by
the testimony of a witness by the name of An-
thony. The Circuit Court of Appeals for the Sec-
'ond Circuit evidently gave great weight to this
testimony. It is not before us, and how it would
have appeared after being tested a second time it is
impossible to estimate. Especially in view of the
decisions of other courts to which we have referred,
there is enough in the two facts, first, that the appli-
cation of May 15 was not under close consideration
by the Circuit Court of Appeals in the Second Circuit
as we have been compelled to consider it, and, second,
that we have not the proofs in regard to the Mather
Electrical Company, to compel us to give this case an
independent investigation. -
We must next consider the nature and amount of
the proofs which the complainant was required to give
to meet the alleged Ferraris anticipation. Smith &
Griggs v. Sprague, 123 U. S. 249, 264, laid down the
rule that, where a prior use for more than two years
is set up in defence, and where this defence is met only
by an allegation that the prior use was not a public
use in the sense of the statute, proof on the part of the
patentee in reference thereto “should be full, un-
equivocal and convincing ”. Sometimes the Supreme
Court has used the expression “beyond reasonable
11
doubt ". In Clark Thread Company v. Willimantic
Jänen Company, 140 U. S. 481, 492, where the ques-
tion was exactly that which we have before us, namely,
dating back the invention prior to a publication ante-
rior to the application for the patent in suit, it was
ruled that it was incumbent on the patentee to show
to the satisfaction of the court that the invention had
priority. The more forceful language has been uni-
formly applied by the Supreme Court wherever an
alleged infringer undertook to prove by oral proofs
prior public use or prior invention. Thus that court
to that extent gives to a patentee the practical benefit
of the presumption arising from the grant of his patent.
The more stringent expression is exceptional in civil
cases; and, if applied to a patentee who must meet an
alleged anticipation by publication, it would be a very
hard one when many years have elapsed. Publication
stands always, and proves itself. Litera Scripta manet.
In case of a judicial issue made early after the grant-
ing of a patent, the patentee might have abundant
oral proofs, or proofs partly oral and partly by draw-
ings and models, which would easily meet the alleged
anticipation, but which would ordinarily become
clouded, or to a large extent lost, when the issue is
made after many years. Therefore, when we touched
on this topic in Brooks v. Sacks, 81 Fed. Rep. 403,
405, where there was a question, nevertheless, between
two patentees, each of them having the favorable
presumption which arose from the grant of his patent,
we said, at page 407, that the complainant had come
far short of proving his prior right “satisfactorily as
required by the authorities". Even there we did not
go any further than to use that milder form of ex-
pression ; and we do not think that we are now re-
quired to go beyond the expression in Clark Thread
Company v. Willimantic Länen Company, to the effect
that the alleged anticipation must be met by proofs
which satisfy the court.
In Brooks v. Sacks, we made it evident that unsup-
ported recollection with reference to events occurring
many years prior would ordinarily be regarded as in-
12
sufficient for the purposes we are now considering. In
the present record, however, we have one fact of an
indubitable character to which the testimony of one
witness, Mr. Page, can be anchored beyond doubt so
far as concerns one crucial date. . We mean the patent
issued on the application of May 15, 1888, to which we
have already referred.
The claim is made that we should reject the testi-
mony offered by the respondent on the issue of antici-
pation, On the ground that it was within its power to
have strengthened it. Among other things in this
direction, the omission to call Tesla is relied on ; also
the omission by Mr. Page to investigate and produce
the account books of the legal partnership in which he
was a member, bearing out certain entries on his diary
to which we will refer ; also, the omission to prove by
independent witnesses certain journeys and confer-
ences testified to by Mr. Page as having occurred
during the summer and early autumn of 1888, which
journeys and conferences he said had relation to the
preparation of the applications on which the patents
in suit issued. The facts about these journeys and
consultations, even if supported by definite inde-
pendent proofs to a demonstration, would not affect the
substance of Mr. Page's testimony, because they
were brought out with reference to the delay which
ensued between the alleged time when 'Tesla first ex-
plained his invention to Mr. Page, in April, 1888, and
the date of the filing of the applications for the patents
in suit, December 8, 1888. It is true that, if definitely
proven in a hostile direction, they might impugn Mr.
Page's veracity or general accuracy of meruory; but
no real attempt of this nature has been made. It is
not claimed anywhere that Mr. Page does not stand at
least as an honest witness, or that his memory is
peculiar or exceptional one way or the other. The
attack on the complainant's case in reference to the
Ferraris publication does not truly rest on any peculi-
arity of this kind, but on the general rules stated by us
in Brooks v. Sacks. Therefore, the only weight which
the delay in filing the applications for the patents in
I3
issue could carry in favor of the respondent, if any,
would come from the mere fact of delay. The experi-
mental state of the art at the time in question, and the
legal questions involved in drawing specifications and
claims where the art is new, or progressive, or compli-
cated, would well account for the intervening period
between April and December ; and in any view, and
under any circumstances, impressions based on delays
on the part of busy lawyers or of hard pressed courts
count for little against positive evidence. It is true
that Mr. Page testifies that, during the intervening
period, he was making investigations ; but this is
easily reconciled with his positive statement that he
fully understood the invention, because, in the then
existing state of the art, and the then supposed im-
portance of the patents, a careful solicitor would have
made every possible preparation for drawing these
specifications and claims.
With reference to the apparent lack of supporting
proofs on the part of the complainant to which we have
referred, and which has been very much pressed
against it; the position of the complainant is a hard
one. It is stated by Mr. Page that he testified on an
interference in the Patent Office between Ferraris and
Tesla. This must, of course, have been before the
patents in suit issued, resulting favorably to them. It
also appears by the decisions of the various courts
with regard to Tesla's patents, that from the time of
the issue of the patents now in suit, in December,
1893, until the decision of the Circuit Court of Ap-
peals for the Second Circuit, according to the opinion
passed down on February 25, 1903, a period of nearly
ten years, they had prevailed in whatever litigation
they had been subjected to. The very question of
anticipation which we are considering, submitted on
proofs all of which, so far as favorable to the com-
plainant, are before us, was, after apparently a thor-
ough and careful examination, decided in favor of the
complainant by Judge LACOMBE in the opinion passed
down on August 22, 1901. The same defence was
abandoned after proofs were taken in the case in the
14
Sixth Circuit which terminated in the opinion filed on
November 5, 1902. It is true that the respondent says
the Ferraris publication was neither in issue nor in
evidence in the Sixth Circuit. Judge LACOMBE, how-
ever, says the evidence was taken there, but that the
point was not argued, thereby implying that it was
abandoned, as we have said. Therefore, under the
circumstance of submitting the present case to the
Circuit Court at a date following litigation which had
resulted favorably to the complaimant, but preceding
the adverse decision of the Circuit Court of Appeals
for the Second Circuit, it is not singular that the com-
plainant was led to the belief that it might rest se-
curely on the proofs previously produced ; and it
affords no reasonable presumption against it that it
did so rest, or that it did not strengthen its case in the
way in which the respondent claims it might have
done.
Inasmuch as the respondent did not make specific
and clear objections at the time when it should have
made them, if it intended to rely thereon, we give no
weight to the general objection interposed at the close
of Mr. Page's testimony in the following language :
“Testimony objected to, in whole and in part,
as incompetent and insufficient on the issue of
priority of invention.”
In no view of the rules relating to objections with
reference to testimony produced in Federal courts, can
one so sweeping as this have effect, unless it is appar-
ent that the facts intended to be proved, in whatever
form produced, could have no weight. The reason for
this will be illustrated as we examine the specific
propositions in regard to Mr. Page's testimony which
are brought to our attention by the respondent, and
which this general objection may possibly have had
somewhat in contemplation. One was as follows: We
are pressed with the fact that, instead of stating what
Tesla said to him, or the substance of it, thus giv-
ing details from which the court could draw its own
inference whether or not Tesla's exposition was a suffi-
15
cient one, Mr. Page testified as follows: “Mr. Tesla
also described to me the plan of operating these motors,”
etc. Again he testified : “Mr. Tesla thereupon dis-
closed to me his scheme for Operating the motors,” etc.
Undoubtedly, according to the rules of the common
law with reference to the production of evidence, under
which some are restless because they seem to them too
strict, but which, nevertheless, are just because
adapted to elucidate the facts, and to separate them
from mere theory or speculation, this method of testi-
fying would not be admissible. Mr. Page should have
been asked what Mr. Tesla said to him. If he could
not remember that exactly, then what was the sub-
stance of what he said. Yet, if the respondent had
desired to control the method of testifying according
to those rules, it should have interposed specific objec-
tions at the proper times. wº
So, also, with regard to a diary entry of April 18,
1888, testified to by Mr. Page as covering a charge for
services in the matter of the invention in issue, thus
absolutely preceding the Ferraris publication ; it is
true that, according to the proper rules of testifying,
he should have stated, so far as he could remember,
the precise words that appeared on his diary, or, fail-
ing that, the substance of them. But, as no season-
able proper objection on this point was made by the
respondent, it stands precisely as the testimony of Mr.
Page concerning Tesla's disclosure. Under the cir-
cumstances, we would do injustice, and would co-oper-
ate with the respondent in depriving the complainant
of substantial rights by reason of its being lulled into
this peculiar method of questioning of this important
witness, unless we assume that, on an examination of
him in accordance with the proper rules of educing
evidence, the substance of his testimony would not
have been changed. Of course, we cannot assume
this. No substantial attempt was made to impugn Mr.
Page on cross examination, or by contradictory
proofs. Therefore, so far as he has testified positively,
we must accept his evidence, notwithstanding the un-
satisfactory form in which it appears, subject Only to
16
the general safeguards required in Brooks v. Sacks, 81
Fed. Rep. 403, 405, 406, 407, already stated. Conse-
quently, we have only two questions here: Are there
any such safeguards in the record, and did Tesla dis-
close such a conception as the rules of law require
should be disclosed in order to anticipate the Ferraris
publication ?
As to the first proposition, we have, as we have al-
ready said, the positive date fixed by the application
of May 15, 1888. This not only proves what occurred
on that specific day, but it carries with it all the rea-
sonable probabilities which give effect to Mr. Page's
evidence as to connected or related events. The pat-
ent applied for on May 15 leaves no doubt that, on or
before that date, Mr. Page had been advised by Tesla
fully of the method by induction, and so fully as to
meet any possible criticism. . Of course, the respond-
ent at once suggests that which naturally suggests
itself to everyone, the failure to include the entire con.
ception. The fact that in that application nothing was
said about the method of derivation, or self-induction,
creates an impression against Tesla. This impression,
however, is met by the positive testimony of Mr. Page,
that, when Tesla first described to him his scheme cov-
ered by the application of May 15, he also described
the plan of operating motors which involves the split-
ting of a circuit into two branches of different elec-
trical characters. This can mean nothing except the
method by derivation, or self-induction. Therefore, as
against this adverse impression, and every adverse im-
pression, so long as they rest on mere probabilities, we
have the direct, uncontradicted testimony of Mr. Page,
which should ordinarily prevail. The date of May 15
is established beyond doubt ; so that, under the cir-
cumstances we have stated, we can reject neither the
date nor the substance of what was said. In other
words, to use the language of the decisions to which we
have referred, and to describe the state of our own in-
tellectual condition, we are satisfied, we may say be-
yond a reasonable doubt, that the whole substance of
the entire subject matter of the two patents in issue
17
was disclosed by Tesla to Mr. Page as early at least as
May 15, 1888.
Mr. Page drew the application of that date ; and,
looking at all the circumstances, to any one cognizamt of
the preparation which a solicitor would naturally ap-
ply to that particular work, it would seem in
accordance with the probabilities that the disclosure
made by Tesla on which the application was based, was
a matter at least of weeks prior thereto. It might well
be presumed of months. Therefore, the reasonable
probabilities support any statement by Mr. Page that
this disclosure was made at least as early as the date
he names, April 18. Consequently, we have a date
which he claims to fix by his diary, April 18, with the
reasonable probabilities in its favor. Agreeing, as we
have shown that we must agree, that Tesla disclosed to
Mr. Page his entire invention at the same time he dis-
closed it so far as it related to the method by induc-
tion, it would be almost contrary to good sense to
maintain, against even the slightest degree of proof
otherwise, that the disclosure by Tesla did not ante-
date the Ferraris publication, the gap being only
twenty-three days. Therefore, in view of the fact that
we have a positive date, May 15, which cannot be con-
troverted, and an alleged date, shown by Mr. Page's
diary, of April 18, which he directly connects with this
particular topic, the presumptions are so strong in
favor of a date at least as early as April 18, that, in the
absence of any weighty contradiction Mr. Page's state-
ment in reference there to must certainly stand.
We must, also, bear in mind that Mr. Page's testi-
mony is not properly within the spirit of the charac-
terization which has been given it, to the effect that it
related to events which occurred twelve years before,
accompanied with the statement that the only means
which the witness had for refreshing his recollection
was a diary which had been lost. On the other hand,
the witness testified that he refreshed his recollection
from his own evidence given on previous occasions, the
first of which was with the diary in his hand on the in-
terference in the Patent Office between Ferraris and
1S
Tesla. That testimony, according to the practice of
the Patent Office, was carefully preserved, and might
well have been accepted by Mr. Page at any subse-
quent date as stating correctly all the facts as they
stood in his memory when it was presumably clear in
reference to them. Also, he testified in the case de-
cided by Judge THOMPSON, heretofore referred to, and
again in the case decided by Judge LACOMBE. There-
fore, his evidence is subject to the observation which
we made in regard to the testimony of Mr. Cox in
Brooks v. Sacks, 81 Fed. Rep., 403, 406. As to that
we said that, as his account of the facts was continu-
ous from the time he first saw the device in question,
and, as he had an interest in the matter from that
time, his testimony would be very convincing, provided
there was anything by which it could be ascertained
from collateral events that he had not confused the
dates. This condition is met here with reference to
Mr. Page's testimony, as we have shown.
In addition to all the above, there is a certain at-
mosphere of probabilities in support of Tesla's inven-
tion which materially strengthens the complainant's
case, and supports it throughout. Here was an inven-
tion which, if it was an invention, was of such a char-
acter that, not withstanding the parties are at issue in
regard to the extent of its practical value, it promised,
and accomplished, great pecuniary advantage. Yet it
must be conceded, as is apparent from the general tone
of the whole record, and from the way in which the
case has been developed before us, that the patent was
long acquiesced in. It is also certain from the testi-
mony in the case that an interference was declared be-
tween Ferraris and Tesla, and decided in favor of the
latter. While, of course, such decisions are not
formally operative as between other parties, as we have
shown in Wilson v. Consolidated Store Service Com-
pany, 88 Fed. Rep., 286, especially when, as in the
present case, courts are not advised what the nature of
the contest was, or even whether it was a real one, yet
such issues, when determined, necessarily contribute,
with other adjudications, to make up the body of ex-
19
pert and legal opinion which goes to show that the
patent has been approved or acquiesced in by those
who understand its relations to the art. Although such
general judgment cannot be measured by the law, yet
it must be conceded that it has its weight, especially
with regard to the state of the art at a period some
years remote. In some cases, after a long lapse of
time, it is the most reliable test in reference thereto ;
and, in any event, it affords material support to the
patentee on issues of fact of the kind at bar, relating
to occurrences as to which so many years have
gone by. In the present case, there is sufficient
of this to balance all the mere probabilities in favor
of respondent to which we have referred, and to give
support to the evidence of Mr. Page ; so that, taken all
in all, we are secure in accepting the latter as stating
the substantial truth of the situation.
The respondent insists that, conceding that Mr.
Page is correct in his dates, and that Tesla disclosed
to him all he says he disclosed, yet it was not a suffi-
cient disclosure under the rules of law. The opinion
of the Circuit Court of Appeals in the Second Circuit
seems to tend in the same direction, although, from
the standpoint of that court, it was not necessary that
it should carefully consider this proposition. We
have made no reference to Mr. Brown's testimony be-
cause, under the rules of Brooks v. Sacks, and in view
of some statements which Mr. Page says Tesla made
to him, it may be that Mr. Brown did mistake the
dates. But, referring both to Mr. Brown's testimony
and Mr. Page's, the respondent claims, in effect, that
Tesla's disclosure was unavailing unless made so con-
crete and specific, and with such particularity in detail,
that it might be studied and understood, and, if de-
sired, reproduced and tested. The respondent, also,
observes that Tesla did not describe any specific struc-
ture or specific result, and did not negative very clearly
that he had got beyond a wholly experimental stage.
The language of the Circuit Court of Appeals for the
Second Circuit is substantially to the same effect,
20
namely, that all which Mr. Page learned from Tesla
was the general features of the invention involved at
bar. It meets all this to a demonstration to say, in
view of the nature of the Ferraris publication, that his
disclosure, also, was academic if Tesla's was. But the
nature of Tesla's broad invention, as we have explained,
to the effect that it consisted in the conception of
making practical use of a single current, and that the
rest concerned merely working that out by well-known
and equivalent methods, was such that when he dis-
closed that conception he made a complete disclosure.
Moreover, we have shown that, in the way in which the
respondent was satisfied to leave Page's testimony, we
must accept his statement on this topic exactly as he
made it. This was to the effect that Tesla described
to him, and that he understood fully from his descrip-
tion, the practical and essential features of the inven-
tion involved in the patents in suit, and that Tesla also
described to him the particular method of operating
motors by derivation.
A broader view might be taken of this topic. Un-
doubtedly, the application filed on May 15, 1888, to
which we have fully referred, clearly made known
Tesla's single circuit operated by the method of in-
duction. It is almost incredible that Mr. Page could
have prepared this application without a disclosure
necessary therefor having been made to him several
weeks before it was filed, and, therefore, as we have
said, almost against common sense to dispute a date
not earlier than April 18. So far, the path seems en-
tirely clear. Both parties, as we have shown, have
stated emphatically that the method by induction and
the method by derivation, or self-induction, were, at
that time, well-known equivalents. If Tesla had rested
on the patent issued on the application of May 15, it
would seem, therefore, according to well-known rules,
that the respondent would infringe by using the method
by derivation, or self-induction. If, therefore, the
patents in suit had not been taken out, the defences of
anticipation and non-infringement, so far as infringe-
21
ment relates to the method by derivation, would fail.
In view, however, of the fragmentary method of taking
out the Tesla patents to which we have referred, and
in view of the possibility that Tesla and his assignees
may thus have estopped themselves from adopting
this simple line of maintaining their positions, we
have felt it safer to examine Page's testimony as we
have, and to state our conclusions therefrom. In
either view, we must express ourselves entirely satisfied
that whatever was disclosed by the patents in suit
covers patentable invention and anticipated Ferraris.
This leaves us only the question of infringement.
It was stated at bar that the original infringing ma-
chine was manufactured under a patent to Otto Titus
Dlathy, No. 423,210, issued on March 11, 1890, and that
it is marked as manufactured under that patent, and
was made in accordance there with. It is, therefore, safe
to refer to that patent, for a statement of its substantial
elements and operative principles. It is entitled “Elec-
tric Meter for Alternating Currents.” Subject to the sin-
gle topic which we will discuss hereafter, it does not
seem to be denied that the respondent uses what dis-
tinguishes the patents in suit from the Tesla poly-
phase patents issued on May 1, 1888. The proposi-
tion of the defence seems to be that the patents
in suit involve a combination with the motors de-
scribed in the earlier patents. It seems impracticable
for the respondent to take any other position. The
specification of the Blathy patent describes his inven-
tion as follows :
“This meter, essentially, consists of a metallic
rotating body (such as a disk or cylinder, for
instance) which is acted upon by two magnetic
fields or two groups of fields displaced in phase
from one another. The said displacement of
phases results from the fact that a field on one
group of fields is produced by the main current,
while the other field or group of fields is excited
by a coil of great self-induction shunted from
those points of the circuit between which the
energy consumed is to be measured.”
22
Compare this with the claim of patent No. 511,560,
in suit, already quoted by us, as follows :
“ 1. The combination with a source of alter-
nating currents, and a circuit from the same, of
a motor having independent energizing circuits
connected with said circuit, and means for rend-
ing the magnetic effects due to said energizing
circuits of different phase, and an armature
within the influence of said energizing circuits.”
Inasmuch as the extract we have made from the
Blathy patent shows the method by self-induction, ad-
mittedly the equivalent of that by derivation, and, in-
asmuch as, in view of the word connected in the claim
quoted from patent No. 511,560, the latter may well
be held to be limited to the same method, as we have
already said, that claim and our extract from Blathy
literally read into each other if a motor is supplied to
the latter. This is done by Blathy's claims, each of
which contain the element of a counting apparatus op-
erated by the rotating body described by him.
But a distinction is attempted between Blathy and
the infringing device in accordance with what further
appears in his specification, following what we have
already quoted, thus :
“The magnetic fields, however, do not cross
one another within the solid of revolution, as in
the well-known arrangement of Ferraris, but
pass the different parts of the same independent
from one another.”
In view of the fact of the parallelism between the
description of the Blathy invention shown by the ex-
tract which we first made from his specification, and of
the further fact that the respondent attempts no dis-
tinction except in the direction thus afterwards par-
ticularized, it becomes necessary for the respondent,
in order to escape the charge of infringement so far as
this topic is concerned, to maintain two propositions:
first, that the so-called Tesla motors are necessarily
involved in the patents of May 1, 1888, and, second,
23
that the invention covered by the patents in suit, as
expressed in the claims of those patents, make such
Tesla motors an essential element. If the respondent
fails to maintain either one of these propositions, it is
apparent that the defence of infringement, so far as
this topic is concerned, fails.
The first patent of the series to which those now in
suit relate is No. 555,190, issued to Tesla on the appli-
cation filed on May 15, 1888, to which we have several
times referred. It is sufficient as to that to say that,
while possibly the words “as set forth '' in each claim
might be construed to refer to the vairious drawings
which exhibit the Tesla motors, yet this is not a just
construction in view of the breadth of the conception
shown in that part of the specification wherein Tesla
stated that he was “the first to produce any kind of a
motor adapted to be operated by alternating currents,
and characterized by any arrangement of independent
circuits brought into inductive relation so as to pro-
duce a rotary effort or effect, due to the conjoint action
of alternating currents”, “ and this without reference
to the specific character or arrangement of the currents
in the motor ’’. Clearly, this phraseology has no rela-
tion to any particular form of motor. The words “as
set forth '' in the claims may grammatically refer to
anything which precedes them. Therefore, in view of
the just and liberal rules of construction stated in
Reece Button-Hole Co. v. Globe Button-Ilole Co., 61
Fed. Rep., 958, they should not be held as restrictive,
or as limiting anything in the claims, so as to render
ineffectual any part of the conception involved in the
portion of the specification which we have quoted.
Coming now more particularly to the patents now in
issue, the first claim of No. 511,560 contains in its letter
no reference to any particular motor ; and thus the
letter of the claim corresponds with the sense of the
invention. Tesla was the first to use for practical
purposes, with reference to any kind of a motor, what
is called in this case the “split-phase ’’, or a single
current from the generator producing two energiz-
ing currents on the methods of derivation or
24
induction. This novel feature is, of course,
equally applicable to Baily or Blathy, or to
any other person using two emergizing alternating
circuits, without regard to the peculiarity of the motor
in other respects’; and we repeat that the sense of the
invention is equally broad. It is true that the specifi-
cation mentions Tesla's system of electrical power
transmission, but it contains no expression which
would justify any court in limiting the clear language
of this claim, fully capable of supporting itself, except
so far as it uses the word connected, which may well
limit it to the method by derivation, as we have already
said. Therefore, in order to maintain the proposition
that the invention as set forth in Claim 1 of this pat-
ent is as broad as the natural sense of the language
declares it to be, it is not even necessary to refer to
the just rules of construction given in Reece Button-
Hole Co. et al. v. Globe Button-Hole Co. ubº supra. It
is asking altogether too much of a court of law to
demand of it that it should inject into this claim
words which it does not contain for the purpose of
limiting it as the respondent seeks to do.
An elaborate discussion of the patents issued to
Tesla on May 1, 1888, is not necessary. It is necessary
to examine them, but only so far as they show the
state of the art ; and in this respect, for the purposes
of the patents in suit, the Baily publication and all
the other references of the respondent are equally a part
of the state of the art at the time those patents origi-
nated. We are to consider the invention in issue at
bar as though it were made by somebody other than
Tesla, having knowledge of the state of the art in ref-
erence to putting into a motor currents of different
phases. The complainant defines it with sufficient
accuracy for all present purposes when it maintains
thus:
“This invention, stated in its simplest form,
was based upon the conception that, instead of
employing two independent sources of current
and two transmission circuits between such
source and the motor, one might employ but a
single source, and a single circuit leading to the
25
motor ; at the latter, divide the circuit into two
paths, and, by artificial means, retard the cur-
rent in one of those paths to a greater extent
than, the other”. “No useful application of
the principle of artificial retarding alternate
currents had ever been proposed until Tesla
conceived the possibility of operating a two-
phased motor from a single circuit, turned the
principle to a useful account, and demonstrated
that the retardation, so fatal to the successful
operation of the ordinary alternating current
systems, was the keystone of success in a great
engineering problem. ” •
It is not necessary for us to discuss whether what
Tesla applied his inventive ability to was a “great
engineering problem ", as described by plaintiff; but
it v, as a problem practically unsolved in the then state
of the art, and of such a character that its solution
was certainly a useful one. Therefore, the invention,
according to settled rules, is to be protected to its
fullest extent unless something of a positive character,
either in the patent itself or elsewhere, prevents. It
is true that Tesla's specification indicates strongly
that he probably had not in mind the application of
his invention to any motors except his own. Possibly
he valued no other two-phased alternating current mo-
tors, or he conceived that there were no others ; so
that naturally the practical application which he had
in mind was limited accordingly. Nevertheless, he is
entitled to the advantage of the well-settled rule by
virtue of which an inventor who has patented his in-
vention, is entitled to all the uses to which it may be
applied, of the class to which he himself practically
applied it. Therefore, we do not perceive how, on
any rule relating to the fundamental nature of invent-
ive conceptions, or to the construction and effect to
be given to the specifications and claims in patents for
invention, it can be held that the respondent can
escape, for any reason we are now discussing, the
charge of infringement.
Our observations so far have been more particularly
with reference to the phraseology of the only claim of
26
patent No. 511,560 in issue. The claims of patent No.
511,559, so far as the topic we are discussing is con-
cerned, are as broad as the single claim of patent No.
511,560. It is true they contain the words “as herein
set forth '', which are not found in the other patent ;
but these words connect directly with the words “in-
dependent energizing circuits '' ; and they do not mec-
essarily relate, either grammatically or by any reason-
, able demands of the rules of construction, to any
particular description of motors. Therefore, within
the rules stated in ſeeece Button-Hole Co. v. Globe But-
tom-Hole Co., ubi supra, by virtue of which all expres-
sions in specifications or claims are to be held to sus-
tain the actual invention so far as they can reasonably
be so construed, this one does not stand in the way of
Our giving, so far as the topic we are discussing is
concered, as broad a construction to patent No. 511,–
559 as to the claim of patent No. 511,560 in issue.
The difficulty which presses itself upon us on the
question of infringement, grows out of the fact that the
amount of power used by the respondent is approxi-
mately what is described by it as negligible ; that is
very minute. Nevertheless, it is power developed, as
set out by Blathy's claims, by “a metallic rotating
body ", and transmitted to a “suitable counting ap-
paratus, operated '' by the same rotating body. If
the device stopped with “a metallic rotating body",
and some method other than a counting machine
operated by it was used for determining the number
of its revolutions, we might not be able to charge the
respondent with infringing. We might then well
apply the proposition of the respondent that a mere
meter is in a different art from a motor ; but, as it
does not stop there, we must look further.
The Tesla invention in issue, as already explained
by us, derives its right to recognition from the fact
that it was applied to the production of power. In
that respect, it falls within the limited class referred
to or described by us in Davey Co. v. ſsaac Prouty (£
Co., 107 Fed. Rep. 505, 509, 510, 511. The adaptation
of the tortional spring which laid the basis of Western
27
Flectric Company v. Larue, 139 U. S. 601, was a
marked instance of this class of cases. The ingenuity
of Tesla was displayed in the conception of an adapta-
tion to a particular use ; and any adaptation which
did not involve that conception could hardly infringe.
Therefore, as it may well be that, if the counting
mechanism was of a kind not operated by the “metallic
rotating body "we should not be compelled to find
infringement, we hesitate in view of the minute amount
of energy exerted. But Blathy did not merely re-
produce the academic experiments which must have
preceded Tesla. While Tesla uses the word power,
he makes no maximum nor minimum ; and it is en-
tirely conceivable that, for certain fine work, or work
of a peculiar character, the minimum may be of the
utmost value. Therefor, we are unable to make any
distinction on this account.
Probably we ought to refer to what is spoken of by
the parties as Baily and Deprez. We apprehend that
Deprez is disclosed by what is known as “Deprez
French Patent of 1879", and that Baily is represented
by the article in the PhilSophical Magazine-of October,
1879. These are each relied on by the respondent.
Baily was seeking simply a revolving disk, and not
looking beyond that. He did not attempt to transmit
that electrical power which, as we have shown, was
the soul of Tesla's invention, and which we have also
shown is involved in the infringing device, although,
perhaps, to a minimum. It is apparent, also, that
Baily did not concern himself about alternating cur-
rents as such ; and it is not at all clear that he pro-
posed to make use of them at all. Deprez, on the
other hand, made commutators necessary elements in
his device, which essentially distinguishes him from
both the complainant and respondent, and lays him out
of the case without the necessity of further discussion.
Possibly, relating to some other infringers than
those at bar, we might be compelled to determine
more positively than we have the construction of some
of the claims which are put in issue here, pertaining
to the two patents in Suit. For the present case, how-
2S
ever, any further investigation or discussion relating to
them would be purely academic and of no practical
importance. The infringement by the respondent
relates entirely to the method by derivation, or self-
induction, which for present purposes, are the same ;
and, so far as that is concerned, it can make no pos-
sible difference as to practical results whether the
injunction and accounting relate to all the claims in
issue or only to one or two of them. Therefore, in
view of the construction which we are now inclined
to give the claims, as already stated, we hold that
the relief granted should relate to all. a * *
We wish to call attention to the fact that, at various
points, the respondent has referred to the affidavits
filed in connection with the motion to the Circuit
Court to reopen the case, as though they were adverse
to the complainant, and, especially, as though con-
tradicting, in one important particular, the testimony
of Mr. Page. On the other hand, at some points, the
complaimant has undertaken to strengthen its case by
reference to the same affidavits. We reject all these,
and open the record only so far as it is properly be-
fore us. To do otherwise would be to enter on a field
which has not been explored by the parties according
to proper rules of procedure.
The decree of the Circuit Court is reversed; the
case is remanded to that court, with instructions to enter
a decree in favor of the complainant for an injunction
and an accounting, and to take Such further proceedings
as may be required not inconsistent with this opinion ;
and the appellant recovers the costs of this appeal.
A true copy.
Attest :
JOHN G. STETSON,
[SEAL | Clerk.
[25882].
2.23 A. C. Morons.—A.
, Tº 381,968, ET AL.
5 & . -
W 3× No. 7.
Opinion—Circuit Court.
Tesla Polyphase System.
(Patents Nos. 381,968-381,969-382,280-382,281).
Westinghouse Electric and Manufacturing Company,
sº
* Complainant,
VS,
National Electric Company,
Defendant.
Judge Seaman's Opinion filed in the U. S. Circuit Court,
Eastern District of Wisconsin, February 20, 1905.
C. G. BURGoyNE, Walker and Centre Streets, N. Y.
Circlit Court of the United Sults
EASTERN DISTRICT OF WISCONSIN.
WESTINGHouse ELECTRIC & MANU-
FACTURING COMPANY.,
Complainant, In Equity.
February 20, 1905.
WS. y
NATIONAL ELECTRIC COMPANY.
EDWARD RECTOR and KERR, PAGE & CoopFR, for
Complainant.
WINKLER, FLANDERS, SMITH, BOTTUM & FAWSETT and
CHARLEs A. BROWN, for Defendant.
Final hearing of bill upon Tesla patents Nos. 381,968,
381,969, 382,280 and 382,281, issued of like date, May
1, 1888. The alleged infringing device is a synchron-
Ous motor and alternating current polyphase generator,
thus distinguishable from the non-synchronous motors
involved in prior adjudications under the broad patents
Nos. 381,968 and 382,280.
SEAMAN, Judge.
While the validity of all the patents is assailed by
the answer and testimony on the part of the defendant,
the only issue pressed at the hearing and in the briefs
by way of defense is non-infringement. That issue,
however, rests on consideration of the prior art and
the difficulties in the way of its solution are not much
simplified by passing the question of validity. In-
deed, in the light of the opinions which have been
handed down, discussing both prior art and
alleged anticipations, and upholding the broad
patents, Nos. 381,968 and 382,280, I am impressed
2
with the view that the character of the invention and
validity of those patents may justly be treated as well
established. The opinions referred to are instructive as
well for the purposes of the present issue of infringe-
ment, though not involving synchronous motor in-
fringement. The case against New England Grani/e
Co. (103 Fed. 951, and affirmance 110 Fed. 753) is the
leading one, with that of Royal Weaving Co. (115 Fed.
732) in line ; and other reported decisions are : Tesla
Electric Co. vs. Scott and Janney et al., 97 F. R. 588;
Westinghouse J. (6 M. Co. vs. Dayton Fan (6 Motor Co.,
106 F. R. 724, and 118 F. R. 567; Westing/ouse E. (6
M. Co. vs. Dayton Fan (6 Moto, Co. 106 F. R. 729 ;
Jſ'esting/house AE. (6 M. Co. vs. The Catskill //luminal-
àng Co., 110 F. R. 377; Westinghouse E. (6 M. Co. vs.
//iram C. Roberts et al., 125 F. R. 6; Westinghouse /.
& M. Co. vs. Mutual /life /nsurance Co., 129 F. R. 213;
Westinghouse /. C& M. Co. vs. Stanley /nstrument Co.,
133 F. R. 167. With the excellent and thorough re-
view of the earlier patents and prior art, and the well
considered concurrent view of the novelty and scope of
the Tesla inventions covered by the patents, thus ap-
pearing in several of these opinions, I am relieved of
any need to attempt an analysis of the general
showing in the present case, which departs from
the prior cases Only in respect of the application of
the invention to the synchronous-motor type. Al-
though the inquiry thus presented is not free from
difficulty-–involving abstruse discussion and dis-
tinctions in the electrical art which are perplex-
ing to the non-expert understanding, and are not
clarified by the many pages of conflicting expert testi- º
mony—the arguments at the bar were clear and well
directed, and I am convinced that the issue as now
presented is within narrow compass and governed by
tests for its solution which are not complicated.
T'avored with opportunity to take up the final con-
sideration without delay, I deem it just to all interests
(with the patents soon expiring) to pass the decree in
conformity with my conclusions thereupon, without
extended discussion of the interesting questions in-
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4
So viewed the patent monopoly was rightly
granted for its brief term to the use of the
means and methods thus discovered. While it
could not exclude the known uses of the prior
art, it is surely entitled to be protected against
like motor structure and mode of operation, not clearly
disclosed in the prior art, and the patent claims to that
end must be fairly construed in conformity with
the rule applicable to such inventions. I am of opin-
ion, therefore, that the several contentions for the de-
fendant are either without force or untenable for the
following reasons:
Whether the effect of the Tesla invention in its pro-
duction of the “whirling field of magnetic force " is
identical with that of a rotating physical magnet, as
argued by experts and counsel, does not impress me as
material to this issue. Nor does it seem material that
in the one form of motor “the rotation is produced by
the unaided effect of alternating out of phase currents,”
as described by counsel, and that so applied a self-
starting motor is obtained. The discovery was of
means and method in the polyphase rotating field
motor to produce the whirling field of force, and
employment thereof was patentable with or without
direct current excitation of the armature or secondary
element. So the fact that its use produced a self-
starting motor without the aid of such excitation can-
not alone serve to limit the invention to that effect,
and I find no such limitation in the terms of the
patent. The quotations from the arguments of counsel
and experts for the complainant in prior cases, urging
the distinction of this self-starting effect in refer-
ence to the application of the generic patents
to non-synchronous motors, are without force
in the present controversy, and it is unnecessary
to ascertain their consistency or inconsistency
with the interpretation sought on this hearing.
Unless limitation to self-starting motors arises out of
the prior art none can be imposed upon the claims in
suit. - -
The further propositions urged by way of defense—
5
aside from the defense founded upon prior inventions
of the synchronous type to be considered—are these :
(1) That the synchronous motor of the defendant is
the old generator of the art, simply reversed ; and (2)
That the Tesla invention is not present therein, because:
(as asserted) “the preponderating magnetization of the ’’
direct current displaces and obliterates the “shifting
alternating current magnetization,” or Tesla “whirling
field of force.” However specious both propositions
appear on their face and in the argument, neither of
them impress me as controlling. 1. The first raises the
question of invention in reversing the dynamo electric
generator to serve as an alternate current motor in trans-
mission of power, which was aptly and satisfactorily
answered by the opinions in the New England Granite
case, and I deem it sufficient to remark that the differ-
ing features and additional showing in the present
case do not modify my concurrence in the view there
adopted. 2. Whether the theory advanced on the part
of the defendant of obliteration of the alternating cur-
rent magnetization by that of the direct current to the
secondary element of the motor is or is not true, is
not deemed material, as it is unquestionable that
the Tesla invention as above defined is brought
into the operation of the motor and the structure
is within the patent description. Under the view
before indicated the defendant cannot escape infringe-
ment by the introduction of this element “for better
or worse.” -
The patent references which are relied upon to nar-
row the invention to non-synchronous motors remain
to be considered. These are the French patents of
Cabanellas and Dumesnil and the Bradley U. S. pat-
ent No. 390,439, each of which devices is set up as dis-
closing a polyphase power-transmission means of
coupling two single phase motors in combination or
aggregation. Each has received extended considera-
tion in one and another of the previous decisions upon
the issues there presented for construction of the gem-
eric patents. That of Bradley—which is strongly
pressed in the argument as showing a polyphase ma-
6
chine, stated to be adapted for use “as a motor when
fed or actuated by alternating currents”-—is subse-
quent in date of patent issue to the Tesla patents,
though the Original application bears date prior to that
of Tesla. The testimony of Mr. Bradley and his attor-
ney introduced in the present record cannot affect the
interpretation which must be given the disclosure of
invention in the original application, and if such ap-
plication can be treated as a disclosure of the prior art
I am of opinion that it fails to reach the Tesla concep-
tion. Its deficiencies in that regard are clearly pointed
out in the New England Granite case and later cases,
and further comment is unnecessary. The French pat-
ents referred to are deemed equally inapplicable and
equally well discussed in the prior cases, with no
additional showing in the present case which calls for
discussion.
I believe that no proposition in the able and ex-
tended arguments on the part of the defense have been
overlooked in my consideration of this case, although
it has not seemed needful to discuss all of them for the
purposes of this opinion. My conclusions are that the
defendant's synchronous motor structure and operation
are within the generic invention as patented, and ex-
pressly covered by the claims of Nos. 381,969 and
382,281; that the invention is utilized in the defend-
ant's motor operation, notwithstanding the introduc-
tion of direct current excitation to make it synchron-
ous, in lieu of the full realization of the revolving field
effect for self-starting ; that such supplemental aid
does not escape infringement, with or without ad-
vantage in such association ; and that, in any view the
combination patents referred to are not limited to
after-effect of the direct-current excitation, but apply
to the defendant's combination. Decree will be entered
accordingly as prayed in the bill.
A true copy.
Attest.
. . . . . - EDWARD KURTZ,
(SEAL) - Clerk.
[26987]
A. C. MOTORS.–C.
511,559.
511,56O.
No. 11.
Opinion—Court of Appeals.
Denying Appellee's Petition for Modification
- of Mandate, &c.
Tesla Split-Phase Motor.
Patents Nos. 511,559 and 511,560.
* ...
Westinghouse Electric & Manufacturing Company,
ºr • & Complainant, Appellant,
º VS.
Stanley Instrument Company,
Defendant, Appellee.
Opinion filed in the U. S. Circuit Court of Appeals for
* the First Circuit, June 14, 1905.
C. G. BURGoyNE. Walker and Centre Streets, N. Y.
Stanley Instrument Case.
[Printed from certified copy.]
United States Girºllit00urtOfAppBāls
OCTOBER TERM, 1904.
WESTINGHOUSE ELECTRIC AND MANU-
FACTURING COMPANY,
Complainant, Appellant,
NO. 504.
W.
STANLEY INSTRUMENT COMPANY.,
Defendant, Appellee.
/
RERR, PAGE & COOPER, W. K. RICHARDSON, for
appellant. -
C. E. MITCHELL, W. H. KENYON, H. B. BROWNELL, for
appellee.
APPEAL FROM THE CIRCUIT CouTT OF THE UNITED STATES
FOR THE DISTRICT OF MASSACHUSETTS.
PETITION OF THE APPELLEE, THE RESPONDENT BELOW,
FoR LEAVE TO APPLY TO THE CIRCUIT COURT FOR LEAVE
TO FILE A SUPPLEMENTARY BILL IN THE NATURE OF A
BILL OF REVIEW, OR TO AMEND THE JUDGMENT ON
APPEAL.
Before PUTNAM, ALDRICH and BROWN, JJ.
Opinion of the Court.
JUNE 14, 1905.
PUTNAM, J. : On this appeal, we entered a decree
against the petitioner, the respondent below and now
the appellee, who brings this petition, which it bases
2
on the claim that the case is within Section 4887 of
the Revised Statutes as it stood before it was
amended, and that, pending this appeal the patents
sued on expired by limitation as therein provided.
It prays that this Court shall so amend its judgment
as to deny any injunction, and as to direct that the
accounting shall cease as of the date when the
patents expired, or that the petitioner may have
leave to proceed in the proper way in the Circuit
Court to accomplish the same result. The petition
has been answered, and proofs taken, and the whole
submitted to us on briefs.
The decree of the Circuit Court was in favor of the
petitioner, and the complaimant below appealed. The
patents in suit issued on December 6, 1893, on appli-
cations filed in December, 1888. The present bill was
filed in 1899, and the decree was entered in the Circuit
Court on the sixteenth day of March, 1903. An appeal
was promptly taken, and the same came on for hearing
before us in April, 1904. Judgment was rendered by
us, as already said, on September 9, 1904, reversing the
decree of the Circuit Court, and remanding the case
with instructions to enter a decree in favor of the
complainant for an injunction and an accounting, and
to take such further proceedings as might be required
not inconsistent with our opinion. Afterwards, on the
application of the present petitioner, the mandate was
stayed, and the petitioner applied to the Supreme
Court for a writ of certiorari, which was denied on
November 28, 1904. This petition was filed on Decem-
ber 7, 1904.
The practice on a petition of this nature has been
sufficiently explained by us in In re Gamewell Fire
Alarm Telegraph Co., 73 Fed. Rep., 908, and in Boston
Electric St. Ry. Co. vs. Bemis Car-Boa, Co., 98 Fed.
Rep., 121. In those cases, we stated to what extent
appellate tribunals will ordinarily go with regard to
the merits on an application of this character, and,
also, as to laches; but our own records satisfy us
that, on this petition, we can dispose of all essential
questions. Therefore, in view of the multiplied and
3
protracted litigations over the patents in suit, and, in
view also of the fact that they now have only a few
years to run, we deem it our duty to consider every-
thing which we can consider, and end this suit so far as
it is in our power to do so.
The respondent in this petition, the complainant
below, maintains that the foreign patents were for
identically the same subject-matters as two certain
patents issued to the complainant in April, 1889, and,
therefore, before the patents in suit issued. It,
therefore, further maintains that if the present
position of the petitioner were correct, to
the effect that the foreign patents covered the
same subject-matters as the patents in suit, it
follows that the patents issued in 1889 were also
for the same subject-matters, and that, therefore,
they were a complete defence on the merits of the
present bill. Consequently, it urges that, as the pe-
titioner, from its standpoint, could have set up the
patents of 1889 as a defence to the merits, it is guilty
of such laches that the petition must be dismissed.
If this were all that there is of the petition, it would
meet all of the petitioner's propositions; but, as we
go on, it will be perceived that it is not all.
The foreign patents to which the petition relates
expired, one on the sixteenth day of April, 1903, which
was a few days after the decree entered in the Circuit
Court, and the other on the third day of December,
1903, which was after the present appeal was taken,
and before it was heard by us. We, therefore, have a
question of laches which cannot be wholly overlooked.
Under the circumstances, it was the duty of the peti-
tioner to have brought these facts to our attention
at or before the time the appeal was argued on its
merits; and it failed in its duty in allowing us
to proceed to hearing an issue with regard to an
injunction which, from the standpoint of the peti-
tioner, had ceased to involve anything except moot
questions. It was its duty to have then presented the
facts which it now brings to our attention, instead of
holding them in reserve for further consideration after
4
we had been allowed, by its entire silence, to investi-
gate and dispose of the voluminous and difficult ques-
tions which the record involved. It had ample oppor-
tunity to have seasonably brought before us, in an in-
formal manner, all the questions which the present pe-
tition raises, as was fully explained by us in Mossberg
v. Nutter, 124 Fed. Rep. 966.
As the foreign patents referred to are British patents
taken out by the same inventor, Tesla, as those in is-
sue, relating to the same branch of the same art, the
facts alleged in the petition to the effect that they were
not discovered except as the result of search made after
our judgment was entered on September 9, 1904, does
not avail to excuse the petitioner. In In re Gamewell
Aire Alarm Telegraph Co., 73 Fed. Rep. 908, 913, 914,
already referred to, we pointed out that, as there is no
limit to the amount of published material, there will be
no end to the number of applications based on new
discoveries thereof, one after another, un-
less very strict rules are insisted on in
reference thereto. Our expressions were approved
by the Circuit Court of Appeals for the Sixth Circuit
in Kissinger-Ison Co. v. Bradford Belting Co., 123 Fed.
Rep. 91, 92. Certainly, in a case which has involved
so much litigation and so much investigation as this
now before us, it is impossible to excuse the peti-
tioner for not having discovered the British patents,
and brought them to our attention seasonably, at the
time and in the manner we have explained. The
present case goes further, because the petition admits
that no search for foreign patents with regard to the
present question was made until after our decree of
September 9, 1904, and that the previous searches
were in regard to the prior art. It will appear, how-
ever, that we have no occasion to determine absolutely
on a question like this now before us, which involves
not merely the petitioner but also the general public,
whether this laches would justify us in wholly denying
relief; but, on account thereof, even if we should
grant any relief, the petitioner should be held
to stand practically in the ordinary position
5
of one asking leave to proceed in review on
newly discovered matter, to the extent that, before the
proceeding in review can make substantial progress,
the judgment entered must be performed so far as it is
not absolutely unjust that it should be. Ricker v.
Powell, 100 U. S. 104, 107, 108; Story's Equity Plead-
ings, 10th ed., § 406. Of course, in this case, this rule
cannot be strictly applied because there is no final de-
cree ; but, if we should grant leave to file a bill in the
nature of a supplemental bill, equity would require us,
for the reasons we have stated, to proceed in this re-
spect by analogy to the practice with reference to bills
of review. On this petition, however, the merits are
so clearly against the petitioner that it is our duty to
hold the case firmly, with the view of preventing fur-
ther unnecessary litigation.
The statute on which the petitioner relies is, as we
have said, section 4887 of the Revised Statutes, as it
stood before it was amended, as follows :
“No person shall be debarred from receiving
a patent for his invention or discovery, nor shall
any patent be declared invalid, by reason of its
having been first patented or caused to be pat-
ented in a foreign country, unless the same has
been introduced into public use in the United
States for more than two years prior to the ap-
plication. But every patent granted for
an invention which has been previously
patented in a foreign country shall
be so limited as to expire at the
same time with the foreign patent, or, if there be
more than one, at the same time with the one
having the shortest term, and in no case shall it
be in force more than seventeen years.”
In Bate /Refrigerator Company v. Sulzberger, 157 U.
S. 1, 36, the language of this provision was spoken of
generally as “so plain and unambiguous that a refusal
to recognize its natural, obvious meaning would be
justly regarded as indicating a purpose to change the
law by judicial action based upon some supposed
policy of Congress". So it seems to us as applied to
the present case. It is a “patent " granted for an
invention which has been previously “patented '' in a
6
foreign country, etc., which is limited. It is a domestic
patent against a foreign patent. All through, it is one
patent against another. In the United States, nothing
is patented except what is covered specifically by the
claims required by statute. The same was the
law of England at the time the patents
relied on by the petitioner were there issued.
Edmunds on Patents, 2d ed., 181 et seq.
Yet, with a single exception, which we will refer to
later, the petitioner all through maintains that section
4887 of the Revised Statutes applies, not only where
the foreign patent covers what is patented in the
United States, but where it describes what is so pat-
ented. At One point of its brief, it states that the
issues raised are entirely different from the question of
double patenting. At another point the brief so far
emphasizes this position as to maintain, in clear error,
that Commercial Company v. Fairbank Company, 135
U. S. 176, sustains the petitioner. Again, it states
formally four major propositions, three of which are
clearly in this line, while the fourth is equivocal, and,
if it has any other aspect, will be covered by what will
be said further on. It reiterates the proposition that
the invention in issue was disclosed in the foreign
patents, so that, as it says, “the English public ob-
tained a complete disclosure of the invention, and in
1903 obtained the right to freely use the same ".
The two facts stated in this citation may be true.
The legal effect of them will be found to be incon-
sequential, so far as this case is concerned. Else-
where, the proposition is put definitely, as follows :
“A prior foreign patent will limit the term of
a later United States patent to the same inventor,
when the foreign patent is of such character that
its disclosure would, if contained in an earlier
United States patent issued to the same inventor
without reservation prior to the filing of a later
United States patent, operate as an abandonment
of the invention of the later United States patent;
or when the foreign patent is of such character
that its disclosure, if made by another person
earlier in the art, would anticipate the later
United States patent ’’. *
7
These positions find no support in the natural read-
ing of section 4887 of the Revised Statutes ; and the
provisions of this section are too severe, as apparent to
the ordinary comprehension and as has been since
declared by Congress by its amendments thereto, to
justify any relaxation which would extend it beyond
its letter. No authorities can be found to sustain the
petitioner on this point, unless it is an expression
in Walker on Patents, 4th ed. (1904), 150. The
learned author there cites as authority for
the proposition Commercial Company v. Fair-
bank Company, 135 U. S. 194, already referred
to, as, also, does the petitioner ; but a careful examin-
ation of that decision fails to disclose any justification for
assigning to it such an effect. In view of the fact that
the learned author is discussing an obsolete statute, it
is not at all strange that he nodded. On the other
hand, Robinson on Patents, in section 623, reiterates
the natural reading of the statute, as follows :
“In order that the term of a foreign patent
may thus limit that of the domestic patent, it is
essential that the inventions covered by the two
patents should be identical.”
It will be noticed that the author uses the word
covered, and not shown or disclosed. He makes
his position clear by his note to this section, wherein
he cites a decision that the foreign patent is not
effective unless the claim, as well as the patent itself,
describes the same invention.
The petitioner relies on Siemens v. Sellers, 123 U. S.
276; but that case, so far as it touches the present
question, discusses merely the identity of what was in
fact patented. This is emphasized at page 283, where
the court carefully explains the claim in the English
patent, and not merely what the patent disclosed. The
same observation applies generally to Commercial Com-
party v. Fairbank Company, ubi Supra, which is also
strenuously relied on by the petitioner. The discussion
in the opinion in the last case cannot be said to parti-
cularly bind the court, because it was carried out
S
for the most part by simply making long extracts from
the opinion passed down in the Circuit Court ; but, at
the foot of page 188, it speaks of the question of the
identity of one foreign patent with the patent then in
suit. What has this to do with what merely is dis-
closed by either one patent or the other ? The peti-
tioner especially relies on what is said near the foot
of page 194, that the test is whether, if a person in the
United States, after the issue of the United States
patent, should commence the manufacture of a patented
article by the precise process described in the foreign
patent, the court would properly restrain him. To
begin with, this, as already said, is a mere quotation
from the opinion of the Circuit Court, and not an ex-
pression devised by the Supreme Court ; and it is not
to be assumed that, where an appellate tribunal, as in
this case, quotes long extracts, it is held to be bound
by all the expressions contained in them. How-
ever, for that particular case, this test was a
sufficient one, and it was not necessary, there-
fore, for the court to state any qualifications with
reference thereto. For other cases, including the
one at bar, the test is not sufficient. This is evident
whatever the foreign patent covers a substantial and
important improvement on what was patented in the
United States. A test of this character is too danger-
ous unless applied to the circumstances of the particu-
lar case in which it is used. Therefore, we are unable
to find any authority which requires us to disregard
the natural reading of section 4887 of the Revised
Statutes, and no authority which leads in that
direction.
As we have already said, at One point the petitioner
disregards this main proposition, and asserts identity
of patenting. As to this, it should be first observed
that, as the case is finally worked out, the petitioner
places no reliance on one of the English patents, and
as to the other, so far as concerns any alleged identity
of patenting, it relies only on Claim 4, as follows:
“4. The method of operating a synchroniz-
ing motor, which consists in passing an alternat-
9
ing current through independent energizing-cir-
cuits of the motor and introducing into such
circuits a resistance and self-induction coil,
whereby a difference of phase between the cur-
rents in the circuits will be obtained, and then,
when the speed of the motor synchronizes with
that of the generator, withdrawing the resist-
ance and self-induction coil, as set forth.”
The petitioner maintains that, on the issue of iden-
tity of the patent, this claim falls within the decisions
of the Supreme Court to which we have referred ; but
we do not so understand it. These were based on the
proposition that a difference in mere detail does not
avoid identity. This is undoubtedly true, as stated in
Sawyer Spindle Co. v. Carpenter, 133 Fed. Rep. 238,
240, where apparently the leading authorities bearing
On this question are grouped. In Siemens v. Sellers,
wbi supra, relied on by the petitioner as to this partic-
ular topic, we refer again to page 283, where the opin-
ion explains the fact that the furnace described in each
patent there in question was the same in all essential
particulars, while the English specification was only
more detailed, and the drawings more minute and full.
So in Commercial Company v. Fairbank Company, ubi
supra, which the petitioner specially relies on in this
particular connection, it is plain that the court regarded
what was patented in the United States and in all the
foreign countries as identically the same in substance.
This was elaborated and made clear at pages 190 and
191, where it was pointed out that what were the ap-
parent differences in the various patents arose from
the fact that the inventor deemed himself as address-
ing, within the foreign jurisdiction, a class of persons
more skilled in the general topic to which the inven-
tion related than would be found in the United States.
It is true that Claim 4 of the British patent, already
quoted, necessarily includes all the elements of the
patents in issue here ; but it also includes other ele-
ments, establishing a new combination which is an
essential, novel and patentable improvement on what
was claimed in the patents before us on appeal. This
follows from what is said in the petitioner's brief, that
10
what was accomplished by Claim 4 of the British pat-
ent referred to, was “a motor which obtained synchro-
mous speed, and thereafter, at will or when desired ",
had facility for “withdrawing the resistance and self-
induction coil.” This is made clear by the extract
from the British patent cited by the respondent in this
petition in its brief, as follows:—
“In other words, by a certain change in the
circuit connections of the motor, it is converted
at will from a double circuit motor, or such as is
now known as a Tesla motor, and which will
start under the action of an alternating cur-
rent,” etc.
It is also made clear by the same brief, where it ex-
plains this claim as covering a convertible motor, in
which the split-phase invention claimed in the patents
here in suit is in no way a more prominent element
than the polyphase patents which belong to a prior
stage of the art. This Claim 4, therefore, covers not a
mere improvement on either the split-phase inven-
tion or the polyphase invention separately. That it
covers an invention by which a convertible motor is
produced necessarily takes the case out of the field of
identity with either the earlier polyphase or the later
split-phase patents.
Therefore, in view of the fact that the propositions
involved arise clearly on the face of this petition and
our own records in this litigation, we find the case
within the class as to which we have said that an ap-
pellate tribunal, on a proceeding of this character, may
consider and pass on every question which might be
raised before it or before the court of first instance ;
but, as we are clear that the petition has no merits,
we dispose of it against the petitioner on that ground
alone, leaving the question of laches in the form in
which we have already put it.
Ordered : The petition filed by the Stanley Instrut-
ment Company on December 7, 1904, is denied, and the
mandate will issue forth with.
[27791]
A. C. MOTORS.-C.
GENERAL LIBRARY, s11,559.
9Nºv. OF MICH, 511,560.
8EP-15 1905 No. 12.
Injunction Order—Circuit Court.
Tesla Split-Phase Motor.
Patents Nos. 51 1,559 and 51 1,560.
Westinghouse Electric & Manufacturing Company,
sº Comiplainant,
VS,
Diamond Meter Company,
--> \ Defendant.
Order for Injunction filed in the U. S. Circuit Court,
Southern District of Illinois, August 3, 1905.
*
C. G. BURGoyne, Walker and Centre Streets, N. Y.
[Printed from certified copy.]
IN THE
Čirſlit (ODIſ Of the United States
FOR THE SOUTHERN DISTRICT OF ILLINOIS,
NORTHERN DIVISION.
Thursday, August 3, A. D. 1905.
Present, HonorABLE J. OTIs HUMPHREY, District
Judge.
WESTINGHOUSE ELECTRIC AND MANU-
FACTURING COMPANY.,
Complainant,
WS. ſ In Equity.
DIAMOND METER COMPANY.,
Defendant.
This cause having come on to be heard on the bill
of complaint and complainant's motion for an injunc-
tion pendente lite against the defendant, and support-
ing and opposing affidavits and exhibits, and having
been argued by counsel, and the court being fully ad-
vised in the premises, it is now, this 3rd day of August,
1905,
ORDERED that an injunction forthwith issue against
the defendant, restraining it, and its officers, agents,
attorneys and workmen, until the final hearing and
disposition of this cause, from further infringement of
claims 1 and 2 of letters patent of United States No.
511,559, and claims 1, 2, 3 and 4 of letters patent of
United States No. 511,560, set forth in the bill of com-
plaint in this cause. -
2
IN THE CIRCUIT COURT OF THE UNITED
STATES,
FOR THE SOUTHERN DISTRICT OF ILLINOIS.
NORTHERN DIVISION.
I, JAMES T. Jon Es, Clerk of the Circuit Court of the
Unted States for the Southern District of Illinois,
Northern Division, do hereby certify the foregoing to
be a true copy of an order made by said court on
Thursday, the third day of August A. D. 1905 in a
certain cause wherein the Westinghouse Electric and
Manufacturing Company is complaimant and the Dia-
mond Meter Company is defendant, as the same ap-
pears of record in this court.
In testimony whereof, I have hereunto set
my hand and affixed the seal of said
[SEAL.] court, at Peoria, in said division and
district, this 4th day of August
A. D. 1905.
JAMES T. JONES,
Clerk.
[28137]
A. c. MoroRs.—c.
511,559.
511,560.
No. 13.
Opinion—Circuit Court.
-
Tesla split-Phase Motor
Patents Nos. 5II,559 and 5 II,560.
Westinghouse Electric & Manufacturing Company,
Complainant,
vs.
* Stanley Instrument Company,
- - Lefendant.
Judge Lowell's Opinion filed in the U. S. Circuit Court,
District of Massachusetts, September 22, 1905.
C. G. BURGox NE, Walker and Qantre Streets, N. Y.
[Printed from certified copy.]
(ſincentit (ſounct of the Kāmited $fa tes,
DISTRICT OF MASSACHUSETTS.
WESTINGHOUSE ELECTRIC & MANU-
FACTURING COMPANY.,
In Equity.
W. No. 2149.
STANLEY INSTRUMENT COMPANY.
/
KERR, PAGE & COOPER and W. K. RICHARDSON for Com-
plainant, BARTLETT, BROWNELL & MITCHELL and W. H.
RENYON, for Defendant.
Opinion of the Court.
SEPTEMBER 22, 1905.
LOWELL J. This is a bill in equity to restrain the
infringement of Letters Patent No. 511,559 and 511,–
560. The claims in suit are as follows:
No. 511,559. “I. The method of operating
motors having independent energizing circuits,
as herein set forth, which consists in passing
alternating currents through both of the said
circuits and retarding the phases of the current
in one circuit to a greater or less extent than in
the other.
“2. The method of operating motors having
independent energizing circuits, as herein set
forth, which consists in directing an alternating
current from a single source through both cir-
cuits of the motor and varying or modifying the
relative resistance or self-induction of the motor
circuits and thereby producing in the currents
differences of phase, as set forth.”
2
No. 511,560. “1. The combination with a
source of alternating currents, and a circuit from
the same, of a motor having independent ener-
gizing circuits connected with the said circuit,
and means for rendering the magnetic effects
due to said energizing circuits of different phase
and an armature within the influence of Said
energizing circuits.”
The hearing was upon a motion for a preliminary
injunction. -
In proceedings between these parties, the Circuit
Court of Appeals for this Circuit has held the claims
above quoted to be valid, and that the same are in-
fringed by a certain machine of the defendant, West-
inghouse Electric Company v. Stanley Instrument
Company, 133 Fed., 167. That decision is binding
upon this court.
The machine adjudged to infringe differs from that
here complained of in but one respect, viz.: In the
latter there is a spring tending to operate positively
the recording mechanism of the meter more rapidly
than is permitted by the gear connecting that mechan-
ism with the electrically operated wheel whose revolu-
tions are to be recorded. It follows that the wheel in
the device here complained of, though geared so as to
move positively the recording mechanism in the
absence of the spring, yet with the spring present
tends to check the positive movement thereby impart-
ing to the mechanism, rather than to impart of itself
any movement thereto. But the defendant's whole
machine will accomplish every desired object of move-
ment and record if the spring be altogether removed
from the machine without other change, and if ad-
mitted identity with the patent in suit be thus re-
stored. The change here in question has been made
solely to escape from the decree in Westinghouse
Electric Company v. Stanley Instrument Company.
Were that decree and the machine itself alone before
it, the court could have no doubt that the defendant’s
existing machine infringes. So far as there is doubt,
3
it arises from several phrases found in the opinion of
the Circuit Court of Appeals. The defendant con-
tends that these expressions limit the decision to
meters in which the recording mechanism owes its
positive motion altogether to the revolutions of the
wheel. Without extended discussion of the language
relied upon, it is enough to say that the Court of
Appeals does not appear to me to have intended the
limitation urged by the defendant. This would de-
prive the decree of all practical value to the complain-
ant. If a patent for the Operation of a wagon by a
horse be supposed valid, and if an infringer thereof
were ordered to account for profits, I do not think he
would be entitled to deduction for the down hill parts
of the road travelled, in which the decline took all the
weight off the horse. And I think that an engine,
built to overcome a steep grade by means of a cog rail,
operates its train as well in descending the grade as in
ascending it.
Motion for preliminary injunction granted. Prelim-
Žnary injunction to issue.
A true copy :
Attest :
L. C. TUCKER,
Deputy Clerk.
|28264)
A. c. MoroRs.—c.
511,559.
511,560.
No. 14.
Preliminary Injunction—circuit Court.
Tesla Split-Phase Motor.
Patents Nos. 5II,559 and 5 II,560.
Westinghouse Electric & Manufacturing Company,
Complainant,
- VS, -
Stanley Instrument Company,
e Defendant.
Order for Preliminary Injunction filed in the U. S. Circuit
Court, District of Massachusetts, September 22, 1905.
N
C. G. BURGoxNE, Walker and Centre Streets, N. Y.
[Printed from certified copy. ]
Circuit Cºurt of the United States,
DISTRICT OF MASSACHUSETTS,
IN EQUITY.
WESTINGHOUSE ELECTRIC & MANU-
FACTURING COMPANY
No. 2149.
W.
STANLEY INSTRUMENT COMPANY.
Order for Preliminary Injunction.
SEPTEMBER 22, 1905.
LOWELL, J. This cause came on to be heard on
complainant's motion for preliminary injunction, and
on the bill of complaint and affidavits filed by com-
plainant and defendant, and was duly argued by counsel
for the respective parties. - -
And now on consideration thereof, it is Ordered,
Adjudged and Decreed that a preliminary injunction
be issued restraining the defendant, the Stanley In-
strument Company, its officers, agents, servants, work-
men, and each of them, and all others acting by its
authority from any further manufacture, use, or sale in
any manner of the improvements patented in and by
letters patent of the United States granted to the Tesla
Electric Company, No. 511,559, dated December 26,
1893, and especially referred to in claims 1 and 2
thereof, and the improvements patented in and by
2
letters patent of the United States granted to the
Tesla Electric Company, No. 511,560, dated December
26, 1893, and especially referred to in claim 1 thereof,
or either of them, and especially from the further
manufacture, use, or sale of any meters like “com-
plainant's exhibit, defendant's spring meter”, pending
this cause.
By the Court :
L. C. TUCKER,
Deputy Clerk.
A true copy :
Attest :
T. C. TUCKER,
[SEAL.] Deputy Clerk.
NOTE:-Injunction in accordance with
the terms of the above Order was issued
and served on September 25, 1905.
|28323]
A. c. Morons.—c.
511,559.
511,56O.
No. 15.
Memorandum and Injunction order—circuit Court.
Tesla Split-Phase Motor.
Patents Nos. 51 1,559 and 51 1,560.
Westinghouse Electric & Manufacturing Company,
Complainaut,
• VS,
Syracuse Lighting Company,
- g Defendant.
Memorandum of Judge Ray filed October 3, 1905.
Injunction Order filed October 7, I905.
U. S. Circuit Court, Northern District of New York.
—w - -*
C. G. BURGoyne, Walker and Centre Strº ets, N. Y.
|Printed from a Certified Copy.]
Girºlliſ (Olſt Of the Unifºd StăţS,
NORTHERN DISTRICT OF NEW YORK.
WESTINGHOUSE, ELECTRIC & MANU-
FACTURING CO.
W.
SYRACUSE LIGHTING CO. \
Motion for injunction pendente lite restraining fur-
ther infringement of the U. S. Letters Patent numbers
511,559 and 511,560, granted to Nikola Tesla.
RERR, PAGE & COOPER, for complainant.
ICENYON & RENYON, for defendant.
Preliminary injunction granted as follows:
Defendant restrained from putting in or using any
new or additional infringing devices.
In view of expense and labor and inconvenience to
the public detendant is given six months in which to
change infringing devices now in use to non infringing
devices, and at expiration of that time preliminary in-
junction absolute against further use thereof.
GEO. W. RAY,
U. S. Judge.
If disagreement as to form of order same to be sub-
mitted for settlement on 5 days notice.
GEO. W. RAY,
U. S. Judge.
A true copy.
Attest :
W. S. DooDITTLE,
[SEAL.] Clerk.
2
[Printed from certified copy.
At a Stated Term of the United States
Circuit Court for the Northern Dis-
trict of New York, held at the Cham-
bers of a Judge of the said Court at
the village of Norwich, N. Y., on the
7th day of October, 1905.
Present : HON. GEORGE W. RAY, Judge.
WESTINGHOUSE ELECTRIC & wº
FACTURING CO., •
In Equity,
vs. No. 7117.
SYRACUSE LIGHTING Co. |
On reading and filing the complainant's affidavits and
other papers on motion for preliminary injunction and
the defendant's papers in opposition thereto, and after
hearing the arguments of counsel for both parties:
Now, on motion of Kerr, Page & Cooper, solicitors
for complainant, it is
Ordered that an injunction issue out of this Court re-
straining the Syracuse Lighting Co., during the pend-
ency of this action and until the further order of the
Court, from manufacturing, using, putting into use or
selling devices or apparatus infringing upon the first
and second claims of letters patent No. 511,559 and the
first claims of letters patent No. 511,560 referred to in
the bill of complaint herein, or in any manner infring-
ing upon the said claims of the said patents; and
It is further ordered that the injunction be sus-
pended as to infringing devices now in actual use by
the said defendant until and including the 3rd day of
April, 1906, in order that the said defendant may change
from the infringing devices now in actual use (and said
to number 3200, more or less) to non-infringing devices.
GEO. W. RAY,
U. S. Judge.
3
UNITED STATES OF AMERICA,
Circuit Court Clerk's Office,
NORTHERN DISTRICT OF NEW YORK. $
I, WILLIAM. S. DOOLITTLE, Clerk of said Court, DO
Hereby Certify that I have compared the annexed
copy of order in re Westinghouse Electric & Manufac-
turing Co. vs. Syracuse Lighting Co. In Equity No.
7117, with the original now on file in this office, that
the same is a correct transcript therefrom and of the
whole of said original.
In Testimony Whereof, I have caused the seal of the
said Court to be affixed at the City of Utica, in said
District, this 14th day of October, A. D. 1905.
WILLIAM. S. DOOLITTLE,
[SEAL.] Clerk.
|294.29)
223 511,559.
A. C. MOTORS.–C.
rq 511,56O.
} v 53 No. 16.
W 53
Opinion—Circuit Court.
on Final Hearing.
Tesla Split-Phase Motor.
Patents Nos. 51 1,559 and 51 1,560.
Westinghouse Electric & Manufacturing Company,
Complaina fit,
VS.
Electric Appliance Company,
Defendant.
Judge Kohlsaat's Opinion filed in U. S. Circuit Court,
Northern District of Illinois, Eastern Division,
January 19, 1906.
C. G. BURGoyNE, Walker and Centre Streets, N. Y.
[Printed from certified copy.]
In the Ciròlit (Ourt ºf the United States
FOR THE NORTHERN DISTRICT OF ILLI-
NOIS_EASTERN DIVISION.
WESTINGHOUSE ELECTRIC & MFG.
Co.
W. No. 27,066.
ELECTRIC APPLIANCE COMPANY.
|
RERR, PAGE & CoOPER for Complainant.
BOND, ADAMS, PICKARD & JACKSON for Defendant.
ROHLSAAT, J. : -
On December 8, 1888, Nikola Tesla made applica-
tion for two patents pertaining to electrical transmis-
sion of power and a system therefor. Both of these
were issued December 26, 1893, numbered respectively
511,559 and 511,560. While these applications were
awaiting action by the patent office, and on February
18, 1889, Tesla filed his application for a patent for a
method of Operating electro magnetic motors, upon
which he thereafter, on April 16, 1889, was granted a
patent, No. 401,520. On the last named date he caused
an application to be presented for a corresponding
English patent which was thereafter duly granted to
one Lake, and numbered 6527. This English patent
expired April 16, 1903, having a life of only fourteen
years under the English statute. On December 3,
1889, there was duly issued to Tesla patent No. 416,-
193, for an electro magnetic motor. On the same day
Tesla caused an English patent corresponding to the
last named patent, to be issued which was numbered
14,926.
2
The cause is now before the Court on final hearing
upon a bill for injunction and accounting, covering
Claims 1 and 2 of Patent No. 511,559 and Claims 1, 2,
3, and 4 of Patent No. 511,560, which said claims read
as follows :
IPatent 511,559.
“1. The method of operating motors having inde-
pendent energizing circuits, as herein set forth, which
consists in passing alternating currents, through both
of the said circuits and retarding the phases of the
current in one circuit to a greater or less extent than
in the other.
“2. The method of operating motors having inde-
pendent emergizing circuits, as herein set forth, which
consists in directing an alternating current from a
single source through both circuits of the motor and
varying or modifying the relative resistance or self-
induction of the motor circuits and thereby producing
in the currents differences of phase, as set forth.”
Patent, No. 511,560.
“1. The combination with a source of alternating
currents, and a circuit from the same, of a motor
having independent energizing circuits connected with
the said circuit, and means for rendering the magnetic
effects due to said energizing circuits of different
phase and an armature within the influence of said
energizing circuits.
“2. The combination with a source of alternating
currents and a circuit from the same, of a motor hav-
ing independent energizing circuits connected in deri-
vation or multiple arc with the said circuit, the motor
or energizing circuits being of different electrical char-
acter whereby the alternating currents therein will
have a difference of phase, as set forth.
“3. The combination with a source of alternating
currents and a circuit from the same, of a motor hav-
ing independent energizing circuits connected in deri-
vation or multiple arc with the said circuit and of
different active resistance, as set forth.
“4. In an alternating current motor, the combina-
tion with field magnets, of independent energizing
circuits adapted to be connected in multiple arc with
the conductors of the line or transmission circuit and
a resistance or self induction coil in one or both of
the said motor circuits, as set forth.”
3
These patents have been before the courts and sus-
tained in
Westinghouse E. & M. Co. v Dayton Fan. & M. Co.,
106 Fed. Rep. 724.
Same case on appeal, 118 Fed. Rep. 562.
Same Complt. v Catskill L. & P. Co., 110 Fed. Rep.
377.
Same case on appeal, 121 Fed. Rep. 831.
Same Complt. v Stanley Instrument Co., 133 Fed.
Rep. 167.
Same Complt. v Roberts et al., 125 Fed. Rep. 6.
Same Complt. v Mutual Life Ins. Co., 129 Fed. Rep.
213.
Deeming a re-argument of the question of patent-
able novelty as undesirable, defendant substantially
confines its defense to two propositions, viz.,
FIRST.—Each of the claims of both patents in suit is
void for “double patenting ” by reason of the grant to
the same inventor of letters patent No. 401,520 of
April 16, 1889, for a “Method of Operating Electric
Magnetic Motors.”
SECOND.—Each of the patents in suit expired in the
year 1903, prior to the filing of the bill of complaint in
this cause, by reason of the expiration in that year of
British letters patent Nos. 6527 and 19,426, of 1889,
under Section 4887 of the Revised Statutes in force
when the patents in suit were applied for and granted.
It therefore becomes necessary to determine only
whether the issuance of the patents constituted double
patenting in view of patent No. 401,520, and also
whether they were substantially the same improve-
ments as those described in English patents Nos. 6527
and 19,426 of 1889 and consequently limited by the
life term of the same.
If the difference between the claims of the patents
in suit and those of patent No. 401,520 be only color-
able, then either the patents in Suit are void or patent
No. 401,520 is void. In the case of Miller v. Eagle
Mfg. Co., 151 U. S. 136, it was held that a mere differ-
ence in the terms of claims would not avail; that while
a patentee may be entitled to a patent for an improve-
4
ment, such improvement must be something substanti-
ally different from that comprehended in the first pat-
ent. In that case the court held a “second patent
although containing a broader claim more general in
its character than the specific claim contained in the
prior patent, is also void.” The facts pertinent to the
inquiry were as follows: One Wright filed his applica-
tion for a patent for a “ device for use in connection
with cultivators and claimed for it not only its lifting
and depressing action, but also its lifting power which
increased as the beams were raised.” Subsequently
he caused the application to be divided, to avoid the
delay of an interference, and thereupon secured a pat-
ent for the lifting and depressing effect of the spring
used in the device upon the beams leaving the patent
for the “lifting power of the spring increasing as the
beams rise ’’ for later issue upon the Original applica-
tion. The patent issued for the last described alleged
invention was held to amount to double patenting, the
device having been fairly included within the claims of
the first patent. The rule then laid down by the Su-
preme Court has not been modified.
For complainant, it is insisted that claim 1 of patent
No. 511,559 is broadly for the fundamental method of
operation of split phase motors and that Claim 2
thereof is for the specific application of the under-
lying principle of operating such motors by means
of divided circuits of different electrical character ;
that the four claims of patent No. 511,560 describe
apparatus for carrying out the derivation method of
the second claim of patent No. 511,559 as distiuguished
from the induction method shown in figure one thereof.
Defendant urges that the method claim and the appa-
ratus claims of the two patents in suit are simply dif-
ferent verbal expressions of exactly the same inventive
thought ; that a defense to one is a defense to both,
and that the same inventive thought is found in patent
No. 401,520 and the English patents.
At the date of the filing of the applications in the
patents before the Court, Tesla had already invented
the polyphase motor and system. He had solved the
5
difficulty of utilizing the alternating currents in start-
ing and raising the speed of the motor into synchron-
ism with the generator. This he accomplished by
means of a succession or sequence of currents as they
emanated from the generator. This system required
special generators and the use of two or more circuits
and was cumbersome and expensive, especially when
sought to be applied to systems where the units are
small. To meet these objections, Tesla evolved the
methods and appliances of the patents in suit. “I
have º’ he says “ discovered another method of Ope-
rating these motors which dispenses with one of the
line circuits and enables me to run the motors by
means of alternating currents from a single Original
source. Broadly stated this invention consists in
passing alternating currents obtained from One original
source through both of the energizing circuits of the
motor and retarding the phases of the current in One
circuit to a greater or less extent than in the other.
The distribution of current between the two motor
circuits may be effected by induction or by deriva-
tion.” Instead of employing two independent currents
and two transmission circuits between such sources
and the motor, Tesla here employed but a single source
and a single circuit leading to the motor, and at the
latter divided the circuit into two paths and by arti-
ficial means retards the current in One of these paths
to a greater extent than in the other.
The novelty of Claim 1 of patent No. 511,559 con-
sists in dividing a single alternating current by induc-
tion or derivation and making it available for starting
and raising to synchronism with the generator, the
speed of a motor by artificially varying the
relative phases of the cºrrent in the motor
circuits respectively. Manifestly any system of
division of the single current which does not vary the
phase of the motor circuits would be inoperative. “As
a scientific abstraction ", say counsel in the brief filed
in the Mutual Life case, “the laws regulating the flow
of electric currents were as well known prior to Tesla's
invention as the laws governing the flow of water, but
6
no useful application of the principle of artificially re-
tarding an alternating current had ever been proposed
until Tesla conceiving the possibility of operating a
two phase motor from a single current, turned the prin-
ciple to useful account and demonstrated that the re-
tardation which had been regarded as fatal to the suc-
cessful operation of the Ordinary alternating current sys-
tem, was the keystone of success in a great engineering
problem.” The fact that the difference in phase between
the two independent currents of the polyphase motor
system as well as that existing between the currents
of the so called split-phase motor system could be ar-
tificially modified, was not new. It is the combination
which is new. Even this would seem to be in a meas-
ure a logical sequence from the principles established
in the polyphase motor patents. The present patents
seem to be merely an extension of those principles.
Yet, having in mind the fact of the refinement of dis-
tinctions both in principle and application thereof dis-
closed in the electrical art and the fact that the result
attained in the present case is so great an advance
upon the prior art, I should be disposed, independently
of the decisions cited, to sustain the patent, even were
its patentable novelty not conceded.
I confess to some difficulty in distinguishing be-
tween claims 1 and 2 of the patent under considera-
tion. It seems to me to require a rather narrow read-
ing of it to justify the statement that claim 2 covers
only a specific method of accomplishing the operation
of motors disclosed in Claim 1. This, however, is con-
ceded by counsel for defendant. Therefore, and also
because it does not seem necessary to go into this
question for the purpose of this hearing, I assume
the admission to be justified by the language. The
four claims of patent No. 511,560 alleged to be in-
fringed, are in terms for different devices for prac-
ticing the invention of patent No. 511,559. Whatever
difference there is in the various claims under con-
sideration seems to consist more in the language
of the claims than in reality. Whether this be so to
the extent of invalidating any of them or not, is not
7
material here. It is sufficiently apparent for the pur-
pose of enabling the Court to hold that the defenses
raised herein, if sustained, would apply to all of said
claims.
As above stated, the defense of double patenting
rests upon the issuance of patent No. 401,520 on April
16, 1889, while the applications for patents Nos. 511,-
559 and 511,560 were still pending in the patent office.
Claims 1, 2 and 4 of patent No. 401,520 read as fol-
lows:
“1. The method of Operating an alternating-current
motor herein described by first progressively shifting
or rotating its poles or points of greatest attraction
and then, when the motor has attained a given speed,
alternating said poles, as described.
“2. The method of operating an electro-magnetic
motor herein described, which consists in passing
through independent energizing circuits of the motor
alternating currents differing in phase and then, when
the motor has attained a given speed, alternating cur-
rents coinciding in phase as described.
“4. The method of operating a synchronizing-motor,
which consists in passing an alternating current through
independent emergizing circuits of the motor and in-
troducing into such circuits a resistance and self
induction coil, whereby a difference of phase between
the currents in the circuits will be obtained, and
then, when the speed of the motor synchronizes with
that of the generator, withdrawing the resistance and
self-induction coil, as set forth.”
As will be seen, the distinguishing feature of Claims
1 and 2, if any, consists in a method for changing the
motor of the patents in suit and of the polyphase pat-
ents of the prior art, from a double circuit motor to a
synchronizing motor after it has reached a certain
speed. The matter claimed as new in the patents in
suit is clearly disclosed, and to that is added the idea
and method of removing the difference in phase of the
motor circuits by any known means. (See lines 31 to
37, page 3 of Specification). Practically the same idea
is set out at lines 95 to 99, page 2 of the Specification
of patent No. 511,560, where the patent says the two
resistances are capable of being bodily withdrawn
S
from, or inserted in or varied in the circuits by any
well known means. This is said with reference to
varying the plases of the circuits. To carry out the
idea of patent 401,520 would be but to vary the degree
of the application of the eliminating process above
stated. Whether the claims of patent No. 401,520
describe a combination or are simply for an ag-
gregation, is eliminated from the case by admis-
sion of counsel for defendant, who concede
their validity. They are either invalid, or constitute a
valid patent for what they cover, i. e., a method for
Operating a motor by the means disclosed in the pat-
ents in suit up to synchronism with the generator and
then, by proper devices, removing the difference in
phase of the motor circuits, so that the motor will be
run by the generator only. If, then, the claims are for
a valid combination the synchronizing switch or its
equivalent, must be an essential feature thereof, and it
cannot be said that where an application for a basic
patent is pending, the granting of a limited combina-
tion patent of which the basic patent when granted
would be an essential element abandons the latter to
the public. The two patents are entirely unlike. If
the patents in suit had been granted before that of No.
401,520 and if the latter is a valid combination patent,
it would not be for the same idea as that embraced in
patent No. 511,559, and consequently would not con-
stitute double patenting. In his specification, Tesla
disavows any claim to the invention of the patents in
suit. While this would be of no avail were it apparent
that such was not the case, yet it may aid in constru-
ing the scope of the claims.
But suppose Tesla had taken out the patents in suit
prior to patent No. 401,520, and had embodied in his
apparatus Or devices the well known means for vary-
ing, or Withdrawing from, or inserting in the circuits,
difference in phase set out in lines 95 to 99, page 2 of
patent No. 511,560, would it not have disclosed all the
elements of patent No. 401,520? It seems to me it
would. Here, however, we are met by the proposition
that the claims of the patents in suit do not cover the
9
phase eliminating methods or devices, and in a case
like the present one the specification should not be
construed in that respect to modify them. Tesla being
the inventor in both cases, I can see no reason why he
was required to follow up the specification by making
his claims cover it. Such I do not understand to be
the law. Tesla chose to make that feature the subject
of a new application as he had a right to do. Counsel
for defendant seek to bring this case within the rule
laid down by the Supreme Court in the case of Miller
v. Eagle Mfg. Co., Supra, and that of the cases
decided upon the principles laid down in that
case. In the Miller case the patent first
issued on division so clearly embraces all
the elements of the second patent, that it is unmis-
takably the same invention. The Original application
in the patents before the Court, constitute essential
elements of the limited patent first issued herein, but
do not constitute the whole combination. This was
held to be no dedication to the public in the Dayton
Fan & Motor Case, 106 Fed. Rep. 724, affirmed 116
Ted. Rep. 562; Thompson Houston Co. v. Ohio Brass
Co., 80 Fed. Rep. 712; Palmer v. Brown Mfg. Co., 92
Fed. Rep. 925. If further proof that the patents are
not identical was needed, it may be found in the fact
that No. 401,520 applies as well to a combination with
polyphase motors as with a split plase motor. If on
the other hand patent No. 401,520 should be held void
as an aggregation, that fact would not amount to a
dedication to the public of the inventions of the two
patents in suit, while the applications were pending.
They are in no different situation from what they
would be in had they been issued prior to No. 401,520.
The granting of a void patent for an improvement
upon valid basic patents pending on application, cannot
be held to impair the inventor's rights under the basic
patents. The latter, when granted, are operative from
the date of filing the application. In the case of Thom-
son-Houston Co. v. Ohio Brass Co., Supra, Judge TAFT
speaking for the Court of Appeals for the 6th Circuit,
in passing upon the defense of double patenting based
10
upon conditions of fact practically identical with those
here involved, says “Now it is not material to this
discussion whether these improvements are patentable
or not. They are expressly claimed as improvements
and no attempt is made by the patentee to cover any-
thing but them. If inventions at all, then they are
separable from the old switch and trolley combinations,
and, if they are not inventions, the patents are void
and cover nothing.” It seems clear to me that the
Court would be doing violence to the facts if it should
hold the two patents in suit to be identical with patent
No 401,520. The rule of law as to double patenting
does not apply. This being so, the patents in suit
were in no wise affected by the expiration of the
English patents. They were nothing more than im-
provements upon the basic patents in suit. They apply
to a convertible motor and as such, are outside the
scope of the patent of the Original application.
In the case of Westinghouse Electric & Mfg. Co. v.
Stanley Instrument Co., supra, the Circuit Court of
Appeals for the First Circuit in an opinion rendered
June 14, 1905, has taken this view of the matter, in
which so far as is material in this case, I concur. As
above stated the defense rests its case almost wholly
upon the two points, i. e. (1) Double patenting; (2)
Expiration of British patents. The other matters of
defense suggested have been so often decided adversely
to defendant's position by the courts, some of them by
this court, that I do not deem them entitled to be
further discussed. They do not appeal to me as well
taken.
The finding must be for the complainant. Com-
plainant may prepare a decree and present it.
11
NonTHERN DISTRICT OF ILLINOIs,
* g º SS.
Eastern Division.
I, MARSHALL E. SAMPSELL, Clerk of the Circuit Court
of the United States, for said Northern District of Illi-
nois, do hereby certify the above and foregoing to be
a true and complete copy of the opinion filed of record
in said Court on the 19th day of January, A. D. 1906,
in the cause wherein Westinghouse Electric & Manu-
facturing Company is the complainant and Electric
Appliance Company the defendant, as the same ap-
pears from the original files and records of said court
now remaining in my custody and control.
In Testimony whereof, I have hereunto set
my hand and affixed the seal of said
[SEAL Court at my office in Chicago, in said
District, this 31st day of January A.
D. 1906.
MARSHALL E. SAMPSELL,
Clerk.
[29170]
/ § r •.
223 J ºf W. i., § 3; 3:}- A. c. Motons,—c.
#3; ; ; ; ; º; 511,559.
- ** 3: ... : : * : * : 511,56O.
* W43 - No. 17.
Interlocutory Decree—Circuit Court.
Tesla Split-Phase Motor.
Patents Nos. 51 1,559 and 51 1,560.
Westinghouse Electric & Manufacturing Company,
sºsº
Complainant,
“VS,
Diamond Meter Company,
Defendant.
Interlocutory Decree filed in the U. S. Circuit Court,
Southern District of Illinois, Northern
Division, February 17, 1906.
C. G., Burgoyne, Walker and Centre Streets, N. Y.
[Printed from certified copy.]
In the Circuit Cºurt of the United States
FOR THE SOUTHERN DISTRICT OF ILLINOIS,
NORTHERN DIVISION,
SATURDAY, FEBRUARY 17, A. D. 1906.
Present:—The HoNORABLE J. OTſs HUMPHREY, Dis-
trict Judge.
WESTINGHOUSE ELECTRIC & MANU-
FACTURING COMPANY.,
WS. In Equity.
DIAMöND METER COMPANY.
This cause having been commenced by the filing of
a bill of complaint and the service of the subpoena
upon the defendant, Diamond Meter Company; and
the said defendant having duly appeared and answered
the bill of complaint ; and issue having been joined;
and said cause having come on for final hearing upon
the pleadings and proofs taken on behalf of both
parties; and due consideration having been taken of
all the proceedings herein and of all pleadings, proofs,
briefs and oral argument on behalf of both parties;
Now, therefore, on motion of Kerr, Page & Cooper,
solicitors for the complainant, it is
Ordered, adjudged and decreed that letters patent of
the United States, Nos. 511,559 and 511,560, granted
to the Tesla Electric Company as assignee of Nikola
Tesla on December 26th, 1893, are good and valid in
2
the law ; that the said Nikola Tesla was the original
and first inventor of the improvements set forth in
each of the said patents ; that the complainant, West-
inghouse Electric & Manufacturing Company, a cor-
poration organized under the laws of the State of
Pennsylvania, is entitled to the exclusive right in and
to each of the said letters patent and in and to the in-
ventions described and claimed therein ; that the said
Diamond Meter Company, a corporation organized and
existing under the laws of the State of Illinois, has
infringed upon claims 1 and 2 of letters patent No.
511,559 and upon claims 1, 2, 3 and 4 of letters patent
No. 511,560 aforesaid, and each of them ; that the said
defendant has violated the exclusive right of the com-
plainant under said claims 1 and 2 of letters patent
No. 511,559 and claims 1, 2, 3, and 4 of letters patent
No. 511,560; that the complainant do recover out of
the said defendant the gains and profits by it made
and the damages sustained by the complainant by
reason of such infringement, as well as the costs and
charges in this suit to be duly taxed ; that it be re-
ferred to Robert H. Lovett Esq., residing at Peoria,
Illinois, as Master in Chancery of this Court to ascer-
tain the amount of such gains and profits and the
damages sustained by the complainant by reason of
such infringement ; and * -
It is further ordered, adjudged and decreed that the
complainant on such accounting have the right to cause
an examination to be made of the defendant, Diamond
Meter Company, and any of its officers, agents,
servants, attorneys, workmen and employees, ore temus
or otherwise, and also to cause the production of the
books, vouchers, documents and other papers of the
said defendants or either of them, and that the said
defendant attend by its officers, agents, servants, attor-
neys, workmen and employees, before the said Master
in Chancery from time to time within this district or
elsewhere, as the said Master shall direct ; and
It is further ordered, adjudged and decreed that an
injunction be issued in due form of law against the said
defendant, l\iamond Meter Company, permanently re-
3
straining it, its officers, agents, servants, attorneys,
workmen and employees, and each and every of them,
from making, constructing, vending, using or putting
into practice the said inventions or improvements, or
any of them, stated or specified in claims 1 and 2 of
letters patent No. 511,559, and claims 1, 2, 3 and 4 of
letters patent No. 511,560, or any of them, or in any
manner infringing upon the said claims of said patents,
or any of them, or upon the rights of the complainant
thereunder.
|UNITED STATES OF AMERICA,
Southern District of Illinois, SS. :
NORTHERN DIVISION. W
I, JAMES T. Jon Es, Clerk of the Circuit Court of the
United States for the Southern District of Illinois, do
hereby certify the foregoing to be a true and correct
copy of the Interlocutory Decree, etc., entered in said
court in a certain cause therein pending wherein the
Westinghouse Electric and Manufacturing Company is
the Complainant and the Diamond Meter Company is
the defendant, as the same appears from the records
remaining in my office.
IN TESTIMONY WHEREOF, I have hereunto
set my hand and affixed the seal of
said court, at Peoria, in said Divi-
|SEAL.] sion and District, this 19th day of
February A. D., 1906.
JAMES T. J.ONES,
Clerk.
By -
JOHN L. WATTS,
Chief Deputy.
[29452]
+. * . - • , e - º *
UNIv. of Mich. 633,772.
2 23 MAR 10 006
T4 RECEIVE D. No. 1.
W 53
Opinion—Court of Appeals.
Edgewise Circuit-Breaker Case.
Wright & Aalborg Patent No. 633,772.
f
Westinghouse Electric & Manufacturing Company,
- Complainant-Appellant,
* vs.
Cutter Electrical and Manufacturing Company,
- Defendant-Appellee.
Opinion filed in the U. S. Circuit Court of Appeals,
Third Circuit, February 27, 1906.
C. G. Burgoyne, walker and Centre Streets, N. Y.
[Printed from certified copy.]
In the United States Giºllit COllrt Of Appeals
FOR THE THIRD CIRCUIT.
WESTINGHOUSE ELECTRIC AND MANU-
FACTURING COMPANY,
Appellant,
V. /
*... |
CUTTER ELECTRICAL AND MANUFAC-
TURING COMPANY.,
Appellee.
THOMAS W. BAKEWELL, THOMAS B. KERR (WESLEY
G. CARR, on the Brief), for Complainant.
JoHN P. CROASDALE, JOSEPH C. FRALEY, for De-
fendant.
Appeal from the Circuit Court of the United States
for the Eastern District of Pennsylvania.
Before ACHESON, DALLAS and GRAY, Circuit Judges.
ACHESON, Circuit Judge.
This was a suit in equity brought by the Westing-
house Electric and Manufacturing Company against
the Cutter Electrical and Manufacturing Company, for
infringement by the defendant of letters, patent No.
633,772, granted on September 26, 1889, to the com-
plainant as assignee of Gilbert Wright and Christian
Aalborg, the inventors. The invention relates to de-
2
vices employed for automatically opening electric cir-
cuits when the current passing therethrough is
materially in excess of that which the circuit is in-
tended to carry. The specification states the object of
the invention thus:
The
claims
“The object of our invention is to pro-
vide a circuit-breaker that shall have a large
current-carrying capacity in proportion to the
mechanical dimensions of the device, which shall
be easily brought into operative position and
locked therein, which shall be certainly and
quickly opened whenever the current in the cir-
cuit exceeds that for which the locking mechan-
ism is set, and which shall serve to interrupt
the circuit without danger of injury to the main
contact terminals.”
bill charges infringement of the second and fifth
of the patent, which are as follows:
“2. In an automatic electric circuit-breaker,
the combination with a base and stationary
main and shunt contact-terminals located in ap-
proximately vertical alinement thereon, of a
movable laminated contact member pivoted to
said base, a movable shunt-contact member
pivoted to said laminated contact member, tog-
gle-levers for Operating said movable members,
means for locking the breaker in closed position,
and a tripping device projecting into a mag-
netic circuit.”
“5. In a circuit-breaker, the combination with
main stationary contact-terminals and a station-
ary shunt-terminal, located above the same, of a
pivoted main contact member, a shunt-contact
member pivoted to said main member at a dis-
tance from its axis of movement, means for yield-
ingly holding the movable shunt-contact in a
position in advance of the plane of the faces of
the main movable member when in open position,
toggle-lever mechanism for closing the breaker,
a latch and electro-magnetically-actuated means
for tripping the latch, said toggle-lever latching
the tripping mechanism being located below both
the main and the shunt separable terminals.”
3
We here insert as illustrative of the circuit breaker
in closed position of the patent in suit, figure 1, of the
patent drawings:
6 : /7 ///7/6//7%AA/A30/76
/8 /*7:/Wo. 633 772.
//e. / # =l a;" See 26/899
I | A C/7 O/l/A 7/C
º V * C//ſco/7 A/FAAAz/7
We extract from the specification some paragraphs
descriptive of the apparatus and its mode of opera-
tion.
“The main movable contact member 9 of the
circuit-breaker consists of a body of thin copper
plates of curved form riveted or otherwise fas-
tened together, but having free ends which are


4
beveled with reference to the body portion of
the laminae, so that when the circuit-breaker is
closed or nearly closed they are in a plane
that coincides with or is parallel with the
plane of the faces of the stationary contact-ter-
minals 2 and 3. A thicker plate 10 of greater
length than any of the main laminae is riveted to
said main laminae and is of such form and dimen-
sions that its upper end makes contact with the
plate 6 on the face of the upper stationary con-
tact-terminal 2 when the cicuit-breaker is closed,
and its lower end is permanently in engagement
with the face of terminal 3. The member 9 is
rigidly fastened by any suitable means, such as
bolts or rivets, to the upper end of a supporting
frame 11, the lower end of such frame being
bifurcated and pivoted between the brackets 8
at 12. Pivoted between the arms of frame 11 is
one arm 13 of a toggle-lever 14, the other arm
15 of such lever being part of a casting 16,
which is provided with an operating handle
16a. The casting 16 is mounted upon rod
16b, which is supported by the outer ends of
brackets 8. The arms 13 and 15 of the toggle-
lever 14 are so located and proportioned with
reference to the brush-contact member and the
coutact terminals 2 and 3 that the former will
be brought to its closed or operative position
by a degree of movement that falls a little short
of bringing the centers of the three pivots of
the toggle-lever into alinement, this adjustment
being desirable, in order that when the movable
member of the breaker is released, the toggle-
joint may act readily and quickly under the
action of the opening means to be hereinafter
described.”
“The movable shunt-contact member com-
prises a block 17 of carbon or other substan-
tially infusible conducting material mounted in a
suitable frame 18 and having a metal plate 19,
the face of which constitutes a continuation of
the face of the infusible block 17, so as to engage
with the face of the plate 6 on the stationary
terminal when the circuit-breaker is closed.
This frame 18, carrying the infusible block 17,
is pivoted between two arms 20, a spring 21
being fastened to said frame and extending
downward, so as to bear against a cross-piece or
5
other suitable stop 22, and thus tend to throw
the upper end of the block 17 inward slightly
toward the co-operating stationary block 5. The
two arms 20 are pivoted to the upper end of the
frame 11 at a point corresponding to the middle
of the member 9 and project downward beyond
this point to corresponding points between the
pivot 12 and the point at which the toggle-lever
arm 13 is pivoted to frame 11.”
% + -X- * + 3:
“The operation of the circuit-breaker is as
follows: Assuming that the breaker is in open
position, arms 20 will be held against the stops
20° on frame 11 by the coiled springs 23, and the
other parts will be in the position indicated in
Pig. 3. The operator will now grasp the handle
and press downward upon it, thus moving the
toggle-joint upward and at the same time carry-
ing the laminated contact member inward toward
the stationary terminals, the shunt terminals
and its supporting-arms being carried with the
laminated contact member, so that the shunt
terminals will be first brought into engagement,
and thereafter the movable terminal will slide
on the stationary terminals, and thus tend to
keep it clean and make good contact. As the
movement is continued until the toggle-lever
pivots are brought nearly into alinement, both
the shunt-terminals and the main terminals will
be brought into close engagement, the ends of
the laminae of the latter being deflected suffi-
ciently to make good contact with the faces of
the terminal blocks. When this final position
is reached, the frame 28 and its weight acting
through the projection 31 on the lower end of
the latch 27 will cause the notched end of the
latter to engage the roller 26, and thus hold the
parts in this locked position. If the current
through the circuit-breaker exceeds the amount
for which it is set by the adjustment of the
weight 33 in its frame, such current will
produce a magnetic flux through the body 7 of
magnetizable material, which will have sufficient
strength to draw the armature 29 inward and
downward. When this action takes place, the
projection 30 in the frame 28 strikes against the
latch and throws its recessed or notched end
upward away from the roller 26, whereupon the
6
coiled springs 23 will throw the toggle-joint
downward and, supplemented by the action of
gravity, will throw the circuit-breaker com-
pletely open. The laminated contact member
will obviously first leave the stationary terminal
2. Hence the current will be shunted through
the strips 10 and 25 and the carbon blocks, the
final interruption being effected by the separa-
tion of the blocks. By reason of interrupting
the circuit at a single point, that is, making a
single break and locating that break above the
main terminals, the resulting arcs cannot by any
possibility do any damage to the circuit-break-
er, they being broken upward at a single point
and away from all of the metal parts of the
device.”
In support of the defense of lack of patentable
novelty, the defendant has put in evidence over sixty
prior patents. We fail, however, to discover that any
of these prior patents contains all the elements of
either of the claims here in suit. We are entirely sat-
isfied from the proofs that these claims (two and five)
show patentable novelty and utility. While the inven-
tion of Wright and Aalborg was not a primary one, we
think it was a distinct advance upon the prior art, pro-
ducing new and valuable results.
The defendant's circuit-breaker alleged to infringe is
illustrated, in closed position, by the following cut :
The complainant company maintains that the de-
fendant's circuit-breaker has all the elements of the
second and fifth claims of the patent in suit, namely, a
base 3, stationary main contact-terminals 1 and 2, a
stationary shunt contact-terminal 13 located in ap-
proximately vertical alignment on the base, a movable
laminated contact-member 4 pivoted at 6 to the base,
a movable shunt contact-member 15 pivoted at 16 to
the laminated contact-member, toggle-levers 9, 10 for
operating the movable members, means 23 for locking
the breaker in closed position, and a tripping device

8
25 projecting into a magnetic circuit, and that in other
particulars the defendant's device conforms to the de-
scription of claim five, the shunt contact member (15)
being pivoted (at 16) to the main member at a distance
from its axis of movement, and the spring 17
being the means for yieldingly holding the movable
shunt-contact in a position in advance of the plane of
the faces of the main movable member when in open
position.
The defendant, however, contends that its circuit-
breaker lacks the element “a movable shunt-contact
member, pivoted to said laminated contact-member "
of claim second of the patent in suit, and also lacks
the element “a shunt-contact member pivoted to said
main member at a distance from its axis of movement,”
of claim five of the patent in suit. This contention is
based upon the opinion of the defendant's expert as to
the meaning of the above quoted language of these
claims, a point upon which the experts upon the One
side and the other differ. The position of the defend-
ant's expert is that the language used in claims two and
five requires the pivoting of the shunt-contact member
to the laminated contact or main member at the point
marked B on the above drawing of the complainant's
patented device. Thus the defendant's expert testifies:
“The movable shunt-contact member referred to in
claim 2 means the movable carbon block 17 along with
its supporting arms 20.” And again he says : “In
view of these facts the pivot referred to in claim 2 as
joining the movable shunt contact-member to the lam-
inated contact member, must refer to the pivot B and
to no other.” And referring to claim five he testifies :
“The pivot of the shunt-contact member referred to in
claim five is the pivot B.” He further testifies that
this pivot B is absolutely wanting in the defendant's
structure.
We are not able to give to the claims two and
five the limited meaning contended for by the defend-
ant. Certainly nothing is expressed to restrict these
claims to a pivoting at the point B. The language
9
used is satisfied by the pivoting of the shunt-contact
member at the point A, and the shunt-contact member
cannot be said any more truly to be pivoted to the
laminated contact member or main member by a
pivotal connection at B than by a pivotal connection
at A. Moreover, we think it clearly appears that the
pivotal connection at A is essential to the practical
operation of the patented apparatus, and therefore
the construction of the claims two and five should be
such as to include this indispensable feature. The
function of the movable carbon block is not simply
the adjustment of contact between the carbons 17 and 5,
but also to permit the main contact to close after the
carbon contacts are closed and to open before the
carbon contacts are opened.
Furthermore the interpretation on which the defend-
ant insists brings into the claims two and five as an
element the pivoted arm 20 which is expressly made
an element of claims one and three, but which was
omitted from claims two and five, and presumably was
intentionally so omitted.
Turning to the defendant's circuit-breaker, we
find that the carbon block (15) is pivoted directly
to an arm forming an upward extension of the
main movable laminated contact member. The
defendant however insists that it has wholly dispensed
with the pivotal connection of the long arm 20 of the
patent in suit with the laminated contact member, and
thus has eliminated from its structure the loose and
yielding connection at point B. Is this so 2 As we
have seen, the movable laminated contact member of
the defendant's apparatus is pivoted to the base and
the pivot 6, it is shown, moves in a slot 7, thereby
affording loose motion to the laminated contact mem-
ber independent of the motion of the carbon shunts.
Now, in answer to the question—“Will you please
state the functions of the slot marked 7 in your cut A
of the defendant’s circuit breaker?” the defendant's
expert replied—“The function of the slot marked 7 in
the cut A is to permit a motion of translation of the
10
pivot 6. This permits a motion of translation of the
laminated member 4 before its simple motion of
rotation about pivot 6 during the opening of the
switch.” And the witness further states that “ in
closing defendant’s circuit breaker the carbons come
first into engagement and then by a motion of trans-
lation, permitted by the slot 7, the main laminated
member and the movable carbon move together toward
their respective complementary contacts; after the
carbons have once touched in the closing movement
they continue in engagement.” Obviously the two
devices for securing loose motion to the laminated
contact member independent of the motion of the
carbon shunts are equivalent mechanical arrange-
ments.
But in support of the defense of non-infringement
the defendant further contends that there is no combi-
nation in its apparatus of stationary main and shunt
contact-terminals located in approximately vertical
alinement. It seems to us, however, in view of the
purpose to be subserved and function to be performed,
that these parts are in vertical alinement in any practi-
cal sense. They are in line with each other, and One
above another in a vertical direction ; whatever differ-
ence in alinement in this regard there may be between
the complaimant's apparatus and that of the defendant
is immaterial for practical purposes. With reference
to function, the defendant's contacts, we think, are in
approximately vertical alinement upon any fair read-
ing of the patent in suit.
Again it is contended by the defendant that its de-
vice differs from that of the complainant, by reason of
the absence of means for yieldingly holding the mova-
ble shunt contact in a position in advance of the plane
of the faces of the main movable member when in Open
position. The arrangement of the patented apparatus
is one which permits the surfaces of the carbon con-
tact to meet in advance of the meeting of the main con-
tact surfaces and to break contact last. Now, whilst
the defendant's device does not employ precisely the
11
*
arrangement described in the patent, the purpose to
be attained is accomplished by the defendant in sub-
stantially the same way. The defendant's movable
shunt terminal is set back, but the stationary
companion terminal is set correspondingly forward.
That the complainant pivots only one of its carbons,
while the defendant pivots both of them, is an immate-
rial difference. Either one or both may be pivoted to
secure the desired yielding and turning motion.
Upon the whole case we are of opinion that there is
substantial identity of operation between the com-
plainant's and the defendant's devices, accomplished
by substantially the same means and securing the same
results. We think, therefore, that the court below
should have entered a decree in favor of the complain-
ant upon the second and fifth claims of the patent in
suit.
We have not overlooked the argument based upon
the contents of the file wrapper. We are not able, how-
ever, to find anything therein inconsistent with the in-
terpretation which we have given to claims two and
five of the patent in suit. Claim two stands as origi-
nally formulated, save by the insertion of the word
“located" after “ terminals,” and the word “approxi-
mately ’’ before “vertical alinement.” Claim five was
not amended so as to include the long arm 20 or with
reference to it at all. The changes made in that claim
do not touch the controlling questions before the
Court.
The decree of the circuit court is reversed and the
cause is remanded to that court with instruction to
enter a decree in favor of the complainant upon claims
two and five of the patent in suit, in accordance with
the views expressed in this opinion.
GRAY, Circuit Judge dissents.
Filed, February 27, 1906.
12
UNITED STATES OF AMERICA, SCT. :
I, WILLIAM H. MERRICK, Clerk of the United States
Circuit Court of Appeals, for the Third Circuit, do
hereby Certify the foregoing to be a true and faithful
copy of the original Opinion filed February 27, A. D.,
1906, in the case of Westinghouse Electric and Manu-
facturing Company, Appellant, v. Cutter Electrical and
Manufacturing Co., Appellee, on file, and now remain-
ing among the records of the said Court, in my office.
IN TESTIMONY WHEREOF, I have hereunto
subscribed my name and affixed the .
seal of the said Court, at Phila-
|SEAL] delphia, this 28th day of February,
in the year of our Lord, one thousand
nine hundred and six, and of the In-
dependence of the United States the
one hundred and thirtieth.
WM. H. MERRICK,
Clerk U. S. Circuit Court of Appeals,
Third Circuit.
[29470)
A. C. MOTORS.–C.
511,559.
511,56O.
No. 18.
Opinion—Court of Appeals.
Final Hearing.
Tesla Split-Phase Motor.
Patents Nos. 51 I,559 and 51 I,56O.
*
_*
Westinghouse Electric & Manufacturing Company,
Complainant-Appellee,
VS,
Diamond Meter Company,
Defendant-Appellant.
Opinion filed in the U. S. Circuit Court of Appeals
for the Seventh Circuit, January 31, 1907.
C. G. BURGoyne, Walker and Centre Streets, N. Y.
(Printed from certified copy.)
IN THE
United States Girºlit00urtOfAppeals
FOR THE SEVENTH CIRCUIT.
No. 1314. OCTOBER TERM AND SESSION, A. D. 1906.
DIAMOND METER COMPANY.,
Appellant, Appeal from the
Circuit Court of
the United States,
WS. ) for the Southern
District of Illi-
nois, Northern,
WESTINGHOUSE ELECTRIC & MANU- Division.
FACTURING COMPANY.
CHARLEs E. PICKARD and CHARLEs A. BROWN for
Defendant-Appellant.
EDWARD RECTOR, THOMAS B. KERR and PARKER W.
PAGE for Complainant-Appellee.
Before GROSSCUP, BAKER and SEAMAN, Circuit
Judges:
The decree adjudges that appellant is an infringer
of both claims of the Tesla patent No. 511,559 and of
the first four claims of patent No. 511,560, issued
December 26, 1893, the One for improvements of
method and the other of means of electrical transmis-
sion of power.
The general nature of the new method of No. 511,–
559 is described in the following portions of the speci-
fication and in the claims :
“In certain patents heretofore granted, I have
shown and described a system of electrical
2
power transmission, in which each motor con-
tains two or more independent energizing cir-
cuits through which were caused to pass alter-
nating currents, having in each circuit such a
difference of phase that by their combined or
resultant action they produced a rotary pro-
gression of the poles or points of maximum
magnetic effect of the motor and thereby main-
tained the rotation of its movable element.
In the system referred to and described in
said patents, the production or generation
of the alternating currents, upon the
combined or resultant action of which the oper-
ation of the system depends, is effected by the
employment of an alternating current generator
with independent induced circuits which, by
reason of the winding or other construction of
the generator, produced currents differing in
phase, and these currents were conveyed di-
rectly from the generator to the corresponding
motor coils by independent lines or circuits. I
have, however, discovered another method of
operating these motors, which dispenses with
one of the line circuits aud enables me to run
the motor by means of alternating currents from
a single original source.
“Broadly stated this invention consists in
passing alternating currents, obtained from one
original source, through both of the energizing
circuits of the motor, and retarding the phases
of the current in one circuit to a greater or less
extent than in the other.
“The distribution of current between the two
motor circuits may be effected by induction or
by derivation. In other words, I may pass the
alternating current from the source through
one energizing circuit and induce by such cur-
rent a second current in the other energizing
circuit. Or, on the other hand, I may connect
up the two emergizing circuits of the motor in
derivation or multiple arc with the main circuit
from the source. In either event I make due
provision for maintaining a difference of phase
between the currents in the two circuits or
branches.
“In carrying out my invention I have used
various means for securing this result. For
example, when I induce a current in One of the
circuits from the current flowing in the other, I
3
622222*2&22.
O- _º
J2
O A2
employ a form of converter or bring the two cir-
cuits into such inductive relations as will pro-
duce the necessary difference of phase. Or,
when I obtain the two energizing currents by
derivation, I make the two circuits of different
degrees of self-induction by inserting a resist-
ance or a self-induction coil in One of Said cur-
rents, or I combine these devices in different
ways as I shall more specifically describe here-
* *
9
inafter. * *
“In an application filed, of even date here-
with, I have shown and described other ways of
accomplishing this result, among which may be
noted the introduction of a resistance capable of
variation in each motor circuit, or the use of a
resistance in one circuit and a self-induction
coil in the other. * * *
“What I claim herein is——
“1. The method of operating motors having
independent energizing circuits, as herein set
forth, which consists in passing alternating cur-
rents through both of the said circuits and
retarding the phases of the current in one
circuit to a greater or less extent than in the
other.
“2. The method of operating motors having
independent energizing circuits, as herein set
forth, which consists in directing an alternating
current from a single source through both cir-
cuits of the motor and varying or modifying the
relative resistance or self-induction of the motor
circuits and thereby producing in the currents
differences of phase, as set forth.”
Figure 1 is illustrative of the inductive
method, and figure 2 of the derivative.
zºº. 2^
/247-gay 7 /Wo. 5//5,59.

Ž2. 2 .
P47-gay 7-/Vo.5// 559.
In the specification of patent 511,560 Tesla said :
“My present application relates to the
means employed when the two emergizing
currents are obtained from a single original
Source by derivation.
“In explanation of what appears to be the
principle of the operation of my invention and
of the functions of the several instrumentalities
comprised thereby, let it be assumed that the
two energizing circuits of an alternating
current motor, such, for example, as I have de-
scribed in my patent No. 382,280, dated May 1,
1888, are connected up in derivation or multiple
arc with the conductors of a circuit including
an alternating current generator. It is obvious
that if both circuits are alike and offer the same
resistance to the passage of the current no ro-
tary effect will be produced, for although the
periods of the currents in both circuits will lag
or be retarded to a certain extent with respect
to an unretarded current from the main circuit,
their phases will coincide. If, however, the
coils of one circuit have a greater number of
convolutions around the cores, or a self-in-
duction coil be included in one of the circuits,
the phases of the current in that circuit are
retarded by the increased self-induction. The
degree of retardation may readily be secured
by these means which will produce the differ-
ence in electrical phase between the two cur-
rents necessary for the practical operation of
the motor. If in lieu of increasing the self-
induction of one circuit a dead resistance be
inserted, the self-induction of such circuit ex-
erts a correspondingly diminished effect, and
the phases of the current flowing in that branch

5
are brought more nearly in unison with those
of an unretarded current from the main line and
the necessary difference of phase between the
currents in the two energizing circuits thus se-
cured. I take advantage of these results in
Several ways. For example, I may insert vari-
able resistances in both branches or energizing
circuits and by varying one or the other so as
to bring the phases of the two currents more or
less in unison with those of the unretarded cur-
rent, I may thus vary the direction of the
rotation of the motor. In lieu of resistances
I may employ variable self-induction coils,
in both circuits. Or I may use a resist-
ance in one and a self-induction coil in the other
and vary either or both.
“* * * A reduction of resistance in One
circuit imparts to the motor rotation in one
direction while a reduction of the resistance in
the other circuit will produce a rotation in the
opposite direction. By means of the two re-
sistances, therefore, capable of variation or of
being bodily withdrawn from or inserted in the
circuits by any well known means, a perfect
regulation of the motors is secured. * * *
“In Fig. 7 the usual means for varying the
resistance or self-induction of the motor circuits
at will are indicated by the lever M sliding
Over a series of resistance plates, and by a core
N which is adapted to be moved in and out of
the induction coil S.
“Similar results may be secured by such
a construction or Organization of the motor as
will yield the necessary differences of phase.
T'or example, one set of energizing coils may be
of finer wire than the other, or have a greater
number of convolutions, or each circuit may
contain the same number of convolutions, but
composed of different conductors, as, for in-
stance, one of copper, the other of German
silver. I have represented this in Fig. 6, in
which the coils C are indicated by closer lines
than coils D.”
6
Eigures 6 and 7 are as follows:
xzz & o
7% 7AA/r/V2.3//5662.
Aºy. 2.


7
The claims, of whose infringement complaint was
made, read thus:
“ 1. The combination with a source of alter-
mating currents and a circuit from the same, of
a motor having independent emergizing circuits
connected with the said circuit, and means for
rendering the magnetic effects due to said ener-
gizing circuits of different phase and an arma-
ture within the influence of said energizing
circuits.
“ 2. The combination with a source of alter-
nating currents and a circuit from the same, of
a motor having independent energizing circuits
connected in derivation or multiple arc with the
said circuit, the motor or energizing circuits be-
ing of different electrical character whereby the
alternating currents therein will have a difference
of phase, as set forth.
“ 3. The combination with a source of al-
ternating currents and a circuit from the same,
of a motor having independent energizing cir-
cuits connected in derivation or multiple arc with
the said circuit and of different active resist-
ance, as set forth.
“4. In an alternating current motor, the
combination with field magnets, of independent
energizing currents, adapted to be connected in
multiple are with the conductors of the line
or transmission circuit and a resistance of self-
induction coil in One or both of the said motor
circuits, as set forth.”
In connection with the defense of double patenting,
claim 5 is brought into the case :
“5. In an alternating current motor, the com-
bination with the field magnets or cores, of in-
dependent energizing coils adapted to be
connected in multiple arc with the , line or
transmission circuit, and a variable resistance
or self-induction coil included in one or both of
the motor circuits as set forth.”
If the patents are valid, appellant concedes infringe-
ment.
The defenses are anticipation, want of invention,
double patenting and prior foreign patenting.
8
Respecting anticipation, the facts, as we find them
to be, are summarized in the opinion.
As no anticipation is found, the prior art, with no-
tice of which Tesla was chargeable, is limited to
his own polyphase motor, referred to in the patents in
suit, and to Overbeck's laboratory demonstration of
the equivalency of three modes of producing two alter-
nating currents of differing phases, one mode being
by the use of a two-phase generator, and the other
two being by splitting a single current and causing the
part in one branch (either induced or derived) to
lag. In one of appellant's briefs Overbeck's experi-
ments and appellant's application of them to the
patents in suit are diagrammed thus :
The defense of double patenting is founded on a
comparison of the patents in suit, particularly claim 5
and figure 7 of No. 511,560, with Tesla's patent No.
401,520, issued April 16, 1859, on an application filed
February 18, 1889, for a “method of operating electro-
magnetic motors.”
The specification of No. 401,520 states :
“As is well known certain forms of alternat-
ing current machines have the property, when

9
connected in circuit with an alternating current
generator, of running as a motor in synchro-
mism there with ; but, while the alternating cur-
rent will run the motor after it has attained a
rate of speed synchronous with that of the gen-
erator, it will not start it. Hence, in all instances
heretofore where these ‘synchronizing-motors,'
as they are termed, have been run, some means
have been adopted to bring the motors up
to synchronism with the generator, or approxi-
mately so, before the alternating current
of the generator is applied to drive them.
In some instances mechanical appliances
have been utilized for this purpose. In others
special and complicated forms of motor have
been constructed. I have discovered a much
more simple method of plan of Operating syn-
chronizing motors, which requires practically no
other apparatus than the motor itself. In other
words, by a certain change in the circuit con-
nections of the motor 1 convert it at will from a
double-circuit motor, or such as I have de-
scribed in prior patents and applications, and
which will start under thc action of an alternat-
ing current, into a synchronizing motor, or One
which will be run by the generator only when it
has reached a certain speed of rotation syn-
chronous with that of the generator. In this
manner I am enabled to very greatly extend the
applications of my system and to secure all the
advantages of both forms of alternating-current
moto1'.
“The expression ‘synchronous with that of
the generator', is used herein in its ordinary
acceptation——that is to say, a motor is said to
synchronize with the generator when it preserves
a certain relative speed determined by its
number 9f poles and the number of alternations .
produced per revolution of the generator. Its
actual speed, therefore, may be faster or slower
than that of the generator; but it is said to be
synchronous so long as it preserves the same
relative speed.
“In carrying out my invention, I construct a
motor which has a strong tendency to synchron-
ism with the generator. The construction which
I prefer for this is that in which the armature is
provided with polar projections. The field-
magnets are wound with two sets of coils, the
10
terminals of which are connected to a switch
mechanism, by means of which the line-current
may be carried directly through the said coils or
indirectly through paths by which its phases
are modified. To start such a motor, the
switch is turned onto a set of contacts which
includes in one motor-circuit a dead resistance,
in the other an inductive resistance, and, the two
circuits being in derivation, it is obvious that the
difference in phase of the current in such
circuits will set up a rotation of the motor.
When the speed of the motor has thus been
brought to the desired rate, the switch is shifted
to throw the main current directly through the
motor-circuits, and although the currents in
both circuits will now be of the same phase the
motor will continue to revolve, becoming a true
synchronous motor.” ” ” *
“I believe that I am the first to operate
electro-magnetic motors by alternating currents
in any of the ways herein suggested or described
—that is to say, by producing a progressive
movement or rotation of their poles or points of
greatest magnetic attraction by the alternating
currents until they have reached a given speed,
and then by the same currents producing a sim-
ple alternation of their poles, or, in other words,
by a change in the order or character of the cir-
cuit-connections to convert a motor operating
on One principle to one operating on another,
for the purpose described.”
And the claims are these :
“1. The method of operating an alternating
current. Imotor herein described by first pro-
gressively shifting or rotating its poles or points
of greatest attraction and then, when the motor
has attained a given speed, alternating the said
poles, as described. -
“2. The method of Operating an electro-mag-
metic motor herein described, which consists in
passing through independent energizing-circuits
of the motor alternating currents differing in phase
and then, when the motor has attained a given
speed, alternating currents coinciding in phase,
as described.
“3. The method of operating an electro-mag-
netic motor herein described, which consists in
11
starting the motor by passing alternating cur-
rents differing in phase through independent
energizing circuits and then, when the motor
has attained a given speed, joining the energiz-
inz-circuits in series and passing an alternating
current through the same. -
“4. The method of operating a synchroniz-
ing-motor, which consists in passing an alternat-
ing current through independent energizing-cir-
cuits of the motor and introducing into such cir-
cuits a resistance and self-induction coil, whereby
a difference of phase between the currents in the
circuits will be obtained, and then, when the
speed of the motor synchronizes with that of the
generator, withdrawing the resistance and self-
induction coil, as set forth.”
The defense of prior foreign patenting is based on
Sec. 4887, U. S. Rev. St. as it stood when the patents
in suit were issued :
“Section 4887. No person shall be debarred
from receiving a patent for his invention or dis-
covery, nor shall any patent be declared invalid,
by reason of its having been first patented or
caused to be patented in a foreign country, un-
less the same has been introduced into public
use in the United States for more than two
years prior to the application. But every pat-
ent granted for an invention which has been
previously patented in a foreign country shall
be so limited as to expire at the same time with
the foreign patent, Or, if there be more than one,
at the same time with the one having the short-
est term, and in no case shall it be in force more
than seventeen years.” -
The foreign patent on account of which the patents
in suit are said to have expired, is British patent No.
6527 of 1889. It is substantially the same as the do-
mestic patent No. 401,520.
The patents here in suit, as well as the basic patents
relating to the rotating field motor-principle, have been
in litigation repeatedly. In connection with the vol-
uminous record and briefs we have read the following
cases: Westing/house Co. v. Granite Co., 103 Fed. 951;
I2
Westinghouse Co. v. Granite Co., 110 Fed. 753; West-
inghouse Co. v. Royal Weaving Co., 115 Fed. 733;
Westinghouse Co. v. Wational Electric Co., (C. C.,
E. D. Wis., not reported); Tesla Electric Co. v.
Scott (6 Janney, 97 Fed. 588; Westing/ouse Co.
v. Dayton Co., 106 Fed. 724; Dayton Co. v.
Westinghouse Co., 118 Fed. 562; Westinghouse. Co. v.
Catskill Co., 94 Fed. 868; Westinghouse Co. v. Catskill
Co., 110 Fed. 377; Westinghouse Co. v. Catskill Co.,
121 Fed. 831; Westinghouse Co. v. Stanley Co., (C. C.,
D. Mass., not reported); Westinghouse Co. v. Stanley
Co., 133 Fed. 167; Westinghouse Co. v. Stanley Co., 138
I'ed. 823; Westinghouse Co. v. Stanley Co., (C. C., D.
Mass., not reported); Westing/louse Co. v. Roberts, 125
Fed. 6; Westing/louse Co. v. Mutual Zife /ms. Co., 129
JFed. 213; Westinghouse Co. v. Electric Appliance Co.,
133 Fed. 397; Westinghouse Co. v. Electric Appliance
Co., 142 Fed. 545; Jefferson Co. v. Westinghouse Co.,
139 E'ed. 385.
Appellant's counsel urge their case with thorough-
mess and zeal, and they properly insist upon their
right to our independent judgment of the merits of
each defense as now presented.
BAKER, Circuit Judge, delivered the opinion of the
court :
Applications for the patents in suit were filed on
December 8, 1888. Shallenberger on April 20, 1888,
and Ferarris on April 22, 1888, made disclosures that
void these patents unless the fact be that Tesla made
the improvements in question at an earlier date. May
15, 1888, Tesla applied for patents, which were granted
as Nos. 555,190 and 511,915, on the inductive split-
plase motor. This form was then regarded by Tesla
and his attorney as more important than the deriva-
tive split-phase motor. Shortly afterwards the West-
inghouse Company began negotiations for the pur-
chase of the Tesla motor inventions; arrangements
were consummated in July ; and Tesla thereupon went
to Pittsburg to instruct the Westinghouse engineers.
Delay from May to December is thus accounted for.
13
Tesla has no pecuniary interest in this litiga-
tion. His testimony is positive that he oper-
ated the “IExhibit Motor ’’ in all of the ways
involved in these patents as early as September,
1887. The “Exhibit Motor ‘’, as we understand it to
have stood in September, was a rotating-field motor, the
ends of those windings were loose. These four wires
could be coupled to the four wires of a two-phase al-
ternating current generator, and the motor would then
run in the manner described in the basic patent of May
1, 1888. These four wires could also carry, in turn,
each of the phase-splitting means covered by the pat-
ents in suit, and when so equipped could be coupled
to the two wires of a single-phase alternating current
generator, and the motor would then run as an induc-
tive or a derivative split-phase motor. So the exhibit
is not regarded as proving anything beyond its capa-
bility of having built into it the phase-splitting devices.
But the prolonged cross-examination, in Our judgment,
does not derogate in the least from the direct testimony
that the exhibit was used as stated.
Brown, an electrical engineer, in 1887 and 1888
was financially concerned in the inventions that Tesla.
was then making. He has no interest in this litiga-
tion. When Tesla showed him the polyphase motor
designed to be coupled to the four wires of a two-phase
generator, he raised the objection that it would not
work in connection with the system of single-phase
generators and line-wires which were then in general
use throughout the country. His testimony is positive
that shortly afterwards, in the “summer " or “sum-
mer or fall” of 1887, Tesla fully disclosed the meth-
ods and means of the split-phase motor by the use of
the “Exhibit Motor.” We are not impressed by the
parallel columns of alleged discrepancies between his
testimony and that of Tesla. Advocates’ argument is
familiar that if witnesses agree in details their stories
have been fixed up, and if they disagree in details
neither is to be believed in respect to the vital matters
about which they are in accord. So far as we can
judge from the printed page, Brown was a reliable wit-
14
ness. It should not be doubted that he saw at some
time what he says he saw. The Court of Appeals for
the Second Circuit, 121 Fed., 831, on a record less
complete than that presented here, concluded
that Brown was mistaken in the year,
that he first saw the split-phase motor in the
“ summer ‘’ or “summer or fall ” of 1888. We find
that Brown was not mistaken, for these reasons : He
fixes the place at Tesla's laboratory, 89 Liberty
Street, New York; Tesla gave up this laboratory and
went to Pittsburg in July, 1888, stayed a year, and
when he returned to New York took quarters in a
different street ; and Brown relates the time to the
early days of the polyphase invention ; as Tesla began
filing applications for split-phase improvements as
early as May, 1888, for Brown to have seen for the first
time the “Exhibit Motor' operated as a split-phase
motor at the Liberty street laboratory in any summer
or fall, the year 1887 must be accepted.
Nellis ran a stationary engine at 89 Liberty street.
Tesla rented power from his employer. Nellis some-
times stayed at night to furnish power for Tesla and
was admitted to the laboratory. His testimony
appeals to us as that of an uneducated, entirely disin-
terested and honest witness. He says that he saw
Tesla operate the “Exhibit Motor * with two wires,
holding one in each hand and touching one and then the
other to the motor, whereupon he would turn one way
and then reverse. Of course the motor would not
operate unless the circuit was closed; but neither
Nellis's failure to see accurately nor his mistakes in
narrating what he saw should deprive his testimony of
the effect that the exhibit was operated as a two-wire
rotating-field motor. The time was in the fall or
winter. The only fall or winter during which these
things could have occurred at 89 Liberty street was
that of 1887.
The absence of other physical exhibits is accounted
for by a fire in Tesla's laboratory. By mere chance
the “Exhibit Motor ’’ was not destroyed. It was at
15
the Patent Office at the time for use in the interference
case between Ferarris and Tesla.
Page, attorney for Tesla in securing patents, is con-
vincing in his testimony that Tesla fully disclosed the
split-phase inventions, including those of the patents
in suit, in the early part of April, 1888. He
fixes the time positively as being later than
the 6th and earlier than the 18th of that month.
A canceled check fixes April 6th as the day he paid
the final fees on the basic patents which were issued
on May 1st. He is sure that Tesla had not then in-
formed him of the split-phase methods and means, be-
cause when told he was greatly perturbed over the
question of having the basic patents withheld from
issue on the date already fixed upon. After consulting
with his then partners in New York, he finally went to
Washington to confer with an associate. This date is
fixed by a hotel charge as being the 27th. He is posi-
tive that the disclosure was more than a week earlier,
because it was made in connection with Tesla's discus-
Sion with him of an application for a patent on an al-
ternating current regulator, issued October 9, 1888.
This application was filed April 24, 1888. A bill for
services and disbursements shows that the drawings
were paid for on the 21st, and that the written part of
the application was completed on the 18th.
This is not a case where witnesses, years afterwards,
are brought in to antedate an alleged anticipation by
the efforts of unaided memory. Certain time-marks
are indisputably fixed. The only escape would be to
discredit the accounts of the occurrences themselves.
Furthermore, it is not as if the witnesses were now
called for the first time. Tesla and Page particularly
have had this question brought to their attention re-
peatedly, beginning with the Ferarris interference,
when the matters were fresh in mind.
An incident in connection with the purchase of
Tesla's motor inventions we deem corroborative. In
1887–8 Shallenberger, since deceased, was an electrical
engineer and inventor in the employ of the Westing-
house Company. Independently he invented poly-
16
phase and split-phase motors. When Tesla's poly-
phase patents of May 1st came to his motice, he was
grievously disappointed. On behalf of his company
he went to New York in June to look into the advisa-
bility of buying the Tesla inventions. The pur-
chase, consummated on July 7th, included the
polyphase patents, the application of May
15th for inductive split-phase motors, and
the inventions of the patents in suit, for which applica-
tions were to be filed later. If Shallenberger had not
been convinced by his investigation that Tesla had
anticipated him in every feature of both sorts of
rotating-field motors, it seems to us incredible that he
should have failed to apply for patents and should
have advised the purchase of the Tesla inventions.
There is no direct evidence to put into the opposite
scale. Two negative circumstances are counted on by
appellant to prove that Tesla's story is false. Anthony
was electrical engineer, expert and inventor for the
Mather company of Manchester, Conn. He visited
Tesla's laboratory in January or February, 1888. Tesla
was at Manchester in March with a view to interesting
the Mather company in the polyphase motor. On
neither occasion did Tesla disclose to Anthony that a
rotating-field motor could be built that would operate
when connected to a single-circuit line. Tesla says
that he did not, because Brown had instructed him
“not to give away any new ideas '' and to confine his
explanations to the polyphase motors that were sub-
mitted to Anthony to test. The other circumstance
is that he did not make an earlier disclosure to his at-
torney. But if he disclosed when Page says he did,
the alleged anticipations fail. Tesla gives two reasons.
One is that, if he told Page of the two-wire motor be-
fore the patents for the four-wire motor were com-
pleted, Page might think the two-wire motor of so
much greater importance that he would not bestow
the care on the patents in hand that he otherwise
would. The other is that he delayed in telling his
attorney in the belief that the two-wire motor
patents would detract from the commercial
17
value of the four-wire motor patents. It is
Only unexplained silences that support the argu-
ment that because Tesla did not tell he had not then
produced the split-phase motors. And the argument
is based on an inconclusive inference, for accomplish-
ment and silence may co-exist. We regard the ex-
planations as probable. If improbable, the resulting
inconclusive inference does not assail the credibility
of Brown, Nellis and Page. On the whole record we
have no doubt that Tesla antedated Ferarris and Shal-
lenberger. * -
The prior art, therefore, is limited to Tesla's poly-
phase invention and to Overbeck's demonstration.
The polyphase invention,
“ considered in its essence, was the production
of a continuously rotating or whirling field of
magnetic forces for power purposes by generat-
ing two or more displaced or differing plases of
the alternating current, transmitting such phases,
with their independence preserved, to the motor,
and utilizing the displaced phases as such in
the motor.” &
Westinghouse Co. v. Granite Co., 103 Fed.
951, 110 Fed. 753.
Overbeck had proven as a fact in the science
of electricity that two alternating currents of
differing phases could be obtained not only from
two out-of-step sources of generation but also by
splitting a single current and inserting means of
retardation in One of the branches. The argument
is that no invention was required to uncouple the
motor of the May 1st patents from the four wires
of the two-phase generator and then to couple up
the same motor to the four wires that had been split
from the single phase generator. Dy referring to the
illustrations taken from appellant's brief it will be
seen that the assumption is made that the methods
and means of the patents in suit resulted from the
substitution above the line X------------ X of the
rotating-field motor of the patents of May 1st for
Overbeck's current-testing instrument. And the as-
18
sumption is attempted to be justified by italicising
the words from the specification,
“I have, however, discovered another method of
Operating these motors, which dispenses with
One of the line circuits and enables me to run
the motors by means of alternating currents from
a single Original source.” -
If the assumption were accepted, we should not
be ready to deny invention. Patents are granted for the
advances in the useful arts, not for increments of knowl-
edge. On the basis of the assumption, this case would
not stand as a transference of useful means within an
art, or from art to art ; it would be art's first applica-
tion of an empirical teaching of science. Whether the
accomplishments of the patents in suit would have
been developed under the hands of an ordinary work-
man skilled in the electric motor art, or whether they
would have lain unknown unless first visulized in the
imagination of an inventor, are questions concerning
which the experts differ antipodally. If we had doubts
as to which experts voice the saner view, the success
and value of these improvements should face us to-
wards invention.
But when the specifications, drawings and claims
are taken together and examined in connection with
the actual conditions relating to the practical question
of transmitting power by electricity, we think the as-
sumption is entirely unwarranted. Before the im-
provements of the patents in suit were made, a power
company, could build a dam, put in turbines to run
dynamos, and erect line wires to carry the current to
consumers. By commutators at the power plant the
alternating could be converted into a one-way current,
which would run direct current motors. Their power
and the radius within which they could be used were
quite limited. The synchronous alternating current
motors would not start on application of the current
and would not continue if their loads threw them out
of synchronism with the generator. When Tesla
devised the polyphase motor, meaning thereby the
19
rotating-field motor whose motor circuits are of the
same electrical character and value, it will be remem-
bered that Brown's objections in substance was that
factory owners could not be expected to buy such
motors unless and until power companies should re-
organize their existing plants and put in additional
sets of line wires. Though a power plant and line
wires and a motor in a customer's factory, when con-
nected, may be viewed as a unit electrically, practi-
cally they are separate. The practical, the commer-
cial problem that Tesla solved was to put on the
market a rotating-field motor that consumers of elec-
tricity could purchase and attach to the single alternat-
ing current wires of a power plant. The polyphase
and the split-phase are both rotating-field motors.
In that sense, and in that sense only, is the
italicized sentence from the specification, when read
with all the context, to be taken ; for the polyphase
and the split-phase motors differ from each other
radically. While the motor circuits of the polyphase
must be of the same electrical character and value,
the motor circuits of the split-phase must not be of
the same electrical character and value. Take the
split-plase motor of figure 6. To produce it a poly-
phase motor would have to be re-constructed by
making one of the motor circuits of finer wire than
the other. The same is true when copper is used for
one motor circuit and German silver for the other. On
examination it is found that every form of split-phase
motor illustrated, described and claimed in the patents
in suit differs in the same way from the polyphase
motor. Couple the two motor circuits of a split-
phase motor to the line circuits from a two-phase gen-
erator, and, assuming the differences of phase in the
motor circuits and in the line circuits to be the same,
the split-phase motor will not work; the polyphase
works in that connection and in no other.
Finally, want of invention is urged from the fact
that at about the same time Ferarris, Shallenberger,
Anthony and Jackson produced the same results in
the same way. The argument involves the leveling of
20
Tesla to a mechanic skilled in the electric motor art
by assuming that the gentlemen named are of the
mechanic rank. That Ferarris and competent patent
authorities did not deem the assumption true as to
him, is proved by Ferarris's applying for and taking
out patents in European countries, and by his inter-
ferences with Tesla's applications. Shallenberger
obtained a patent on an electric-meter mechanism, in-
volving the split-phase principle. Apparently he
thought this was all that was left open to him out of
his independent inventions of the polyphase and
split-phase motors. The tentative suggestion in
the letter of Jackson, a university professor
of physics, may be dismissed as a rebound from
the disclosure in Anthony’s letter to him. An-
thony’s letter, March 11, 1888, is accepted as showing
that he then comprehended, if he had not then prac-
tised, the principles of the split-phase motors. His
previous examination and study of Tesla's polyphase
motor induced, we believe, the train of thought and
experiments which he now says did not involve inven-
tion. His letter, however, leads us to conclude that
he was of a different opinion at the time, and that he
would have applied for patents on split-phase motors,
had he not been restrained by a sense of professional
honor. The contemporaneous Opinions of these
highly trained men we value as corroboration. We
think they were right in ranking themselves inventors.
And it is not unprecedented that the spirit of a par-
ticular period should bring forth within the same lines
a galaxy of geniuses.
Our judgment on this record is that, to these antic-
ipated methods and means of producing a new and
useful practical result, we cannot deny the quality of
invention.
Was Tesla prevented from receiving and the govern-
ment from granting the monopolies of the patents in
suits by reason of the prior issuance of patent No.
401,520 2. The applications for the patents in suit
were pending when the application for patent No.
401,520 was filed. The statute requires the applicant.
21.
to point out clearly and to claim distinctly the new
thing of which he is asking a monopoly. These con-
siderations must be borne in mind in examining the
application which became patent No. 401,520. The
specification and claims of this patent, as set forth in
the statement, show that synchronous motors, poly-
phase motors and split-phase motors were recognized
as being then old in the art. Each form was therefore
open to the use of the public so far as patent No. 401,–
520 was concerned. If some one was otherwise em-
powered to shut off the free use of synchronous motors
or of polyphase motors or of split-phase motors, that
was another matter. What was distinctly pointed out
and claimed as new was a method of operating syn-
chronous motors. One trouble with them had been
that they were not self-starting. Tesla said : Take a
synchronous motor ; apply to it, for starting purposes,
the rotating-field of either a polyphase or a split-phase
motor ; when synchronism is attained, cut out the ro-
tating-field ; and there is the synchronous motor in
full operation.
Counsel argue that, particularly in view of claim 5
and figure 7 of patent in suit No. 511,560 and of the
parts of the specification relating to such claim and
figure, no invention was required to discover the
method of patent No. 401,520 and therefore the inven-
tion that was covered by No. 401,520 was the invention
Inow claimed under the patents in suit.
The variableness in the dephasing devices, described
in No. 511,560, is for the purpose of regulating and
reversing a split-phase motor. Differences of phase
must be maintained if the split-phase motor is to operate.
Motors, to be synchronous motors, must be supplied
with single-phase current. Claim 5 and figure 7 have
no “switch mechanism, by means of which the (full
and unimpeded) line-current may be carried directly
through the motor coils or indirectly through paths by
which its phases are modified,” as is required in No.
401,520. But even if the mechanical combination
necessary to the method of No. 401,520 were described
in No. 511,560, invention may have been involved in
22
prescribing the method of use claimed in No. 401,520.
As the Supreme Court said in Carnegie Co. v. Cambria
Co., 185 U. S. 403,
“If the mere fact that a prior device might
be made effective for the carrying on of a par-
ticular process were sufficient to anticipate such
process, the absurd result would follow that, if
the process consisted merely of manipulation, it
would be anticipated by the mere possession of
a pair of hands.”
So, looking only collaterally at the question of in-
ventiveness in the method of No. 401,520, we are not
prepared to reject the presumption which is carried by
the grant. -
But if the premise that no invention was displayed
in the method of No. 401,520 were true, the conclusion
would not necessarily follow that some other invention
was covered by that patent and that such other inven-
tion was the invention described and claimed in the
patents in suit. From what has already been said our
conclusion may be gathered that No. 401,520, whether
good or bad, does not touch the patents in suit.
“Every patent granted for an invention which has
been patented in a foreign country’” shall expire at the
same time with the foreign patent. The invention
which was patented in British patent No. 6,527 of
1889, being the invention patented in No. 401,520, was
not the invention for which the patents in suit were
granted.
The decree is
AFFIRMED.
A true Copy.
Teste :
EDWARD M. HoDLOWAV,
(SEAL) Clerk of the United States Circuit
Court of Appeals for the Sev-
enth Circuit.
[31591]
r 77
# , , ; ; a * * ** = ... "...” . .
7 ºf - 6 * : * * 469,809.
* JUN 3 :%;" g
W52 No. 8.
Opinion—Court of Appeals.
On Final Hearing.
Self-Regulating Transformer Case.
Stanley Patent No. 469,809.
Westinghouse Electric & Manufacturing Company,
.essee • Complainant-Appellee,
VS.
Montgomery Electric Light & Power Company,
- Defendant-Appellant.
Opinion filed in the U. S. Circuit Court of Appeals,
Second Circuit, April 30, 1907.
c. G. BusaoyNE, Walker and Centre streets, N. Y.
[Printed from certified copy.]
United States(it'lit00urtofAppeals,
FOR THE SECOND CIRCUIT.
THE WESTINGHOUSE ELECTRIC &
MANUFACTURING COMPANY.,
Complainant-Appellee,
WS.
THE MONTGOMERY ELECTRIC LIGHT
& POWER COMPANY.,
T)efendant-Appellant.
Before WALLACE and TOWNSEND, Circuit Judges, and
HoDT, District Judge.
GIFFORD & BULL for Complainant.
KERNAN & RERNAN and A. C. FOWLER for Defendant.
This cause comes here on defendant's appeal from an
interlocutory decree of the United States Circuit Court
for the Northern District of New York, on final hear-
ing, sustaining the validity, and finding infringement
by defendant, of the first and third claims of com-
plainant's patent No. 469,809, granted to it as assignee
of William Stanley, Jr., on March 1, 1892. The court
below originally granted an order for a preliminary in-
junction, 131 Fed., 86, which was reversed by this
court, 139 Fed., 868, and subsequently, on final hear-
ing, the court below entered a pro forma decree for
complainant, from which this appeal is taken. Prior
2
opinions of the Circuit Court and of this court, con-
struing and sustaining this patent, in the suit by this
complainant against The Saranac Lake Electric Light
Company, and known as the Saranac case, are reported
in 108 Fed., 221, and 113 Fed., 884. The opinion of
Judge COLT, in the First Circuit, denying a motion for
a preliminary injunction against the Stanley Elec-
tric & Manufacturing Company, is reported in 117
Fed., 309. A subsequent opinion of Judge LACOMBE
in the suit by this complainant against The
Orange County Gas & Electric Company, known
as the Orange County case, is reported in 119 Fed.,
365.
Towns END, Circuit Judge. The following statement
may conduce to a clearer understanding of the Stanley
Batent and the questions herein involved :
The invention relates to a system of electrical dis-
tribution and regulation especially adapted to incan-
descent light plants. The problem which confronted
the inventor, Stanley, was presented by defects in ex-
isting systems which resulted in variation in the lumin-
osity of individual lamps which variations of pressure
due to variations in the number of lights in use. Stan-
ley discovered that the cause of this variation was a
lack of harmonious action between the dynamo and the
converter. He had to deal with the antagonism be-
tween leakage at the dynamo and self-regulation of
secondary pressure in the transformer. Increasing the
length of the primary wire decreased leakage, but di-
minished self-regulation. Decrease in the length of
the primary wire improved regulation, but increased
leakage. Stanley further discovered that these antag-
onistic relations could be co-ordinated to each other by
the use of a certain length of wire on the primary of
the converter, and he told the public in his patent that
the wire should be
“of such length that reacting self-inductively
upon its own magnetic circuit, the average
counter-potential so produced approximately
equals the potential applied to the primary cir-
cuit.”
3
Of this statement, Judge COXE says in his opinion,
Supra :
“In other words, if wire be wound on the
primary coil until the ammeter practically shows
no current when the secondary current is open,
the result will be the invention of the Stanley
patent.” t
In addition to this disclosure, Stanley further stated
in the succeeding portion of the same paragraph, the
method employed by him in practice for accomplishing
his inv
rule.
The
ention, which method involves the so-called CPR
portion of the specifiications of the patent in
suit containing the above Statements and the statement
of the
The
C9R rule is as follows :
“In the construction of the coils P and S the
following principles are to be observed. The
first thing to be determined is the length of the
primary wire. This should be of such length
that reacting self-inductively upon its own mag-
netic circuit the average counter-potential so
produced approximately equals the potential
applied to the primary circuit. When so con-
structed an ammeter will practically show no cur-
rent when the secondary circuit is open. To
obtain these results in practice I use the follow-
ing method : I first choose the percentage of
efficiency to be obtained. Then having selected
a type of magnetic circuit affording as great
magnetic conductivity as possible I apply such a
length of primary conductor that acting self-
inductively upon its core the difference of the
counter-potential and applied potential multi-
plied by the current in the converter shall equal
the predetermined loss of energy inevitable in
conversion and vary the length of primary wire
until the desired results are attained.”
claims in suit are as follows:
“1. In a system of electrical distribution,
and in combination, an alternating-current dy-
namo and converters electrically connected with
4
the main-line conductors in multiple arc and or-
ganized to transform the current in the main
conductors into currents of less potential and
greater quality in the secondaries, each con-
verter made with a primary coil containing such
length of wire exposed to magneto-electric in-
duction that when operated by the dynamo
with which it is to be used with its secondary
circuit open the electrical pressure and counter
pressure in its primary circuit shall be equal
with incandescent lamps or other translating de-
vices in the secondary circuits, substantially as
and for the purposes set forth.
“3. In a system of electrical distribution
and in combination, an alternating-current dy-
namo and converters organized to transform the
current generated by the dynamo into currents
of less potential and greater quantity at or
near the points of consumption electrically
connected with the main line conductors in
multiple arc and having their primary
circuits constantly closed, each converter
adapted to the dynamo Operating the system
by making its primary coil of such length that
when supplied with its full proportionate share
of the entire normal electro-motive force of
the machine its secondary circuit being open
the electrical pressure and counter pressure in
its primary circuit shall be approximately equal
with the translating devices in the secondary
circuits of the converter to be cut out of the
circuit when not in use without the introduction
of any resistance in the place of them substan-
ially as and for the purposes set forth.”
We are satisfied upon all the evidence that the
length of wire given by Stanley C*R rule does not
substantially differ from, and is not inconsistent with,
the disclosure of the discovery of the principle of
co-ordination between the generator and the primary,
For reasons to be hereafter stated, it is unnecessary
in the disposition 6f this case to discuss at length the
utility or accuracy of the disclosure as to length of
wire, as compared with the particular rule or method
used in practice, or the alleged discrepancies between
them, or to what extent the former is to be imported
into the other and made a part of it. As we under-
5
stand it, Stanley told the world in the earlier part of
the paragraph that in Order to obtain automatic regu-
lation the wire must be given a length which, under
certain open circuit conditions, would show practically
no current or a zero current, and by this C*R rule he
showed the method by which he secured the length of
wire essential to the accomplishment of the desired
results.
Twenty-five pages of defendant's brief are devoted
to a discussion of its construction of the patent in
suit. It is unnecessary to discuss all the arguments
advanced in support of this construction. The fallacy
of these contentions, and the fact that they proceed
upon a misconception of defendant's position and our
decisions, is indicated by the following quotations
from defendant's brief:-
“After stating in his specification that the
primary circuit should be of such length that an
ammeter will practically show no current when
the secondary is open, the patentee says: “To
obtain these results in practice I use the follow-
ing method,' and then the C*R rule is given,
clearly indicating that the part of the specifica-
tion which the complainant now relies upon will
not give these results in practice, but that to
obtain these results in practice, the C*R length
of wire must be secured. The complainant,
however, wishes now to reject the C*R rule and
the length of wire given by it.”
The first argument of defendant, whereby the rule is
made a part of the claims in suit, is stated by counsel
in its brief as follows:
“This court in its opinion on motion for pre-
liminary injunction in the case at bar set at rest
this question (the question whether the rule was
part of the claims in suit), holding that in its
decision in the Saranac case, it did not mean
that the rule was to be regarded as an element
of the combination, but ‘ that the first and third
claims of the patent were for combinations
6
which broadly included his invention.' The ex-
press finding of this court in the Saranac case
that the Stanley patent is limited to the length
given by the Stanley C*R rule which this court
read into the claims to save them from anticipa-
tion, and whicl therefore is a different length
from that given by the claims, stands, and has
not been modified in the slightest, and not being
so modified is still controlling against the com-
plainant.”
In support of this argument counsel for defendant
refers to the statement in our opinion on the motion for
preliminary injunction that we were not convinced that
in the Wagner transformer used by defendant there
was the length of primary wire required by the Stanley
patent, and that infringement was not so clearly estab-
lished as to justify a preliminary injunction. Counsel,
therefore, claims that this statement shows that
“ this court did not agree with the lower court
that this rule which it applied, was the ‘Stanley
rule or some other method which would give the
length of wire' which this court sustained the
Stanley patent for,” &c.
There is no foundation in fact or in our opinion for
this assertion. Both of the judges who sat in said
cause were of the opinion that the construction
adopted by the court below was the correct one. But
we reversed the order of the court below with great
hesitation, upon the expert testimony as to the sand-
wiched coils in defendant's transformers and the con-
flicting theories upon other abstruse electrical prob-
lems, and gave the defendant the benefit of the doubt
raised, not as to the construction of the rule or its ap-
plication, but because, as stated in our opinion :
“The experts are in flat contradiction upon
the question of infringement, and in view of the
large importance of the controversy, the rights
of the parties should be reserved for decision
until the final hearing of the cause.”
7
Counsel for defendant quoted from our opinion on
the motion for preliminary injunction as follows:
“We are not convinced that in the Wagner
transformer used by defendant there is the length
of the primary wire required by the Stanley
patent.”
Counsel then says:
“This court could not have meant :
“‘We are not convinced that in the Wagner
transformer used by defendant there is such
length of primary wire that there is practi-
cally no current when the secondary circuit
is open,’
for it was expressly admitted, so this Court
could only have meant that it was not convinced
that the Wagner transformer had the length of
wire given by the Stanley C* R rule.”
On the contrary, this is exactly what the court did
mean, namely, that it was not convinced that the length
of primary wire used by the defendant corresponded
to the length of wire by which the co-ordination of the
transformer to the generator was secured, according to
Stanley's statement of his discovery, and that the co-
ordination between the generator and the primary was
secured by such a length of wire that under certain
conditions the current would be practically zero when
the secondary was open.
Counsel for defendant insists that
“ the part of the specification immediately pre-
ceding the Stanley C* R rule and in the same
paragraph with it is imported into the C* R rule
and made a part of it.”
while in our opinion we say: “The rule was not to be
regarded as an element of the combination.”
The defendant, quoting certain portions of said de-
cision, but omitting our statement in regard to the
rule, says as follows:
“The decision of this court was not to the
effect that the Stanley invention is for co-ordin-
S
ating the transformer to the generator with
which it is to be used by any length of wire,
but that it is for co-ordinating the transformer
to the generator by means of ‘the length of the
primary wire required by the Stanley patent,’
that is “ the Stanley length.’ It is evident,
therefore, that this court regarded ‘ the length
of the primary wire required by the Stanley
patent,' or the ‘Stanley length,’ as some peculiar
and definite length, and did not regard the Stan-
ley invention as covering any length of wire by
which the transformer was co-ordinated to the
generator.”
A reference to the claims in suit shows that the wire
of suitable length was for such a length exposed to
magneto-electric induction that when operated by the
dynamo on open circuit the electrical pressure and
counter-pressure in the primary circuit should be
equal.
In the prior opinions of this court in the Saranac
case the character and scope of the discovery
and invention of the patent were discussed and defined,
and the validity of the claims in Suit was sustained.
In the opinion in this cause on appeal from the order
for preliminary injunction we said as follows:
“The decision of this court in Westinghouse
Co. vs. Saranac Lake Co., was in effect that
Stanley contributed to the prior art the dis-
covery that the automatic and constant regula-
tion of the pressure of the alternating current at
the secondary terminals depended upon the co-
ordination of the transformer to the generator,
and the invention that this could be effected by
means of a primary wire of suitable length;
that the first and third claims of the patent were
for combinations which broadly included his in-
vention ; and that because an order to instruct
those skilled in the art how to ascertain the
length of the primary wire he had formulated in
his patent one rule for doing so, the rule was
not to be regarded as an element of the combi-
nations.”
9
In the opinion of Judge LACOMBI, in the Orange
County case, he said, referring to our opinion in the
Saranac case, as follows:
“It seems to this court that the Court of
Appeals found that the claims of the patent
were for a combination of the elements therein
set forth, of which one element was a primary
coil having a length of wire equal to what would
be found to produce the indicated results when
applying the Stanley rule.”
In this stateument we concur.
It may, therefore, be considered as determined by
the prior decisions in this circuit that as Stanley was
the first to discover and suggest that the difficulties
encountered in attempting to secure self-regulation
were due to an improper length of wire in the primary
coil; and to disclose a method and means for de-
termining the proper length of wire, thereby pro-
portioning the energy absorbed by the generator to the
energy consumed, he was entitled to cover broadly any
transformer having substantially such length, irre-
spective of the method by which such length was
ascertained. It follows from this conclusion that the
Stanley C*R rule, which states the method of secur-
ing the proper length, is not to be regarded as an ele-
ment of the combination of means of the claims in
suit, which include such wire, and that the question of
infringement depends on whether the primary of de-
fendant's transformer has substantially such a length
of wire as would have been obtained if its length had
been determined by the Stanley C* R rule.
Upon further examination of the prior opinions
bearing On the questions raised herein, and exhaustive
consideration of the briefs and arguments of counsel,
we remain of the opinion that the claims in suit are
for combinations which include the invention of a
transformer which produces the automatic regulation
of the Stanley patent by the use of a length of wire
substantially the same as that which would result from
following the method stated by him in his general rule
10
applicable to all conditions, and that a transformer
having such a length of wire is an infringement of the
claims in suit, irrespective of the process or rule or
method by which the result may have been obtained.
That the defendant, in support of its argument, mis-
states the position of complainant, appears from the
following statements in the respective briefs :
DEFENDANT.
Referring to the Hop-
kinson equation, counsel
says :
“The complainant, see-
ing the force of the situa-
tion, now says that it is
inot necessary to have in a
COMPLAINANT.
“I admit, as emphat-
ically and as broadly as
words can make it, that
mo transformer infringes
which does not have on
its primary a length sub-
stantially such as it would
be if such length had been
determined by the Stanley
(J2 R rule.”
transformer the corre-
sponding length of wire
given by the C*R rule.”
In the disposition of the questions herein we
have proceeded upon complainant's admission, quoted
above, and for that reason have found it unnecessary
to pass upon defendant's claim founded on its state-
ment of complainant's contention as to the C*R rule
length of wire.
In view of the fact that anticipation and lack of pat-
entable novelty are not res adjudicata as to this de-
fendant, the further defense is here pressed that the
Stanley rule, so far as defendant follows it, was an-
ticipated by Kennedy and Hopkinson.
This contention is based on the fact that the Stanley
C*R rule did not appear in Stanley's original specifi-
cations of November 26, 1885. It is claimed by com-
plainant, however, that the Stanley discovery and in-
vention as construed by this court was disclosed in
said original specifications, and was then embodied in
a transformer. And the date of the Stanley invention
was found to be in 1885 by Judge COXE in the Saranac
case, and by the Commissioner of Patents in inter-
ference proceedings of Stanley against Slattery.
11
The Kennedy patent and articles were fully con-
sidered and disposed of by the court below and by this
court in the Saranac case, and need not be recon-
sidered. -
But, so far as concerns the Hopkinson equation,
whether the Stanley invention be given the date of
1885 or 1888 is immaterial, for the following reasons:
Like the other alleged anticipations relied upon in
the Saranac case, it fails to state that One
“may determine the proper length of the pri-
mary coil by connecting the transformer in cir-
cuit with the dynamo with which it is to be
used, and then winding on wire until the loss
indicated by the formula C*R, with the sec-
ondary circuit open, equals a certain loss of
energy.”
It appears from defendant's testimony that they did
not use the Hopkinson formula until 1891 or 1892,
some years after Stanley had explained why and how
his rule disclosed a practicable method for securing
self-regulation.
The Hopkinson equation is not mentioned or dis-
cussed by complainant's expert, and we are, therefore,
left without any means of determinating the accuracy
of Hopkinson's statement that “for practical purposes
these equations are really sufficient.” But upon the
testimony of defendant’s experts it is shown to have
mo bearing on the issues herein. Thus, defendant's
expert, Nipher, says : -
“It was these equations which gave the pub-
lic—those skilled in the art—the information
which they needed concerning the nature of the
problem, and the work of Rankin Rennedy and
Zipernowski and Deri furnished the practical
application of these principles, at the same time
giving specific and sufficient instructions con-
cerning the exact method of procedure, in order
to realize the conditions in practice.”
But this court has already considered and disposed
of these alleged anticipations, and has held that they
failed to disclose the invention in suit.
12
Again, as defendant's expert, Nipher, says :
“The length of the wire wound on in this
method of design (Hopkinson's) is entirely dif-
ferent from that which would be obtained by
following the Stanley rule.”
That is, the defendant relies on the disclosure by
Hopkinson both as a defense against infringement,
on the same ground on which it claims non-infringe-
ment by its own transformer, and also as an anticipation.
It claims, on the One hand, that upon its construction
of the Stanley rule, which admittedly makes it indef-
finite and misleading and gives an impracticable length
of wire, the defendant does not infringe, because its
construction, in which wire of a different length is
used, follows the practicable method disclosed by
Hopkinson, which gives the proper length of wire.
And, on the other hand, it claims that its method
anticipates the Stanley rule because it follows the
prior Hopkinson equation.
The defendant, therefore, is in this dilemma:
If the Hopkinson equation, as Nipher, defendant's
expert, asserts, gives a length of wire different from
that specified by Stanley, then, as we are of the opin-
ion, as hereafter shown, that the defendant uses the
Stanley length, the contention that it uses the length
of the earlier Hopkinson equation is not sustained.
And if the Hopkinson equation could be so construed
as to give the Stanley length of wire, then the admis-
sion that it merely gave the information by means of
which Rankin Kennedy, &c., furnished a later practical
application of these principles, as stated above by de-
fendant's expert, then Hopkinson is relegated one step
further back than the post-art publications already
disposed of in the earlier opinions of this court.
We find nothing new in this record which indicates
that any of the so-called prior art adversely affects the
status of the patent in suit. '. The single question to
be disposed of on this appeal is that of infringement.
13
Infringement is denied, on the following grounds :
“Defendant uses a different length of wire
than that prescribed by the patent, by reason of
using less iron in the core.”
In support of this proposition defendant states that
the length of wire used in its transformer has a length
in the primary coil over fifty per cent. greater
than the length in the complainant's Great Barrington
transformers, and contends that if the Great Barring-
ton transformers have not the C* R length, then the
Hopkinson length antedates the C* R length, whatever
the latter may be. For reasons stated above the
alleged priority of the Hopkinson length equation is
immaterial.
The defense that as defendant uses a core of lesser
weight, and, therefore, a length of wire different from
that used by complainant, it does not use the length
of wire of the Stanley rule, is immaterial because, as
the Court of Appeals has held :
“The amount of wire for a given character
of current supply cannot be stated in feet and
inches because it is, to some extent, dependent
upon other things, such as the quality of iron
employed in the core, the quality of copper used
in the coils, the shape of the transformer and
the way the coils are applied.”
The curve sheets illustrating tests of complainant's
transformers and of defendant's transformers in the
Saranac case and in this case, show that in each the
currents are substantially the same, and that the cur-
rent falls with an increase in the number of windings
until it reaches the point where the current is practi-
cally zero, this being the point where by the applica-
tions of the C* R rule the winding should cease. And
while different lengths of wire were used on certain of
the complainant's Westinghouse transformers, and on
the infringing Saranac transformers, and on defend-
ant's transformers, yet in each case the lengths of
14
A
wire cease at the same point or just beyond the
knee of the curve.
Again, it appears from a comparison of such of
complainant's and defendant's transformers as have
substantially the same length of wire, that the re-
spective transformers are substantially alike in ma-
terial, size and shape of cores. In fact, the assertion of
complainant's expert, Waterman, that the defendant’s
transformers are in their essential particulars like those
held to infringe in the Saranac case, does not seem to
be seriously disputed. º
The construction of defendant's transformers in the
Saranac case is stated by Judge COXE in his opinion
therein, where, referring to the defendant’s plant, he
Says :
“Bach converter is made with a primary coil
containing such length of wire exposed to mag-
neto-electric induction that when operated by
the dynamo with which it is to be used, with its
secondary circuit open, the electrical pressure
and counter pressure in its primary circuit are
approximately equal.”
A further defense is that
“ defendant's transformers have their coils sand-
wiched, which not only gives a different
length of wire from the patent, but does not re-
quire such transformers to be adapted to the
dynamo, except as to pressure, and, therefore,
they do not infringe.” e
Great stress is laid by counsel for defendant on
this feature of Sandwiching. As explained by the ex-
pert for defendant, it consists in the “subdivision of
the coils into sections to avoid excessive electro-motive
force between the adjacent parts.” By this method of
construction the primary and secondary coils are
brought close together and the amount of leakage is
reduced. The result of Sandwiching the coils is to
require a greater length of wire. No reference is made
in the Stanley patent to Sandwiching, and its practical
15
importance in constructing transformers was not at
first appreciated by the complainant company, and it
did not adopt this construction until the year 1892.
The plausible argument is made that as Stanley
used a large core to prevent leakage, while the defend-
ant produces the same result by Sandwiching its coils,
necessarily using in so doing different lengths of wire,
that thereby the necessity of correlating the transfor-
mer to the dynamo as to “frequency and electrical
pressure,” as in the Stanley construction, is dispensed
with, and that infringement is thus avoided.
But it appears from the testimony of defendant's ex-
perts that this sandwiching and its desirability to pre-
vent leakage was well known long prior to the inven-
tion in suit, in fact that it was a common expedient
for that purpose. We fail to find any suggestion that
this arrangement dispenses with the necessity of “co-
Ordination of the transformer to the generator" by
the use of a primary wire of suitable length. And we
do not understand that in these circumstances a mere
difference of length of wire by reason of sandwiching
is any more material upon the question of infringe-
ment than differences in other parts of the apparatus.
We again repeat, but with our italics, what this court
said in the Saranac case :
“The amount of wire for a given character
of current-supply cannot be stated in feet and
inches because it is, to some extent, dependent
upon other things, such as the quality of iron
employed in the core, the quality of copper used
in the coils, the shape of the transformer, and
the way the coils are applied.” -
The whole argument of defendant in support of non-
infringement proceeds upon the theory that the Stan-
ley rule is misleading and impracticable.
Thus Prof. Gray, one of defendant's experts, having
testified as to his construction of the rule (a point to
be hereafter discussed) says as follows:
“X-Q. 29. And, in your opinion, no transfor-
mer will have what you term the Stanley length
16
of wire unless it has on its primary a length
which will give these impossible results. Is
that right 2
“A. I believe the instructions in the patent
lead to such an impossible conclusion.
“x-Q. 30. So that when you say that the
Wagner transformers which are involved in this
controversy do not have the Stanley length of
wire, you would make the same statement con-
cerning every transformer that was ever built 2.
“A. When I say that the defendant's trans-
formers do not contain the Stanley length of
wire, I mean practically that the length of wire
used in defendant's transformers could not have
been obtained by the Stanley rule, because I
consider the rule to be entirely an unworkable
O1162. e
“x-Q. 31. Being an entirely unworkable rule,
in your opinion, of course no transformer that
was ever built could have what you are con-
struing to be the Stanley length of wire 2
“A. I consider that no transformer that was
ever built, and successful, could have been de-
signed by this rule.”
The substantial and difficult proposition presented
by the argument of defendant on the question of in-
fringement, therefore, is that the commercial transform-
ers do not have the Stanley C* R length of wire, or, in
other words, that the patent is invalid for lack of in-
vention. We have carefully studied the argument in
defendant's appendix on this point, and we think each
proposition there advanced is met by the discussion in
complainant's brief, supported by the facts proved or
admitted on the record. That Stanley made and dis-
closed an invention of a practical, working device must
be assumed ; that upon defendant's construction of
the patent a transformer built according to its instruc-
tions would be a useless one is admitted.
The decision as to infringement depends upon the
construction to be given to the phrase “loss of energy
inevitable in conversion,” occurring in the following
passage in the specifications :
“To obtain these results in practice I use the
following method : I first choose the percentage
17
of efficiency to be obtained. Then having selected
a type of magnetic circuit affording as great mag-
netic conductivity as possible I apply such a
length of primary conductor that acting self-in-
ductively upon its core the difference of the
counter-potential and applied potential multiplied
by the current in the converter shall equal the
predetermined loss of energy inevitable in con-
version and vary the length of primary wire until
the desired results are attained.”
This language is construed by the counsel and ex-
perts respectively, as follows:
COMPLAINANT,
“I contend that this
phrase means the copper
loss in the primary before
the secondary is applied
to the core ; or, as elec-
tricians say, the primary
open-circuit copper loss.”
DEFENDANT.
“I understand the pas-
Sage referred to to give
instructions to wind on
wire until the copper
losses in the primary equal
the total loss inevitable in
conversion. I was careful
to point out in my direct
testimony that I con-
sidered the inventor to
believe that there was no
iron loss, and also that
there was a probability
that the energy lost in the
secondary was considered
to be part of the energy
converted and was there-
fore not included in the
loss appearing in the
primary. * * *
“x-Q. 25. You use the
term “loss inevitable in
conversion to include
what ?
“A. I consider that the
losses inevitable in con-
version include the copper
losses in both coils, and
also the iron loss.”
Defendant's construction is supported by expres-
sions in Stanley's original specification and by indica-
18
tions that he knew very little about iron losses in the
core of the transformers and it is claimed that he
thought the copper losses were the same for all loads.
Prof. Nipher, expert for defendant, says on this
point as follows:
“The loss of energy inevitable in conversion
he thought was a definite loss, constant for all
loads, and the same as for no load, and could,
therefore, be determined by finding the CPR
loss in the primary coil with the secondary cir-
cuit open. The Stanley rule was based on this
fundamental misconception of the action of the
transformer.”
And it is claimed that because of his ignorance in
these regards he made an impracticable and misleading
rule, which, if followed, upon one interpretation would
give a length of wire which would be “ridiculously
small ”, or upon another interpretation “enormously
large.”
The arguments in support of these assertions are
elaborately discussed in the opinions of defendant's
experts. It is admitted that the language used is
capable of either of the constructions claimed.
The construction contended for by defendant as-
sumes that the meaning of the term “predetermined
loss of energy inevitable in conversion ” means the
“ total losses in the transformer,” including therein
“the full load primary and secondary copper loss
plus the iron loss, which is the same at no load as
it is at full load.”
The result of this construction is to make the pat-
entee say that after having selected in advance a per-
centage of efficiency, which, it is agreed, is the ratio
between the input and output at full load, say, for ex-
ample, in a 1000 watt transformer, an efficiency of 95
per cent. which would mean a loss of 50 watts, that
then the C*R rule means that the constructor
is to wind on wire on the primary until the copper loss
19
thereon shall equal the total copper and iron losses of
energy inevitable in conversion.
This construction is explained by one of defendant's
experts as follows:
“The patentee had a theory that there were
no iron losses, that the iron core was a friction-
less vehicle, and that the losses were all in the
copper, and he thought that when the wire was
wound on until the copper loss was equal to the
predetermined loss, that he would have a trans-
former which, when completed, would deliver
the power put into it, less the copper loss on
open circuit. He thought he had taken into ac-
count all the losses in the transformer.”
As stated above, there is evidence outside the patent
indicating that the patentee in common with the gen-
eral public was ignorant in regard to iron losses in the
core at this period.
One of the experts for defendant says as follows :
“If the patentee’s ideas as above recited had
been correct, if there had been no iron loss, and
if the copper loss had been constant throughout
the entire working limits of the converter, this
Stanley rule would not have been absurd, any
more than it would have been absurd to build a
buggy with the friction on one axle equal to the
friction on four axles, if the other three axles
had no friction. In the Pope letter of Dec. 10th,
1886, he has stated that this iron core ‘should
have such capacity as to act as a frictionless
vehicle to transform all the lines of force from
the primary to the secondary circuit, without
loss in transmission.’”
The forcible arguments in support of complainaut's
construction, as stated above, accord with the funda-
mental principles of interpretation applied to this
patent, and enforced by its inventive results, and with
the reasoning which would naturally be attached to the
language used.
20
These arguments may be summarized as follows :
1. It is settled by the decisions of this court that
the patentee contributed the discovery of the
dependence of regulation of pressure upon the co-
ordination of generator and transformer, and the inven-
tion of a means by which this could be effected, namely,
the primary wire of suitable length, and disclosed a
method for determining that length with mathematical
exactness by a rule applicable to all conditions, in-
cluding the winding on of wire until the loss indicated
by the C* R, with the secondary circuit open, shall
equal a certain loss of energy.
2. The defendant's construction would nullify the
invention by making the patentee direct either the use
of a wire so short that it would burn up the trans-
former, or so long that it would extend for hundreds
of miles. This construction, as shown above, would
further make the patentee say that the copper loss on
the primary with the secondary open should be equal
to all loss of energy with the secondary applied,
although the whole context indicates that the patentee
was dealing with open circuit conditions.
3. Counsel for defendant in the Saranac case assumed
that complainant's construction was the correct one.
In their brief they say :
“There can be no question that ‘ the prede-
termined loss of energy inevitable in conver-
sion,’ here referred to, is the wire or resistance
loss in the primary coil at no load, and that the
rule deals merely with the primary coil and can
have nothing to do with the total loss in the
converter when the secondary coil had been
adapted thereto. * * * It is merely the
wire or copper loss in the primary coil when
there is no secondary coil, or with the second-
ary circuit open.”
4. It is the duty of the court to adopt such a con-
struction of a meritorious patent as shall sustain rather
than invalidate it.
21
As this court said in Dixon-Woods Co. vs. Pfeifer,
55 Fed., 390, 395:
“The patentee told the trade of which he was
a member by what mechanical means breakage
of glass in the process of annealing could be
saved; in other words, how to anneal glass
better and more economically. His patent de-
scribed clearly enough the ways in which bal's
and the operative mechanism should be con-
structed and operated, and the glass should be
conveyed through the leer. He did not know,
or he did not tell, why the new method would
produce better results. He simply told how to
construct a machine which carried the glass
through the leer on a level, and saved much
breakage; but he ought not to lose the statutory
benefits which would certainly belong to him if
he had seen and described the philosophy of his
machine accurately.”
The patentee stated a rule to be applied with refer-
ence to the only losses which at the time of the in-
vention were capable of ascertainment by the then
known devices of the art. It now appears that by the use
of later appliances other losses, of which the patentee
was ignorant, may be measured and ascertained. But
we do not understand that this ignorance of the
patentee, or the knowledge subsequently gained from
the prior art, affects the status of the invention in suit.
The fact that the patentee did fully understand the
principle upon which his invention operated, or that
his instructions were capable of a construction which
would render the patent impracticable and defeat its
purposes, should not deprive him of the benefit of a
meritorious invention, provided it appears, as is
found in this case, that the patent sufficiently
disclosed to those skilled in the art the
cause of previous defects and a new and useful
discovery and invention, by means of which they might
be successfully overcome. He is not to be deprived of
the benefit of his invention because he may have been
mistaken in his statement of the reasons why the re-
22
sult was secured, or may have failed to correctly state
the theory of their operation.
As to the use of the word “predetermined,” we think
that the inventor merely meant that the constructor
should ascertain beforehand by experiment, as com-
plainant's expert says and explains, certain “physical
properties, with regard to which the construction is to
be worked out.”
5. It is admitted that at the time of the Stanley in-
vention there was no means of measuring the loss of
energy inevitable in conversion, other than the copper
loss on Open circuit. -
Complainant quotes from defendant's brief in the
court below the following statement:
“Stanley knew nothing about the loss of en-
ergy inevitable in the core. If he did, he said
nothing about it in his patent, and he had no
way of measuring the loss of energy inevitable
in the core at the time his patent was applied
for. The only way in which the loss of energy
inevitable in conversion can be measured is by
a watt-meter. At the time of Mr. Stanley's in-
vention and application for patent there was no
watt-meters.”
Therefore, when Stanley instructed the constructor
to wind on wire until the loss of energy was provided
for, he must necessarily have referred to that loss
which was capable of being ascertained by measure-
ment. Neither the patentee nor the public, at the
date of the invention, could have estimated losses
other than the copper losses on the open primary.
6. That defendant's construction should not be
adopted is further indicated by the following
statements in complainant's brief, which seems to be
sufficiently established by the record. Referring to
defendant’s construction, counsel for complainant
Say S :
“If the phrase means this, then a transformer
built according to the Stanley rule will violate
23
every line of the specifications outside the rule.
It will have an over-saturated core, whereas the
specifications say that an under-Saturated core
is ‘indispensable.’ It will have a leakage cur-
rent of enormous and even destructive volume,
whereas the specifications say that the leakage
current will be ‘practically zero.’ It will not
have anything like the efficiency chosen, although
the rule says its object is to produce a trans-
former having the chosen efficiency. It will not
be self-regulating, although the object of the
rule is to produce a self-regulating transformer.
It will not be a transformer at all, because it will
burn up the minute the current is turned On.
It will be nothing but a piece of electrical fire-
works.”
It remains to consider the further argument of de-
fendant that if the length of the primary wire on the
core were such that the ammeter would show practi-
cally no current, as specified by Stanley, there is noth-
ing in the specifications to show when to stop, because
the rule fails to state definitely how much is to be
wound, and that a person might wind an amount of
wire which would be so short that it would burn out,
or so long that it would stretch to hundreds of miles.
But upon an examination of the curves shown in com-
plainant's exhibits, it appears that the number of turns
when the working point is first reached is the time
when you first get the Zero result, as stated in the pat-
ent. If you continue to wind more wire on, the trans-
former would not by self-regulating. Therefore, the
patent may fairly be interpreted as directing the con-
structor to stop at that point. º
We think the contention of complainant that the
patent does, in substance, say “wind on wire until
the current becomes “practically Zero, and then stops,”
is correct because it says “that the primary coil should
have such length that an ammeter would practically
show no current,” etc., when the secondary circuit is
open, and practically says, or may fairly be construed
to say, that the wire should be wound on until the
desired result is secured.
24
• Counsel for defendant asserts that under the in-
structions of the patent the constructor may continue
to wind on such a great number of turns, after reach-
ing the Zero point, that the transformer would not be a
commercial one, and claims that the length is “in-
definite and indeterminate ’’ because “the number of
turns may be so great, and in consequence thereof the
resistance of the primary coil so high, that the trans-
former would not be commercial.” We think it has
been sufficiently shown that no such construction is
justified.
In view of the importance of the interests involved,
we have given exhaustive consideration to the various
intricate technical questions raised, and have endeav-
ored to dispose of them in the light of the invention
derived from the expert evidence. It is, of course,
possible, in view of the conflicting claims upon the
electrical problems and tests involved, that we may
have been mistaken in some of the attempted state-
ments of fact. But, in any event, we are satisfied that
under the construction of the patent originally adopted
by this court in its opinion in the Saranac case, in-
fringement by defendant is abundantly established, and
that the adoption of the view as to anticipation and
construction now contended for by the defendant
would practically result in a reversal of our former
opinions.
The decree is affirmed with costs.
A true copy.
WM. PARKIN,
(SEAL) Clerk.
[32225]
-- •
tº wiv of anºr”:
2 2 3
7-3. SEp 28 190°
W/33 469,809.
No. 11.
Injunction Order—Circuit Court.
Self-Regulating Transformer Case.
Stanley Patent No. 469,809.
Westinghouse Electric & Manufacturing Company,
* Complainant,
VS.
Middleburg & Schoharie Electric Light, Heat and
Power Company,
Defendant.
Order for Preliminary Injunction filed in the U. S. Circuit
Court, Northern District of New York,
August 4, 1908.
C. G. BURGoyNE, 72 to 78 Spring Street, New York,
(lníteo $5tates Circuit Court,
NORTHERN DISTRICT OF NEW YORIK.
WESTINGHOUSE ELECTRIC & MANU-
FACTURING COMPANY, ET AL.,
WS.
MIDDLEBURG & SCHOHARIE ELECTRIC
LIGHT, HEAT & POWER Co.
Motion for preliminary injunction in suit to restrain
infringement of claims 1 and 3 of U. S. Letters Pat-
ent No. 469,809 to William Stanley, Jr., for Improve-
ments in systems of electrical distribution.
FREDERICK P. FISH and J. EDGAR BULL of counsel
for complainant.
C. W. EDWARDS and DORR BUCKMAN of counsel for de-
fendant.
RAY, District Judge.
It is unnecessary to say that a preliminary injunc-
tion will be denied when the validity of the patent
sued upon or infringement by defendant is doubtful.
The validity and scope of the patent in suit has
been adjudicated by the Circuit Court of Appeals in
this Circuit, Westinghouse V. Montgomery &c. 153
Fed. R. 890. The patent is for a broad not a narrow
invention and covers “combinations including a con-
verter in which the length of wire in the primary coil
is substantially the same as would result from follow-
ing the so called ‘Stanley rule, and are infringed by a
converter having such length of wire irrespective of
the rule or method by which such length was ascer-
tained.” The moving papers disclose that a Pitts-
burg Company made the alleged infringing trans-
formers used by the defendant some six years or so ago.
Experts have examined them so far as they can be ex-
2
amined while in use, and pronounce them an infringe-
ment giving their reasons for the conclusion reached.
The complainant also produces before me a trans-
former or converter made by that company and pur-
chased of it as one of its regular and standard trans-
formers kept in stock and sold as such with a label
or card thereon stating that it was sold from stock.
The complainant says it was delivered within three
or four hours after its purchase. This is not denied.
But defendant says it was made that day after being
ordered and was a special transformer made to con-
form to the particular order given. That it infringes
is not denied. I do not credit the affidavits that this
was made to conform to a special order after the
order was given. I think it was one of the trans-
formers being made and sold by the Pittsburg Com-
pany and that in all its essentials it represents the
transformers used by the defendant. The defendant
has not given information as to the construction of
the transformers used by it and says first that two
weeks was not time enough in which to do this, and,
second, that it is not compelled so to do as the com-
plainant's evidence is not sufficient to show infringe-
ment by the defendant. I think the complainant has
made a complete prima facie case of infringement
and that defendant has failed to meet or undertake
it, having had ample opportunity so to do if it can,
however the defendant is supplying light to a large
town and I am not disposed to inconvenience the
people or impose a hardship on the defendant. It in-
timates a purpose to review any adverse decision this
Court makes.
The complainant is entitled to a preliminary injunc-
tion but under all the circumstances and to give an
opportunity to appeal and obtain a proper review the
issue and operation of same is suspended until No-
vember 15, 1908. This will give time to change the
transformers in use if that course is thought wise.
So ordered.
|489]