Brief for Petitioner — General Electric Co. v. Jewel Incandescent Lamp Co.

Supreme Court brief1945

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1 mes - Supreme Oourt, U. i

Fie copy: |S").

a SEP 24 1985

IN THE , ES (ete

Supreme Court of the United States

OCTOBER TERM, 1946

= an No. 46...

GENERAL ELECTRIC COMPANY,” ce

eae tad ae . Petitioner,

Vs. y se ) e

JIEFWEL INC. ANDESCENT & AMP COMPANY. of al.,

z oa ye ee oa Re eiaeeres ; s

sunpomynaneaapamanenenmaen ‘ —

BRIEF: FOR PETITIONER 2

0 z 4 7

. ” ALEXANDER C. NEAVE,

| HARRY R. PUGH, Jr.

v JOHN H.. ANDERSON,

* Counsel for Petitioner.

: ° , : - tion jae ay as,

INDEX. ee >

; af

o. + «PAGE

OPINIONS OF THE Courts Brow elaevkess Ba ee eo :

JURISDICION vee pice ate vatleaghescesbepteeeegeet ie” 1

STATEMENT OF THE “Case er ca ee ue ae i ciee dae te eis 2.

‘The diffusing bulb. ‘problem Pictriisnekrisek 2 wi

The Pipkin Invention and‘Paterit « (ceneeenens pie. i

The: Cldims 22.00.00 s soe aes hae 9

Tue Lower Cth RT Decisions: UPON THE PirKIN Patext a

SPECIFICATION OF Exrors eee ve eeeeeense .. ida 13

cu MENT: See i: Sass ee | a ‘

3 1. eee s adalitad: bulb was new and hig patent

‘is valid ver. the prior art ee eee 18

Phe: ‘Kennedy Patent. ee etd fice Fite eb sate a k - - Se

Be a prior disclosures ot ‘“double treatineyt”’ . 21 ap

(a) The Wood Patent. : 2 SOOT Le eaxaeee am ~

(b)- The ether ‘ ‘double treatment”? dis-

closures add. —~ to the Wood |

: disclosure. Cake hindaed chi ow gn ate a

| The: District Court erred in wales that these

‘‘double treatment’’ disclosures invalidated |

the Pipkin Patent for a new ‘inside frosted a

fo un cdeouctuengnd ieee aman ED ROPE ee

II, The Pipkin Claims Are in the Proper Technical ;

Lo ee ee sees emaecedeeeseeseeres eo me

“TIT. Defendants’ Bulbs Infringe the Pipkin Patent: 37.

-PAGE

Basis of the District Court’ 8 siagnes: of non-

; infringement bad bonaen ones chet erry 39 . |

The claims are not limited to the proches r

jes _ disclosed in the patent . (sabwnatcabaanseue 40

Defendants” rhethod is in- 1 fact the two-step

method deseribed. by iaccaas punpwarenasi - 43.

. ConcLusion, socee' Bea co du seniecsece Makan en. 48

| TABLE OF CASES ,

Alien Filter v. Star Metal (C. C. A. 3), 40 F. 24,252,

1 254, certiorari denied 282 U.S. 848 ......... porte i

Ansonia Brass Co. v. Etectrical si. dae Co., 144 U. S..

11, 17, ERS POPTTC TOPS PVE TERTEPTET PTS ‘2 30, 31

‘Diamond Rubber Co. v. Cunddiiaaies Co., 220 U.S. ;

ME GO aii ees Nye da nakecgss cectec ves esewes on (> ee

| Dunn v. Toronto, 259 Fed. 258, : 261 (C.C. A. 6) er ~ &

Bibel Process. Bei v. ieesiite & Dalarto

“Paper Company, 261. U.S. 45, 50, 66, 68+... .. ne 536; 49

Expanded Metal C2. ¥. Bradford,, 214 U.S . 366, 381. - 16. .

ra General Electric v. aka, 82 F, (2d) 100, 101, 103.

2, 11, 17, 18, 28, 32, 41:

- General Electric Co. v. . Wabash Appliance Ons 304 +

: General. Electric v. Wabash, 93 F. (2d) 671, 673; cer-

. tiorari denied 303. U. S. 641; rehearing denied 303%,

TE oko wa vce ree Phe. Bre % Fs 97, 41

Goodyéar Co. v. - Ray-0-Vae ¢ Co. 391 U. 8. 275, 279 . 16

ae ili

PAGE

Hookle ss Fastener'Co, LY. , Pee mitoe Mfg. Co., 75 F. 2d

264, 266 (C. C..A. 2). ‘Ct ous Obes uk eid aek wanes 42

lily +. athe 14 Hew. 156,108...

Loom Co. v. Higgins, 105 U.S, 580, 591... .. ea

. Maurer v. Dickersoy, 113 Fed. 870,874 (C.C.A.3) 2. = 43

Potts v. Creager, 155 U.S. $07, QB... 022.8 eee 48

Strong ¥. Noble, 6 Blatehford 477 Lieoee hes kh des 31

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—_~—~ - a res es ema, *

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IN THE Spare

ian » Conant of the United States

a OCTOBER TERM, 1945 | |

— 46

Bes ee GENERAL tee Comrany,

; Pe titioner, ;

vs.

= ieee INCANDESCENT lume Company,

ETAL. |.

Reosdadinie.

—_-— —— —4

BRIEF FOR PETITIONER ©

-- Opinions of the Courts Below :

The opinion of % District Court®R. 327)*-is reported :

at 47 F. Supp. 818. The 6pinion of the, Circuit Court of

_ Appeals -(R. 349) is — at 146 F. (2d) 414.

Jurisdiction

Peg “This i is a it for ‘pall infringement which is before

this Court. on a writ of certiorari to the Cireuit Court of —

~ Appeals for the Third Circuitcunder the provisions of ‘Sec- _

‘tion 240(a)- of the Judicial Code as amended: by,the act of :

“February 13, 1925, c. 229 (28 U. S. Vode, See..347).

+ The judgment of the Circuit Court of Appeals for the .

Third Circuit, which petitioner seeks té have reversed, was

* The record was printed for use in he Circuit Court of

Appeals as-a-“‘ Joint Appendix’’ to the briefs, arid the page

“numbers are followed by an ‘‘a’’, which we have omitted.

for convenience’ in citing the record i in this brief: .

- 2 ‘

p | rs

pre December 23, 1944 (R. 353). The petition for writ

of certiorari was filed March 20, 1943 and’ was grauted April

9 1945. i

we, > oy ete » Statement of the Case’ ~

This is a suit for isitvinigemient of Pipkipp pate No.

1,687,510, issued to the petitioner, and entitled ‘‘¥Electrie

Lamb Bulb’’ (R. tat. This patent will expire in October *

of this year. - e )

Theré is a conflict of decision hetween different Circuit

‘ourts of Appeals as fo the validity of this ‘patent. Prior,

‘to the present case, it had been ‘held valid and infringed

by the Citeuit Court of Appeals for the Sixth Circuit’ in

General Electric v. Save, 82 F. (2d) 100, and by. the Cireuit:

_ Court of Appeals for the Setond Cireuit-in General Electric

v. Wabash, 93 F. (2d) 671; certiorari denied.303 U.S. 641.

In the nitesent ease this patent was held invalid—errone- _

ously we believe—by the Cireuit Court of Appeals for the

‘Third Circuit, iflirming the District Court.

The diffusing bulb. wiitie ee .

' "Phe Pipkin inVention, w hich has met with extensive and

well-deserved commercial success, (R. 25), consists of a

novel, inside ‘frosted, incandescent lamp bulb.

ree Long prior to. the present invention, it had’ been, recog-"

_nized that it would be desirable ‘to provide some’ theans to

“reduce the glare produced by the brilliant filament of an -

: Sella incandescent electric lamp having a clear bulb, if

this could be done without seriously reducing the total light

— Many things had been tried, 9995 as. coloring the

ont of a special: translucent ‘opal? glass, "nolding irre

- larities on the outside of the bulb and ‘‘frosting’’ the pve.

of the bulb by sand blasting or acid etching.

Plaintiff’s. Exhibit 12 (R. 147, 10: 13): shows - a wholé

3 series of lamps which neppeees early attempts by plainGf

ais SY

. uae

m * .

a -- : ,

are :

to prodece bulbs -which would be. fret of glare. Some. of

these were externally frosted bulbs, some molded bulbs, and .

one a.painted bulb,—but all of them had objectionable fea-

tures and none was satisfactory -(R. 10-1 3, 84)...

The most ‘common diffusing, or glare reducing, bulb

prior to Pipkin’s invention was a bulb frosted.on the out-

‘side surface, as, for example, by treating the outside sur-

face of the bulb with an acid frosting solution (R. 11, 15).

- Such a treatment eats away. or irregularly etches into the

" glass surfaces multitude of tiny crevices, millions of them.

to the square inch (R. 60). As the light passes through the

glass, its irregular etched ‘surfaee breaks up the’ rays, giv-

ing a ‘cloudy, or frosted, ee to ibe glass and re-

ducing the glare.

Although these cutee frosted bulbs satisfactorily ae

duced glare, they, had the: seriows defect that the rough.

outside~ surface quickly beéame dirty and was almost im-.

possible to clean, with the result, that 4he light output was

_ very soon greatly reduced (R. 12, 15). '

As the District Court below stated, |

“the disady antages of the frosted exterior had -

been generally recognized prior to the present inven- -

tion”’ (R. 327)... ;

As iadly as 1903, twenty years before Pipkin, an inside

frosted bulb had been suggésted (Kennedy Patent» No.

733,972, R. 259); since frosting a bulb on the inside would

leave the ‘outside surface smooth anc cleaned.

This’ suggestion, however, did not solve the problem of

finding’ a satisfactory diffusing lamp bulb, because of a_

curious difference which. was found to exist between an

inside and outside frosted bully. ii

When the outside surface of a bulb is frosted in’ the

ordinary way, it does not affect the strength of the ‘bulb

‘ materially.. But when the inside surface is thus frosted,

such frosting-reduces the bulb’s strength so greatly that its |

strength is but a small fraction (about 5 to 7% ‘of its-orig-

i‘, 0

“inal, value, and renders -the bulb unfit for’ practieal use om

that. account (R. 17; 142, lines 31-53).

~ Prior to Pipkin nd one knew why inside frosted bulbs

were so-weak, mor how to rémedy this weakness. Inside

‘frosted bulbs had been recognized as desirable for. more <

than twenty years, but because of their apparently unavoid-

able weakness Ahete- commercial production was imprac-

ticable. _ < / ‘2 i

As the Pipkin patent states (R-141, lines 23 23-27),

‘*As ‘heretofore produced, bulbs and similarly thin |

articles thusfrosted on the inside have been fragile

to such a degrée as to occasion snc break-

age. ’° ; 4

« al

And-as. the District Court stated below (R. 397), 5

‘it Had also been recognized ‘that ‘the.frested in-

terior, although otherwise advantageous,. impaired.

_ the strength of the bulb.”’

Pipkin’ s invention changed all. this. ‘It crdated for the -

first time a commercially strong inside frosted bulb. This

“was an-entirely new article of: commerce—gsomething whieh

. had never existed before. And it-was of° great Value as.

shown by the. fact that the bulb has gone into very extensive -

* “use, over two and one-half billion General Electric lamps

using the Pipkin bulb having been sold-(R. 25).

Pipkin’s problem was to devise. a commercially strong

inside frosted lamp.bulb. The-bulb that he invented, whieb

solved tliat*problem, was_a bulb with a particular configura- -

tion on its inner surface. It is this new article, an inside

._ frosted bulb with. frosting’ of a. particular configuration

. that is a. pajoct of the claims of the Pipkin patent. .

The Pipkin Inve -ntion and.Patent.. | ae

Pipkin found that if the crevices, which were mper a away :

- hy the acid on the inside of the bulb, were rounded crevices

as distinguished from the sharp, angular crevices produced

— .

: ee : ee ta

by ordinary frosting, tive bulb would be neatly as strong as.

gclear bulb. He accomplished this result by taking the in-

side frosted bulb which had been made fatally weak by

having had glass eaten. away from its surface, and subject-"_

ing its a surface to a second, weaker, acid treatment

‘which dissqlved away additional cae and rounded : out 7. et Pas

previously angular ‘crevices. .

This additional. treatment, although it dissolved away

acditional glass from the inside surface of the bulb; pro-

_duceq..the wholl§ unexpected and paradoxical result of

restoring the balb almost to its original strength.” °

The new bulb was many times as strong as the prior

inside frosted bulk, 7Tndeed, it could be made virtually as*

strong as a clear bull, which meaks an imerease, in strength? |

of about 1200%., or more over the original, weak, inside e

frosted bulb.

' This remarkable st pengtioning of the bulb refulted from *

modification i in the st ructige of élie’f rasted:surf ace, a round.

“ing out, by the*second: and. weaker acid treatment, of the »

multitude * of extremely ‘minute, sharp angular crevices,

whieh are. formed\on the inside surfaee.of the bulb by the.

first treatment (P; atent p. 3, liné 127 et seq. ; Spencer R. 21).

_. The Pipkin patent (R. 141- i44), aftér pointing out the °

desirability of inside-frosted. bulbs in that. they give, better ©

diffusion with lower absorption of light than outside frosted -

bulbs. and ean be. more easily cleaned, refers ‘to the fact (p. * :

1, ines 23- 27) that ‘‘as"beretofore -produced’’ such bulbs: -@ -

““have’ been fragile to sich a er as: tor pecasion pro-. .

hibitive breakage.” ° i cn

‘The object of the invention is said’ to be’ Seopa

“to produce an inside frosted glass bully whieh will

be much stronger than those | eretofore produesd:’

(p.1, lines 33-35). ok

After commenting upon current inethods of . frosting, -

involving the use of an ammonium econtpound arid hydro-

fuori acid, with the pete one of certain other

US;

y een

‘materials such as barium sulphate,, sedi tite. dextrin,

_ete., the patent proceeds to say (p. . line 68 et seq.) :

“When the inside surface of a lamp bulb is sub-

jected to these frosting mixturés to the extent, neces-_

-sary to produce a practical frost, that is, one which

‘will produce the proper light diffusion, the. article

‘becomes extremely fragile. I have found, however, -

- that-if the. bulb-is’ given a further treatment, whieh -

I term a strengthening treatment, in which it is sub-.

jected to an ‘etching or frosting treatment of lower . .

degree than that to which it was first subjected, it

becomes quite strong. Indeed, it may be made prac-

tically as strong as the original clear glass. bulb.” ie

A suitable formula for the first or conventional etching

is stated at the top.of page 2 of thie patent and a ‘suitable

formula for the second, weaker, etching mixture is stated in

the patent at. page 2, lines 84 to 86. Since the claims of the -

“patent are directed to the fidal product, the new bulb itself,

it. is unnecessary to, refer to \hese formulae .in‘ detail.

The patent contains a number of diagrams (Figs. 1 to).

Of these, Fig..2, explained in the specification at page’ 2, :

lines 64-98, is particularly significant. The curve-.in the

drawi ing marked ‘‘Frosting’’ shows how. the strength of a —

. bulb is weakened by the usual frosting. treatment applied.

on its inner surface in a matter of 20 or 30. seconds to a

.-valuo of 3 or 4 units as compared with an. original ..

‘strength of 44.8 units.** ‘The carve marked ‘‘Treating” —

shows the restorative effect of the second treatment, which

produees the rounding effect on the theretofore sharp

angular crevices. Whén this rounding effect has been pro-

duced, as by the second treatment with the wéaker solution,

the strength, of the bulb, reduced by the first treatment toa

piles.

* Emphasis ours throughout.

_ ** These measurements of strength are made by an 1 ivory

ball ‘‘bump tester’’ illustrated in Fig. 6 of the patent and

described in the —— at page 3, lines 72- 92.

” Pats

i ee

‘value of 3,2 units, i is hectuiad to appr oxiinately initial clear’

bulb strength of 45 units. '

- These tésts of the patentee, surprising as their results

may- séem, are verified by the expert testimony (Spencer,

__R. 55, 561; and, indeed, their correctness is unchallenged. .

. The. patentee says that it is not necessary in practice

- that the strength of the frosted bulb be restored to the full

strength of the clear bulb.

‘*In practice it is ahuos to keep the’ strength above -

20 or. pape ad gl that of the clear bulb”’ @. 2, lines

' 47-49). “”

Figure 8 indicates that Pipkin’s strengthening treat-

ment, while greatly increasing the strength of the inside

~ frosted bulb, does not’increase ifs: glare to ani objectionable

” extent and does lower its creed ser of light. (patent pe 3, z

|. 28-32). ——!

* Other tests, the results of which are ‘shown in Fig: 5 of .

the-patent, prove? that the total light radiated from the .

inside-frosted bulb of the patent is substantially, the. same,

for any given wattage, as the light :radiated from a clear

_ bulb (patent p. 3, lines: 66- 71). Hence the bulb of the patent

produces its glare-reducing effect without material loss of )

lighting efficiency.

An apparatus which may be used for producing Pipkin’ s

novel bulb is shown in Figs, 7 and 8 of the patent. The bulb

25 shown at the left,is a clear bulb about to have a frosting

solution from the reservoir 20 spray red into ,it, by air _

‘pressure, through pipe 24. At this siation the fr osting solu-

tion is sprayed into it for a few seconds. The bulb 25 shown

at the niiddle station has already been subjected to the first

treatment and is ready to have the residue of the first

frosting solution washed out of it. In this condition it is a

fatally fragile structure because of the sharp angular crev-

ices which characterize its interior surface. At the right-

hand station. the bulb is shown im position . to be treated

with the second, weaker, acid solution contained in the

reservoir 34. This solutio#, sprayed into the bulb for five...

“second periods at five second intervals (patent, p. 2, “lines

. 58-62)-in a manner: similar to. the tréatment of: the first.

: station, while dissolving away additional glass from the

inner surface of the bulb, rounds the theretofore sharp oS

+ angular crevices, producing the patented bulb with its. char-

acteristic inside surface and making’ the bulb —

as strong as the original bulb.”’ :

Pipkin very properly did’ not undertake to explain in

-his patent why it is that the conventional etching treatment

‘produces the sharp angular crevices, nor why it is that. the .

second treatment with the weaker solution rounds fhe.

crevices. Pipkin was the first to produce an inside frosted

bulb with the founded crevice structure, which bulb he

discovered to be the answer to the problem of a satisfactory

diffusing lamp bulb. ‘It was this néw article which he

‘patented, not any theory of frosting action.

According io the éxperts (R. 11, 18,19; 125), the ordi-

‘ nary frosting solution reacts with the diasolved glass to form

silicofluoride ery stals, which crystals are deposited from the —

solution upon the glass surface. When these crystals have-

been deposited on the glass the acid cannot eat away the

‘glass beneath, though it continues to attack the uncovered:

portion of the glass at the edges of the crystals, thus form-.

ing additional crystals.and making’ the original erystals

increase in size until, as the process continues, the growing.

' erystals meet each other and the whole surfatc of the glass .

-is covered by them. If the surface is then washed in water,

the crystals will dissolve and the glass will have a ‘frosted

appearance, the structure of: the glass surface, uncovered -

by-washing away the crystals, being a series of pyramidal .

' peaks surrounded by crevices which are sharply angular

where the.sides of tle adjoining peaks meet. The surfdce

thus produced | ig covered by a multitude.of tiny, sharply .

angular crevices, so:small that ther¢:may be some 6,000,000 ©

ne or 7 ,000,000' of them to a square inch (R,-60),

If now. the surface is again subjected to. an etehing

solution, this time a weaker, or more dilute solution, or:

ee a

der such condifions that. additional crystals are not de- *

sited, more. glass. is eaten away, -but the’ previously

ormed sharp atgular.crevices are rounded. ”

As a result af Pipkin’s discovery that rounding these °

revices resulted in:a: strong bulb, it may be recognized now

hat it was the sharpness of these minute crevices that wag

esponsible for the extraordinar y- weakness of prior inside

rosted bulbs. But prior to Pipkin’ s| discovery of the

emedy for that weakness nv one had any understanding of

ts cause. \

The. problem was” a 6 peculinsty: mysté@rious and baffling’.

me because outside frosted bulbs’ were satisfactorily ©

trong notwithstandiiig the fact that they had exactly the.

ame sharp crevices on their outside surface as that which

esulted in fatally weak inside frosted bulbs. « For the two

lecades following the’ Kennedy patent of 1903 suggesting

nside frosting, the sharpness of the.tiny crevices remained

ibove. suspicion as the cause of the weakness of inside.

rosted bulbs. - :

It was not until Pipkin | devised this new ‘Ges an

riside frosted +ulb made strong by’ having rownded- as

listinguished from sharp, angular crevices; that a commer-

ally strong inside frosted bulb was available to the public,

and it is this: new article which i is the subject w the claims

f the Pipkin, patent.

rhe Claims. 3 ae

Claim 1 of the patent reads as Pillows:

“1. A glass electric lamp bulb having its interior

surface frested’ by etching so that the maximum

brightness of an ordinary irxcandescent lamp. com-

prising such.a bulb will be less than twenty-five per

cent of that of said lamp with a clear bulb, said

interior bulb surface ‘being characterized by the:

presence of ‘rounded as distinguished from sharp

_ angular crevices to such an extent that the strength

_,to-resist breakage by impact is greater than twenty :

per cent of that of the clear — ese

eo e feet 10

: : Claim 2 is, identical with, claim 1 except that it is par-

rower in that it requires that the strength of. the bulb, to

resist breakage shall. be greater than 45%, instead of

greater than 20%, of-that of a clear bulb. ‘- Cees:

The fact that the interior bulb s peel is

“characterized by ‘the preSence of rounded as. dis-

_ tinguished from ohne. angular ee

is the dbnsabeciatia feature of the invention. of. the patent,

as the District Court indicated (Opinion, R, 327). It is

thig/ eafure which is responsible for the strength of the

bulb of the patent.

A bulb, with such an. tibcetor surface having deen new

with Pipkin, claims directed broadly to. it, without any

~~ other limitations, would have distinguished the bulb of the

- patent from the prior art. However, Pipkin chose to limit

. peer of rounded as distinguished: from shatp angular,

erevices.”’

his claims further by specify ing limits-of maximum bright-

tiess (glare) and minimum’ strength. Thus: the claims |

specify that the frosted. interior surface of the bulb shall’

be such that the maximum brightness of an incandescent -

lamp employing such a bulb ‘‘will be less than teenie 3

per cent of that of said lamp with a clear bulb.’’ -.

Also, since Pipkin was interested. only .in an inside

frosted bulb substantially stronger than prior, fragile bulbs,

the claims prescribe that the strength to resist breakage

of the bull shall. be ‘greater than forty -five per cent of that

of the clear bulb’’ (claim 2) or at least ‘‘greater than-twenty .

per cent of that of-the clear bulb’’ (claim 1), compared with

about 5% for inside frosted bulbs, of the prior art.

Thus the claims of the Pipkin patent accurately define

hen novel structure of his undeniably new and valuable

product, a commercially stiong inside f rosted bulb, charac-

terizad, as the. claims particularly point. out, -‘‘by the

--3

| :

-£

- ‘The Lewer Court Decisions upon the Pipkin Patent

As we hatavorévionsiy etek the Pipkin patent was >

held valid and infringed by two Cireuit Courts’ of Appeals

prior to the present. case.

It was held valid by the Cireuit Court of hepaads for

the Sixth Cireuit in General Electric-Co. v. Save, 82 F. (2d)

100, oyer-the two’ prior patents primarily résied upon by

defendants in. the present case (the Kénnedy patent No.

723;972. and the Wood patent. No..1,240,398), which were.

also considered ‘by the Patent Office. be fore it granted. the .

Pipkin patent.

“It was also held valid by the Circuit Co urt of pees

' for’ the Second Circuit in Genera? Electric Co. vy. Wabash,

93 F. (2d) 671 (certiorari denied 303 U. S. 641; rehearing | :

denied 303 U. S, 667). The defenses to validity asserted i in

the Wabash case. included all:'those ady anced in the present”

case,

In sustaining the patent the Second Cirenit Court of Ap-

" peals stated (93 F. (2d). 671, 673): , cote

oa ae: ‘Although the advantages. of inside front

bulbs were recognized long before Pipkin, no one pro-

' duced an inside frosted bulb’ with the ecenanets

—— for commercial use.

ih gece “ ¢ ?

<r ‘No one seems to have found, before this”

‘ inventor, that it was.the sharpness of the microscopic — -

_v etched surfaces that was responsivle for the extraor-

dinary weakness of the inside frosted~bulb and no- :

one before suggested that rounding them out restored

_, the strength. Like all problems when solved, it may

be argued to. be'simple, but where, as here, it appears

that the accomplisment had eludgd the search of those

interested in finding its solutiofuntil this inventor’s

contribution, he-should be accorded the fruits of a

patent for his accomplisment. Diamond Rubber Go.’ ~

v. Consalidated Tire Co., 220 U. 8. 428, 430, 31 S.Ct.

444, 55 L, Ed. 527.’’ : :

The decision’ of the Circuit Court of Appeals for the:

: Sixth Circuit i in the Save case, was to the same effect ; 82 F.

~ *(2d) 100,

AD THe" present case, ‘ although no new défense was’,

: presented ‘and the record did not differ in substance from

the record in the Wabash case (the same counsel represent-—

" ing defendants ‘in both cases), the District. Court heid the

patent invalid for dilleged. anticipation, | want. of invention

and indefiniteness, and also held the patent not infringed

because it interpreted the claims not as product claims,

which they expressly arg, but as importing the. particular

process described inthe patent, ‘which the court said defend- ,

ants did not practice.

On appeal, the C ‘ireuit Court of Appeals for the Third

Cireuit held the patent invalid and affirmed the judgment

of the District Court dismissing the complaint. It did not -

discuss the defenses of non-infringement and indefiniteness,

‘whieh were erroneously sustained by ‘the Dis‘riet Court,

- but held the patent invalid because it thought-the claims were

_ for ‘‘nothing more than a product old in the art’? (R. 353)."

_ The Court made thig holdiig notwithstanding it recognized

and stated in its opinion that Pipkin’s discdVery -‘‘was a

very important one for the electric light bulb industry”’ (R.

' 352). And even more important, the Court made this hold-

ing without stating anywhere in its - opinion. w hat previous | ~

product it had in mind. ~@

Actually the record shows, without contradiction, that

the bulb defined by the claims of the Pipkin patent was. new

and constituted a very important step forward in the electric

fam bulb ‘industry. Defendants did-ndt evefi attempt to

prove that a bulb. responding to. the claims of the Pipkin

patent ever existed priof to Pipkin’s invention.

_ . Basing its opinion as-it,did on this bare and- ‘wholly un-

supported. ‘statement that Pipkin’ s claims are for an old

~ product, we submit that the court below committed, a most

_ grievous error:

Sega

Specification of Errors

Petitioner respectfully submits that. the Cireait Court

of. ‘Appeals for the ‘Third Cireuit é€rred:

eS holding the ‘Pipkin paient No. ° ssatiscad |

invalid.

2. In affirming: the Shei of the District C ‘ourt.

3. In failing to hold the Pipkin rane valid. and

infringed.

Argument | :

I. Pipkin’s patented bulb was new and his patents valid over

_the prior art..

“Certain facts, . which cannot successfully ba’ denied:

emerge clearly from the foregoifig statement. - These facts

iad irresistibly, we think, to, the conclusion that the Pipkin

patent is valid over the prior art. Therefore we. summarize |

theni here : eta ee ese as aN

& ° Pipkin » was the first person ever’ to make the inside -

frosted bulb which he. patented—an inside frosted’ bulb.

characterized by the presence of rounded as distitiguished

lrom. sharp, angular crevices. No one before Pipkin ever

suggested such a bulb. «It was a new product or article Of es

uianufacture which had never before existed.

, 2. The Pipkin bulb was the first commercially stroiig

nside frosted lamp bulb. Because of its advantages over

prior bulbs, it has had great commercial success.

o The. great advantages which inside. frosted. bulbs -

vould: have over..the existing outside ‘frosted bulbs were

‘lly recognized: for more than twenty years before Pipkin

nade his invention, the inside f rosting of bulbs having been

uggested by a Kennedy patent (R. 257) published in. 1903.

lowever, until Pipkin’s invention (is ane ‘patent ap-

-«

sie some as early as- 1887, teaching that the grooves or crevices

on Peer.)

tie °

plication was filed. in Febr ry, 1924), no one was able to

devise a satisfactory” strong inside frosted lamp bulb. |

4, Daring the years preceding Pipkif’s invention many

other attempts had been made to produce bulbs: which

would be free of glare, such as by coloring the bulb, coating

the bulb with special paint, making the bulb out of special

‘translucent glass, moulding irregularities on the outside of —

the bulb, and, of course, ‘‘frosting’’ the outside of the bulb, -

but none of these was satisfactory. Ae

5. Neither the patentee. ‘Kefinedy nor anyone else prior

to Pipkin had any idea as to why the inside fresting of bulbs

rendered them fatally weak, or what ‘the glass structure

should be to make them commercially strong, or how, to

make such a strue ture.

6. No one before Pipkin had even so much as intimated:

- that the weakness ‘of inside frosted bulbs was attributable to

the multitude of sharp angular crevices in the etched’ sure |

face or that the solution of this long-standing problem lay in

rounding out these tiny crevices by a second etching treat-

ment. ' .

“Where were numerous diselosurds prior to Pipkin, 4

in a frosted glass surface could be roynded out by further

etching. Yet not one of them contained the slightest sug-

gestion-that: this rounding had any effect on the strength of .

the glass, Of that such a surface might have ¢ any special |

utility on the inside of a glass bulb.

Pipkin’ s. bulb obviously was not ‘‘an old product” nor

are his patent claims for ‘‘nothing more than a produet old *

in the art’’, as the Court of Appeals categorically } held with®

‘out any explanation, reference to or support in the record.

This Court is therefore squarely faced with the necessity of

_ determining whether Pipkin’s valuable contribution to the

‘ glass bulb industry constituted invention.

aT ene thie entire development. of our patent law no

safer or. fairer -guide for the judicial determination of the

question of invention has ever been devised than to consider

“an invention in light of the’ history of the problem which

it solved. We believe that Pipkin’ s invention should be so

considered by this Court, as it was by the-Cireuit Courts -

of Appeals for both the Sixth and Secon Circuits, and that

when so considered it will be seen that invention of a high |

| order was involved. —- :

The matter may te briefly stated thus:

For more than twenty *years nunierows workers in the |

art sought a: glass lamp bulb which would be free from.

glare. Many ideas were put forward, but none,was satisfac-

tory. Outside frosted lamps existed, were free of glare, and

_ naturally suggested to the’ patentee Kennedy and to many

" others that the solution lay in frosting the bulb on the in- ,

side. But only fatally weak inside frosted bulbs resulted

- from these efforts.. «Indeed, it would seem that such efforts

to solve the problem actually retarded its solution for they

. effectively demonstrated that a commercially strong inside

frosted bulb.could not be made as were outside frosted bulbs.

Anyone familiar with‘these failures would, very naturally

we think, be led away from ‘any further attempt é at frosting.

- the inside of the bulb.

But evencif they wére not thus led away, from: the true

solution, certainly one. could. not reasqnably expeet it to

occur to any of them that the solution, lay in such a paradox

as etching away more glass from a surface known already .

to have been: rendered. hopelessly weak and fragile by the

- original etching. The solution of the problem required more — <P

than ordinary skill and insight or it would have found solu- °

tion long before Pipkin solved it. Some appréciation of whiy

inside f rosting rendered the bulbs fatally weak was essential

before any progress toward a solution could be made, and ©

eae

ee : Pe ge ee ee

it was left to Pipkin to inake that discovery-after more than

‘+ twenty years during which others had failed to perceive it.

But evén that first ‘step, however important it was, was by’

no means all that was required. Pipkin had ‘further to.

_ egnéeivesthat. the mere rounding ‘out of the multitude of

-tiny sharp angular crevices would restore. the. strength of

the.bulb. He cer tainly got, no assistance in this regard from -

_’ the numerous prier ‘disclostires of frosted glass surfaces —

with rounded crevices, for ‘none of them contained the

‘slightest suggestionsthat this rounding had any effect on

the strength of the. glass.

~ “Looked upon in light of the long history of the problem

ind the admittedly great, value of its ultimate.solution, we

‘respectfully. submit that ‘ 2ipkin’ s accomplishment consti-

tuted invention of a high order. And decidedly it is aeither

sound nor fair to look upon-t ‘invention after it has been,

made solely from the point of view of its simplicity,

Perhaps one of, the wisest injun tions that wasever given

to research wor kers seeking the solu ion of difficult technical

“problems was this: “When. you find \ , it will be simple.”

Many important inventions are of ~ that character, and -

. Pipkin’s is noexception. As this Court id in Expanded

Metal Co. v. Bradford, 214 U.'S. 366, 381:

“The fact.tfiat the invention seems simple after

eft is made does not: determine:the ques ion; if this

: the rule nang oF, the Tost bene | ‘patents

an - would be stricken down.’’ — ; ap. |

And as this;€qurt recently said in Goodyear Og. ¥.

Ray- O- Vac Co., 321 U. s* 275, 279: 4 \

“Viewed after’ the event, the means. Anthonys

adopted seem simplé and such as should have been '

obvious to those who worked in the field, but this is

not enough to negative invention. During a period

pf half a century, in which. the use. of flashlight

' batteries increased enormously, and the .mant-

facturers of flashlight cells were conscious of the de-

fects in them; no one devia’ d a-inethod of eurjng

such defects. Once the. method was discovered it -

commended itself tothe .public. as evidenced by

* marked commercial ‘success. These factors were

entitled to weight -in* dete ‘rmining whether the im-

. provement amounted te invention and shovld, inh ie

close case, tip the scales i in favor of patentability.”

tiven | the Court “of Appeals in this case, while holding

the patent invalid, found that Pipkin’s. disclosure ‘‘was a

very important one for the electric light bulb industry: sy

(R. 352).

An examination of the prior patents and ‘publications i in

the record clearly discloses, we belieye, that this conclusion

3 invalidity was in error and that the Circuit Courts of

\ppeais for the Sixth and Second. Cireuits ‘were correct 3 in

holging that Pipkin’ s new bulb was a meritorious invention '

and that the Pipkin patent for such bulb was valid.

We shall now examine the prior patents and publications

ia more detail. :

The Kennedy Patent. . ‘ .-

Of the many prior patents and publications in tlie record,

only one refers.in apy way to the inside frosting of bulbs-.

‘This is the Kennedy patéut No. 733,972 issued in 1902

»(R.259), which’ patent was before the courts in both. ‘the |

Save case and the Wabash case and was also before the - _

_ Patent Office (R. 222) when it originally granted the Pipkin.

patent. It is .this Kennedy ‘patent which the District

. Court erroneously ‘concludéd was an anticipation of the

Pipkin patent. The Circuit Court of Appeals apparently

recognized that the Kennedy patent did not touch on ‘the

Pipkin invention, because it did not mention the Kennedy

patent.in its opinion.. Whatever may have been the basis ..

\of the Court ‘of Appeals’ decision, it:seems clear that it was=-

hot the Kennedy patent. .— -

The Kennedy ‘patent is tnerely for a ates of frosting

the ingide ‘of a bulb, or other hollow so having openings

A . ‘ . vs

Le ; Se Y a

first claim:

at eath end, by: forcing the f rosting solution into it by means

of air pressure. Its disclosure ig, well summarized by: its :

‘*The herein-described method of frostitig the in-

terior surface of a hollow bulb or the like of glass’

- and having openings at top and bottom, which con-.

- . sists in immersing the open lower end of the bulb

'. ° into a corroding liquid and forcing the liquid to rise/

-In the same. by air-pressure, then removing said pres-

sure and permitting the liquid to flow out of the bulb.

‘by gravity, then rinsing out the bulb with water to

cleanse it‘of acid, and then drying the bulb.’

Nothing is said in the Kennedy patent about rounded _

crevices or how to produce,them. Nothing is said about

_. frosting formulae, times or temperatures. Aside from the

‘ -use of suction_or pressure in the process, which of course

— does not. affect the prodnet, this is just the old frosting —

_ method. which produces sharp crevices and weak bulbs.

As’ we have already indicated, instead-of impairing. the |

validity of the Pipkin claims, this Kennedy patent greatly.

strengthens them. For it shows that as early as 1903 the

desirability of inside frosted bulbs was recognized. And yet

it was not until Pipkin developed the bulb structure of his

patent that the’ production . of inside frosted bulbs of

adequate strength was achieved. — ese + yale

‘‘In the trade this [Kennedy’s] result was a failure

.. 27 (C, C. A. 2in the Wabash casé, 93 F. 2d 671,

> | ese det: ye

_**Earlier ‘attempts at inside frosting were, however,

failures, due to-the fact that. frosfing applied to

the insidé of bulb weakened it and made it fragile

. 27? (CLC, A. 6 in Save case, 82 F. 24-100 at 101.)

‘«* * * it had also been recognized that the frosted in-

terior, although otherwisé advantageous, impaired

J 5 ° uJ

oe 2 AN os o . ° ° «

ee 6

the ‘strength of’ the bulb” (Distiiet Court opinion |

herein, R. 327).

‘But, -in spite of the fact that three other tribunals, two

‘United Statés Circuit. Courts: of Appeals and the Patent

Office, had found that Pipkin made an invention over Ken-

‘nedy, the District Court held Kennedy anticipatory. é

4 ?

_ This -was on the theory that Kentiedy’ Ss. iastznillens,

3 “although they did not specifically cvntemplate the

multiple etching process, did not pre clude its app! ica-

tion’” a. - aon).

“e &.

and that

“The glass technologist, desircas of impa rting to the’

interior of a bulb the mat surface hereinabove de-

scribed, could, following the methed of Kennedy, »

avail himself:of the multiple: etching process then in

common, ase’ ) (Opinion, I. ape - ne °°

ies

The fact, if it be a- fact, that Keunédy’ 8 instzuetions

‘‘did not preclude’’ the use of-a multiple etching process: is

of no consequence. The question is, rather, whether Ken-

nedy’s ‘instructions would suggest such a process to the

‘normally skilled worker in the art. Would such a worker,

- familiar with the Kennedy patent, having tried Kennedy.'s

process and found that the result was a fatally fragile bulb,

normally have had reeonrse,: to remedy that defect, to a

multiple etching process?

, We respectfully submit that the substitution of a multi-

ple etching process for Kennedy’s single etch,would have -

- heen the very last expedient that one trying Kenedy and

finding the resulting bulb fatally fragile would have been

likely to ‘try; because fe would naturally suppose that the

“weakness resulting from the single etch, would bé accentu-

ated we a ast etch which actually ate away more of the .

glass.*

The actual iilate of the art shows -that this ‘was true, <

re for, desirable as the inside- frosted bulb was. ‘known tobe

in Kennedy’s time, no’ one ever so much as thought of sub-

stituting a multiple etching process for Kennedy’s: single

etch during the’ next 20 years. ,No practical inside-frosted

- bulbs were made until Pipkin made his invention, and there-

_ by solved a problem that had been _— more than 20

- years for solution. ‘

The Court of -Appeals for the Second Circuit said re-

garding the Kennedy patent and its relation to Pipkin

(GEL. Wabash, 93 F. 2d 671 at 672) :

Aennady. ina patent sonetil July 21, 1903

(U. 8.) suggested frosting the bulbs on the. ‘inside

instead of the outside, leaving the outside surface .

smooth. In the trade this result was a failure, and -

‘that-was due to the fact that the first frost etching

..treatment removes only a slight. amount of glass.

WwW rae jor to the outside of the bulb it appears

net to affect: the bulb’s strength but, when applied.

- to the inside surface, it reduces it against outside-im-

pact to brit a small fraction of its original value.

This makes the bulb unfit for commercial use,”?

oe, The District Court fell, into a most surprising and up-

accountable error when it asserted that the Kennedy method

- was demonstrated at the trial (Opinion, R. 331, .332).-,

The fact is that defendants’ court. room denionstration

was not a demonstration of the Kennedy patent, and did

not even purport to be so, What it did purport to be was a°

demonstration of defendants’ present method of making

inside frosted butbs (R. 100), a method devised by defend’.

ant Herzberg to achieve Pipkin’s patented bulb ‘after. the

Pipkin patent’ had taught the world the frosted: structure

avhich that bulb should have and how it eould be obtained: .

21°.

ee crate dean bm

Having shown that Pipkin by his invention ‘‘remedies -

the fatal weakness of inside f eated bulbs,’’ the Court con-

tinued (p. 673 ):

- To have ace smplished this over the: Kennedy inoue

‘of 1905 ameiints to invention. The elaims are novel.

Although the advantages of inside frosted bulbs

were recognized long before Pipkin, no one produced. .

an inside frosted Ywulb with the adequate strength for

commercial use."’ .

| ‘The prior disclosures of “double treatment.’’

‘The prior disclosures of ‘‘double treatment’’* actuaily.

_ throw into strong relief the inventive nature of Pipkin’s

accomplishment. Therefore the true significance - of these

disclosures should. be clearly understood. _.

Ever since 1887 the scientific fact has béen acai to,

- glass technologists that grooves of a frosted surface can

be enlarged and made more rounded by the use of dilute

hydrofluoric acid, and certain technologists suggested the’

application of this knowledge for obtaining a. decorative.

“satin finish’’ frosting or desired optical effects in connec-

tion with focusing screens for cameras and the like. |

. *The prior disc. sures of “double treatment”’ are:

The Wood U.S. patent of 1917 (R. 261) ;

~ The Correil British patent No. 166,133 of 1922,

(R. 251) and the following publications :

Die Glashutte of 1887, in an article entitled ‘‘Con-

f ge Tg to the Knowledge of -Glass Etching’ -

. 273) ey.

eal of 1907, in an article on the etching

and ornamentation of hollow glass (R.286);and .

"The Journal of Industrial and Engineering

Chemistry of 1917, in.an article by Tillotson covering

his scientific investigation ‘‘on the relation between .

the physical properties- ‘and chemical composition of .

glass (R. 291).”""

But the significant thing about these disclosures is that

none of them intimates that this rounding of the crevices .

‘4s capable of having a. strengthening effect on frosted glass

_ of any kind, or that it can have any utility in connection

with inside frosted electric lamp bulbs.

And this in spite of the fact that also as early as 1903,

patients were issued to inventors attempting to solve this

problem of a suitable inside frosted lamp ‘bulb. . From that

day until Pipkin’s inv ention, i in spite of the many efforts to

solve this problem, no one conceived that such double treat-

ment could play any part whatever in’ the niaking of

practical, strong, inside frosted bulbs. The lamp industry, -

. with which we are here concerned, gained nothing from suth-

disclosures. It remained for Pipkin to conceive of the inside

f rosted bulb structure which made such lamps. practical.

- All of these ‘‘double treatment”’ disclosures were before —

the Second Circuit Court’ of Appeals in the Wabash case.

. The Wood patent, which we sha!l consider next, was also

~ considered hy the Patent Office before allowing the Pipkin

_¢laims, and by’the Sixth Circuit Court of. Appeals in the-

Save case, Those articles which were considered in the

_ Wabash case, but not by: these wasn tribunals, are merely

cumulative.

— (a). The Wood Patent.

The Wood patent (Ex. D2, R. b63), j is directed particu-

larly to making focusing screens for cameras. It has -

nothing whatever to do with inside frosted lamp bulbs;

Wood starts by subjecting hik smooth flai plate of glass

to a blast,of air carrying abrasive particles ‘‘to produce a .

very slight cloudiness of ‘the surface, which is scarcely

noticeable,’’ each particle: of abrasive - material having

_ ‘however, produced a microscopical dent in the surface

by chipping out a minute fragment of glass”’ tp. 1 i 8 lines.

aon : | rine \

or : 23

_ He then subjects this surface o the action of an acid

“which enlarges and smooths out‘the pits’ made by the

* emery dust grains into ‘minute coneave lenses”’ (p. 1, lines’

66-68),. as illustratedin Figs. 5 and 6. Although Wood

states that ‘*the diffusing power of a plate prepared in this

way is fully equal to that of the usual ground glass’’ (p. 1,

lines 84- 86), it iv clear that he was using ‘‘diffuSing’’ in a

sense entirely different from the reducticn of maximum

brightness or glare, which is the purpose of diffusion in a

- frosted lamp bulb, because he ‘goes on to'state cuscaet 86- oe

that with his surface,

“‘the intensity “ the transmitted ight is is very Gaile

double that transmitted by such ground glass.

‘When placed before a dark background, and

: illuminated, my glass appears very nearly as black as

ordinary untreated glass, in contrast to the milky

white appearance of ordinary ground glass. This: -

_ makes it of great value as a focusing screen for

cameras. The’i image formed by thelens upon a glass

-sereen prepared in this way, is by actual measure- —

ment double the oo of an image seen on

ordinary ones glass.”

In referring to the fields. of use of his sereen, Wood says

(lines 102-105) : series

‘It is of special value in the ¢ case of cameras of the

Graflex type, which suffér somewhat from insufficient.

brilliancy of the j image on the focusing sereen.”’

And he ids, casually ines 3 106- 111):

‘“‘Such a screen is also useful for chitin the

- bulbs’ of incandescent lamps diffusing without at the

same time causing the very marked: loss in the -ef-

ficiency of the lamp, which results from frosting the. *

bulbs in the usual manner.” :

_-. Thus: it is apparent that Wood was 1 dealing with an *

aire different ar wes from that which Pipkin subse- ,

quently solved.. Wood was concerned only with optical

.elfects. He wanted an optical effect different from that

produced by ordinary frosting. He was seeking ‘‘brillianey

of the image,’’ the opeee of the end’ sought in frosting |

lamp bulbs. .

And although he nis so far as ‘to suggest that such &

screen might be ‘‘useful for rendering the bulbs of incan-

descent lamps diffusing,’’ etc., he did not even hint at the .

idea of applying his process to the inside frosting of: bulbs,

which would obviously be difficult if not impossible.to do.

Furthermore, Wood had no conception that. his second

treatment was capable of strengthening anything. Ue was

not faced with any problem of increasilig the strength of

e frosted camera screens or of increasing the strength of the

ordinary frosted incandescent lamps which were at that -

time frosted on the outside and, like tlie camera screens, in-

volved no problem of weakness. :

In short, the Wood patent did not teach or even suggest :

the Pipkin invention, and it did not advance the art one

iota in the quest for a strong inside frosted bulb. 2

The District. Court» says i in its opinion (R.. 333) that

- Wood’s patent:

‘‘although directed to a method, describes. in detail

a smooth mat surface,’ equivalent to that defined by

Pipkin, résulting from its application. There is no

critical distinction, unless. the descriptive. language

ased can be so regarded, between this disclosure and ©

that of the claims 1 in suit.’? a: ie

» We respectfully urge that this statement is erroneous.

Even if Wood’s surface were the same as the surface

which Pipkin adopted for his new bulb,* this would be - a

'* The uhsontradioted ‘testimony of. Spericer i is that the ;

Wood surface would not. be. sufficiently glare-reducing to

meet the terms of the Pipkin aims (R:58, 62). Wood was

seeking ape of-i image.’ see he 5

material, because the Pipkin’ claims are for an inside . ~

frosted lamp-bulb, and Wood had no idea of applyirig his

_ Iens-like surface to the inside of a lamp bulb, or any idea

that such a surface would — the inherent ens of

‘such a bulb. eee

» As -the. Second Cirenit Court of Appeal stated in’ the

; Wabash case (93 F. 2d 671, 673) :

“Wood concerned himself with optical effects, but

_. had no conception of :the second treatment as a

_ strengthening quality, and‘he did suggest ghat such a °

screen might be useful for rendering the bulbs of the

‘incandescent lamps diffusing, but he did not intimate

- or hint at the idea of applying his process to the isi-

side frosting of the bulbs for strength. No such prob-

. lene confronted him and, as said in General Electric

- Co. 4. Save Sales Co., supra, he did not advance ‘e the

- art ‘in the qoeet for a ' strong inside frosted. bulb.’’

(b) The other “double treatment?’ disclosure $ aad nothing

: to the Wood disclosure. - Sopra

Es | ;

- AB we havé said, the other double treatmen isclosures

are merely cumulative. All of them are concerned only with.

the optical or decorative effect of the double treafment. pro-

sees. .None of them says. anything about strengthening an

etched article, or about’ the treatment of lamp Gulbs in any

way, to say nothing of the inside frosting of such bulbs. All

of these ‘‘double treatment’’ disclosures were before the

Cireuit Court of Appeals for ‘the Second Circuit in the ee

Wabash case when it sustained the Pipkin patent. — Me

The Correll British patent 166,133 of 1922 (R. 251) is -

for ‘Improvements ° in and relating to ‘Screens’ and

‘Sheets’ and the like for the Reception of Optically-pro-

jected Pictures, Images and the Like.’ , The initial etching _

may be done by acid treatment, sandblasting or eS.

The second step for ‘‘ ‘reducing or clearing such‘surface’’

done with hydrofluoric acid (p. 1, lines 52-56). ‘The saibaacioe:

says that this sproduces a “slightly diffusive surface ex- -

hibiting a satin-like ‘ , ‘sheen’ ” (p. 2, lines 15, 16) which

makes ‘‘a very efficient form of ‘screen’.’’ on which. the

image ‘appears ‘‘much brighter under similar projection

. conditions or arrangement than the: image formed on an -

ordinary white ‘sheet’ or ‘screen’ as 1s commonly used’’ (lines

— 82-93).

The Gtashutte article of 1887 *(R..273) - discloses. that a

frosted surface upon’ being ‘‘clear-etched’’ with : dilute

_ hy drofluoric acid becomes brighter, as the trough-like de- .

pressed areas are ‘‘widened"’ and given a ‘‘more rounded _

shape’’ and that ‘‘these troughs, owing to, their’ more

rounded shape, cannot scatter light so well as sharp edged

__. etchings’’ (R. 278, lines 89- 91).

. The Sprechsaal article of 1907 (R. 286)' on the etching of

glassware for decorative purposes, points out that the

- second treatment with diluté acid makes an etched surface ~

‘*more lustrous’’ and gives it ‘‘a silk- like appearance” (R.

287, line 72).

_ And finally, the Tillotson Article of 1917 (R. 291) sets”

forth in detail, and illustrates with’ photomicrographs the’

scientific fact alluded to by Wood and the others, that the

treatment of an etched surface with dilute hydrofluoric ;

* acid results in ‘‘enlarging“and rounding out of the ‘valleys,’

finally resulting * * * in a series of smooth ‘saucer-like’ de-

pressions,?’- (R. 293) or in other words, the ‘*conecave

Jenses’’ of Wood.

. Although the Circuit Court of Appeals beléw held: the

Pipkin patent-invalid ard made the statement that the bulb

clatmed in the Pipkin patent was old (which statement is

_ erefated by the reeord and to us is inexplicable), it quite cor-

rectly summarized and dismissed these prior ‘*double treat-

ment”? disclosure’ by stating (R. 351): tes

‘In the prior art hydrofluoric acid was put upon the

glass, already. etched or frosted, for the purpose of

__ giving it a fine ‘satin’ finish or ‘matt.’ But nothing:

, in the prior art suggested Pipkin’s paradox that by

destroying more esi ‘the bulb would be stra.

- ened.’’ . | = +

es 97 e 3% \

And as thie Cireuit Court of App s fr the Betond Cir-

euit stated: ;

“But no one’ before cucested or bidisadedl that”.

the rounding of the trevices wits capable of having a.

: strengthening effect onthe frosted glass. of any kind

’ of that it could have any utility in ‘connection with

’ inside frosted electric lamp bulbs.’*— (C.) C.>A.. 2,

G, E.v. Wabash, 93 F. 2d 671, 673.) * 3

_ “That these prior descriptions of “‘satin finish’? frosting

did not, in fact, teach the worker in the incandescent ‘lamp —

business the requisites for making a strong inside frosted

bulb, is not surprising... A person trying to make such a

balb would naturally use the frosting methods. which had

long been used to make ontside frosted bulbs. When this .,

resulted in a weak bulb there was no reason for him.to—

think that a frosting such as that produced by ‘‘double —

treatment’’ would be desirable. . Indeed, the.. natural con- —

clusion would be to the contrary, becatse it was known that

a frosted surface with this rounded structure did riot reduce

glare as much as ‘did ordinary ffosting.* Except for its

strength, the rounded crevice structure is a worse surface

for diffusing lamp bulb purposes than ordinary frosting,

and Pipkin had to sacrifice some diffusion in order to obtain

the strength which he diseovered the rounded structure -

gave. ° =

Likewise there was no recognition of the fact that the

shape of the extremely minute crevices produced by frosting

‘were responsible for the weakness of inside frosted bulbs, :

-and even less reason. to suppose that rounding these ; |

crevices, thus further.widening: and deepening: them would

restore the strength of, the bulb. Indeed, it would be natural

to Suppose that removing more glass would further weaken

the bulb. ; te :

7 fee, instance Die-Glashutté, No. 4, p. 50’ (Ex.. ie

R. 278), which states at lines 89-91, ‘however thése troughs :

owing to their more rounded shape, cannot scatter the light ay

80° well as ; sharp-edged etchings. *

> _ 28

ha the Court of Appeals for the Sixth Circuit said i in

the Save case, B2\F. 2d 100, at 103:

““at was clearly not obvious that the veindoal of dddi-

tional material from an. alre —* weakened lamp bulb

‘would strengthen it.’’

_ Even. now it is>difficult to. understand how a slight

modification in the shape of these minute crevicés, which are’

so tiny that there are froin six to seven million of them to.

the square inch of frosted surface, can so tremendously

affect the strength of a lamp bulb.

* The prior double treatment disclosures merely. empha:

ES _ size the non-obviousness of Pipkin’s new bulb, because. they 3

show that means for obtaining frosting with rougded —

crevices were known as early as 1887, but no one prior to

Pipkin recognized that the answer to the problem of con-. .

structing a commercially strong inside frosted lamp bulk

was to niake such a bulb with frosting - of this rounded

tj crevice character.*

4 The remaining ‘aan of prior art found i in the record

are sO far removed from Pipkin’s invention that they do. ,

‘not seem to warrant ‘detailed consideration here. The ex-

tracts from ‘‘Sprechsaal’’ and from ‘‘Hohlbaum”? trans- °

lated and reproduced at R. 296-303, are.routine comments |

on the frost etching process and have nothing to do with

rounded crevices or with inside frosted lamp bulbs,

The Webb, Archer-and Harrison patents (R. 245, 247,

" 265) ‘relate to ornamented or molded glass and have no

~ relevance whatever to the Pipkin patent ar to the. probiem

that Pipkin solved. The District Court dismissed them: with

.a brief reference in its opinion (R. 331) and the Circuit

Court of Appeals apparently agreed that these patents are. .

irrelevant, and did not mention them irt ifs opinion. :

. 29 i — a

The District Court erred ‘in holding that these ‘gouble

treatment” disclosures invalidated the Pipkin. Patent for. a

tiew ‘inside frosted lamp bulb. ore

The District, Court’s opinion states (: 335) :

_. The claim.to invention here rests upon the fact,

fully accepted by the parties, that no one prior to

Pipkin had perceived that the interior mat surface

‘characterized by the presence. of rounded as, dis-

tinguished from sharp ‘apgular crevices’ increased

the resistance of a frosted glass bulb to breakage. |

‘This fact neither enhances the claim to invention nor

impairs the disclosures of the prior art.’ The dis-

patentable discovery. saiegcisal the = of the

statute.’

_ We respectfully. submit: that this statement by tne Dis-

triet Court contains a ‘vital error. The claim ta invention

here does, not rest upon-the mere discovery of a ‘‘peculiar:

property, inherent insthe physical characteristics of a mat -

patentable in and of ‘itself, as the District Court states.

- However, when, as in the present case, the discoverer of

by ‘that peculiar property puts that, discovery to use by creat-

w ing a new article-which was an important step forward i in

the industry, and the answer to a long-felt want, such a

person has made a patentable invention of a high order,

‘“The elements of the power exist; the dnvention is.

nat in esas hem, but in applying. thom to use-

ful ob jects . F

“fA new anes discov ered i in matter, when gileti- :

; s cally applied, in the construction of a useful article

of. commerce or manufactures patentable ;’ ’ LeRoy

v.:-Tatham, 14 How. 156, 175. ;

covery of this peculiar property, inferent in the

physical characteristics of the mat surface, was not a_

<«v ‘

) .

“This is -auectly. what Pipkin ‘did. He Fe that

_a frosted glass surface characterized by the _presence of

rounded as distinguished from sharp | angular - crevices,

_ was vastly stronger to resist breakage ‘than. a. frosted sur-

> faee characterized by sharp angular crevices, a fact there- —

‘tofore unkrown and unsuspected. Pipkin put his discovery

to use by creating.g new inside frosted électrie light bulb »

wherein the strength-giving quality of this form of surface’

. was used to advantage, and he patented this new bulb. °

“The District Court held, however, ‘that (R. 335):

‘“the adaptation of the mat surface to a new ‘use to

which it was readily adaptable by .reason.‘of this

peculiar property, was not a patentable ‘invention.’ ” —

In suppoft of its views on this point the District- Court’

" relied mainly 6n Ansonia Brass Co. v. Electrical Supply Co.,

144. U. S..11, from. which it quotes at length at R. 336.

_ The EE case is not in point and the vital differences

between that case and the present case serve only to empha--

_size the validity of the Pipkin patent.

In the. Ansonia case the patent related to an insulated

~ and non-combustible covering for electrical conductors. The

evidence showed that one Holmes. had previously manv-

factured electrical conductors haying the same sort of in=

’. sulated and non- combustible covering which the patent de-.

scribed, but that his product had been used only for burglar

alarm wires, in which the currents carried were not. heavy.

enough tq make incombustibility ai ‘the covering a ‘matter

. of consequence.

The holding was, axtesalie: that the patent. was invalil

In spite of the fact that the- insulator used by Holmes ‘was

_ not intended to be, and pethaps was ‘not known to be; incom-

bustible’’ {p- 17), it was in fact the same as that covered by

the patent, and the two insulators being

‘*practica pid tl came in .their method of. construe-

-. tion; it is‘cfeat. that Cowles has no right to claim the.

..feature of incombustibility as his invention .. .”

sage ae ee enue te

Bp the: Ansonia case the patentee\ereated nothing new;

he nierely observed the advantageous properties of an old |

~ article of manfufacture. . eo. \

In the present case Pipkin created-a newarticle of manu:

. facture, an inside- frosted bulb having: an ‘etehed ipner sur- |

_ face characterized by rounded as distinguished. from sharp

angular crevices, a thing that had never existed or eve er been -

suggested before.

~ The question which must be decided here is not ‘the ques-

. tion raised in the Ansonia éase, at all, but.the question

whether. Pipkin made an invention in first discovering the

property of strength in the prior mat surfaces, which-

not been apparent to anyone for almost fifty years, tnd then

adapting a surface of this character to such a highly useful

soa as an inside frosted light bulb. ,

. As @as said many years ago in Strong et al. v. Noble

4 al., 6 Blatchford 477: pants ate

“There is scarcely a eiens tamhid that does not

involve the application of an old thing to a new use,

and that does not, in one sense, fail to involve any-

thing more. But the merit consists in being the first

to make the-application, and the first to show how it

can be made, and the Seat to show:that there is utility.

__in-making if.’’ ; >

— ¢ The District Court did not silihe the aiid the ane. ;

dt all when ft held that ‘‘the adaptation of the mat surface — y

to a new use fo which it was readity adaptable by reason of

fhis peculiar. property, was ‘not a patentable ‘invention.’ ”’

If it had been so obvious to use the old mat surface. for

Pipkin’s purpose, certainly some one would. have done it —

during the many years that intervened before Pipkin’s dis-

covery, of its usefulness in a lamp bab, As we have

prev iously shown, Pipkin’ s accomplishment shouldbe viewed

in light of the long history of the problem which it ultimately.

selved and not by hindsight. The verdict of that history is

that he saw what was not obvious to other men skilled in the

Xd 4

. -

art.and that he was entitled to the reward of a valid patent. |

‘\é

‘

—

sé

Se |

Il.” The Pipkin Claims Are in the Proper Technical Form.

_-The District Court also concluded that the claims in stit

“were functional and indefinite. On appeal, the Cireuit

Court of Appeals. did. not pass upon this defense, which .

we believe to be wholly without meNt. -This same defense

was presented by defendants in the Save case in the Sixth °

Cirenit, and the court rejected it with the remark that the

claims Tare | very precisely defined.’’ The same defense was -

- also advanced in the Second Cireuit case, but was s abandoned

. and not argued by counsel on appeal.

The claims* call for the following four elements :

1. **A glass electric lamp bulb having its interior.

surface frosted by etching.” - .

2. The ‘‘maximum brightness of ‘an ordinary in-

candescent lamp comprising such a bulb will be less"

than 25% of that of said lamp with a-clear bulb.”’

3. ‘‘Said interior bulb surfaee being charactét-

ized by the er orev of rounded as eee from

sharp angular crevices.’

4. ‘‘The strength to resist breakage by sessail is

greater than 20% of that of the clear bulb”’ (in claim

2 the figure is 45%). rae

We submit that thet claims afé not functional and that’

the Sixth Circuit Court of Appeals was obviously right wher

it said that the Pipkin claims ‘‘are very f preciecly mngeee)

(82 F. 2d 100, 103.): %

The District Court’s, fxiding of fact VIII seems to em-

_body the basis. for its holding ‘that the claims are. “*fune-

tional. > We believe that court completely ‘misunderstood

“what constitutes a functional claim and_why such. a claim

is not allowed. .

* For the claims; see page 9 of this brief.

» &*

‘Finding VIL regds as follows (Be 346) :

‘There was nothing which Satinguiched : the mat

surface defined by Pipkin from the mat surface de-

scribed by those whé preceded him excepg the fune-

» tions ascribed td it and the particular article of manu-

- *. facture, to wit, diffusion of light and resistance to

‘breakage. The nov elty of the. invention, if any, lay,

. not in‘the struct ural elements, but in their function.

: a claims in suit are, therefore, void. ”

In n these sentenees the Court} is auenuaiiy saying that

sinee a frosted glass surface with rounded crevices had ‘

previously . been applied togertain articles other than lamp

‘tnlbs and for a-different purpose, Pipkin’ s patent for a

‘new bulb incorporating such a surface was merely. for an-

other ‘‘function’’ of such a surface and therefore the claims

were ‘‘functional.’’ In making such a holding, the District.

Court confused ‘tthe question of: invention in-prtting an old.

surface to a new‘use (to which we have already addressed

_ ourselves) with the technical question of proper definition

of the ‘invention in the claims, with whi¢h the doctrine of

functional élaims i is concerned.

. The District Court thought that the case of General.E lec-

tric Co. ¥. Wabash Appliance Corp.,204 U.S. 364, supported

its position thée thi®se claims are véid (Opinion, R. 340-342).

But fhe form-of the claim held yoid by this Courtin

that case was entirely amarent from that of the seco

claims. . Boos

~ In the Wabash Pease case, which hiahiad the Paez

= lament patent, the claim: read as follows:

“95. A filament for electric ‘incgaisconk lanips.

or other devices,-compdsed substantially of-tungsten .

- and made up mainly of a nunsber of comparatively

large grains of such size and eontour/as to prevent

' substantial sagging-did offsetting during a ‘normal

or commercially useful life for sucha Jamp or other

device.’ " ane 8. 308.)

se : a=

rae ee

The difficulty: with that-claim was that filaments ‘‘com-

posed substantially of tungsten and made up mainly of a °

_, humber of comparatively large graing” were old in the art;

- dnd that, therefore, the use of this phrase was not sufficient -

to prevent anticipe’.on by .the prior|art. Thus. the only

. language i in the claim which seryed: i distinguish the pat-

‘entee’s filament froin prior fiaments was the functional

requirement that the grains-were to be ‘‘of such‘size and

contour as to prevent substantial sagging and offsetting”.

This ‘was’ made clear’ by the Court, when it said (304

Uz S. 364 at 369) : |

‘*The tungsten: filament: ‘made up mainly. of a num-

ber of comparatively large grains,’ differentiates the

claimed. invention from tungsten drawn into a single

‘erystal .°. . , and from Coolidge’s -fine- grained

thoriated filament, but serves aptly to describe the

product of earlier manufactire, with its large regular:

grains a to Masten all Sey

The Court held that, the attempt to differentiate from

the prior art solely: by specifying that the effect of the .

grains in question was Ko prevent substantial sagging and

offsetting,” rendered the claim void as ‘functional, ” ber.

cause e the claim used only ghee j

ware

«<eonyeniently functional language at the exact point

of noveliy”’ (p. pirat. : ie

And the Court continued :

ae limited use of terms of effect -or result; whieh.

accurately define the essential qualities .of a product

to one skilled in the art, may in some instances be: |

ae permissible and even desirable, but a characteriste ~

‘— essential to tiovelty may not be distinguished. from

the old art solely bij its tendency ,to remedy the

problems % om the art met. by the patent, epost ae

Co ae eo

; . ts ey

’ . a 4

& a o

oy °s bid 3

‘In the present ease the claims structurally distinguish |

Pipkin’s bulbs from the prior art by the requirement that

_ “said interior bulb surface’’ shall be ‘‘characterized by the .

presence: al rounded as distinguished from sharp angnlar

crevices.’

The fundamental difference between the present case»

and that involving the Pacz patent is that the phrase

in the latter,,‘‘made up mainly of a number of éom-

paratively large grains,’’ did not differentiate from the

prior art; whereas the phrase of the ‘Pipkin claims ‘‘said

. interior bulb surface being characterized by the présence of.

ropnded as distinguished from sharp angular erevices’’ >

does distinguish the Pipkin bulb from all prior art bulbs:

The claim in the Paez patent was held void because it

expressed the ‘‘exact point of novelty’’ only in functional.

terms, ‘‘of such size and contour,as to prevent substantial

sagging and offsetting. .

- But the Pipkin claims are subject to no such vie. “They

define the invention in terms of structure ‘tat the exact point |

_of novelty’’; i. e., the character of the interior surface of the

_ bulb, which is ‘characterized by the presence of rounded as .

distinguished from sharp angular crevices.”’

Pipkin gave a clear, non-functional, structural definition

. of the frosted interior surface of his new bulb, which strue-

tural definition clearly distinguished his new bulb from all

previous inside frosted bulbs.. And in addition he chose

_ further to limit his claims by incorpé¥ating i in them limits

. of brightness and strength, in measurable ‘quantitative

‘values, Oe bis ea

/The distinction betwee “rounded ’?-and “sharp angular

revices’? was well recognized in the art, as shown by the

Glashutte and Tillotson articles.(R. 278 atid 293), whith —

used substantially’ identical terms, and the Tillotson article

~ illustrated such terms by photomicrographs.

WA ; ”

* i“ » «

/ : ar

Claims have been frequently sustained whid hi use similar.

language defining a characteristic or r quality: of tlie ‘inven-

“tion. . . :

In Eibel Pease ss v. Minnesota, 261 U. S: 45, the Court

sustained a. number of claims much less definite than the

claims here in suit. Claim 1 of the Ejbel case is typical and-

thus (p. 50): Ae eee Rages he ;

“41. A Fourdrinier machine having the breast-roll

. end of the paper-making wire maintained at a sub

- stantial elevation above the lev el, where ‘by ‘the stock .

is caused to travel by gravity, rapidly, in the diree-

tion of movement of the wire, and at a speed approki-

mately equal to the speed of the wire, substantially

: as described.’’

“In sustaining this claim over a defense of ‘indefinite.

ness’’ the aur said (p. 66): < 2

“KE Ixpressions - quite as indefinite > as ‘high? and

‘substantial’ in describing ar invention é6r discovery

“nized by this Court as sufficient 7 fe

In Allen Filter v. Star Metal (Cc. C.\A. 3), 40 OF. 2d 252

certiorari denied 282 U.'S. 848, claims were sustained ich

differed from the prior art by calling for ‘‘resilient’’ coils,

--against a: contention tae such claims were too indefinite.

The Court stated at p. 254; ;

‘‘Nor is patentability defeated because thie Boundary

line befween coils coming within the patent and those

falling outside it is not marked with. equatorial pre-’

cision. It would haye been difficult, if not impossible,

to mark it more definitely. I¢ is as fixed and certain

as was the boyndary in Van Heusen Products v. Ear!

- & Wilson (D. C.) 200 F. 922. It is sufficiently obvious’

; - to enable those skilled in “the art to locate it. 3

~~~ Jaw requires nothing more.’’ fe

eee 4 =

dail, hee re

ba |

i. 7

’

There is no merit in defendants’ highly technical con- |

- fention that the claims are: invalid for indefiniteness or

functionality. eos ee =,

| il. Defendants’ Bulbs Infringe the Pipkin Patent.

“As we Have seen, the claims of the Pipkin patent. contain ;

; e fo lowing four elements:

Geers Mer eT electric lamp. bulb baying its interior:

‘surface frosted by etching.”’

2. The *‘thaximum. tightness of an ondinary in-

- eandescent lamp comprising sucha. bulb will be less

than 25% of that of said lamp with a clear bulb?’

3. “‘Saia interior bulb: surface being chdéracter-

‘sharp angular crevices.’

4. “The strength to resist Jeena by impact is ‘

° "greater than 20% of that of the clear bulb’’ (in claim

2 : the figure i is 45%).

“De fe ndants’ ‘bulbs clearly ee AGS both of these’ claims.

Deferidant/ Jewel. Tncandéseent Lamp Company: manu-

factures lamps employing the'aceused bulb, and defendant

Nulite Electric Company, a wholly owned subsidiary of

‘Jewel (R. 7), sells thes@ lamps ¢R. 8). =.

~Ht is significant that the Jewel Company’s inside- frost- ;

ing operations were i ‘itiated by former employees of. the

plaintiff / who had been familiar with the insidé-frosting

operations carried on by plaintiff under the patent: ‘Rhese

and: general manager. of the Jewel Company (R. 86, 87)

cand Ambrunn, who participated i in a demonstration of de-

fendants” operations during. the trial. ‘Herzberg was for-

merly factory manager of one of plaintiff’s factories arid

_ there became familiar with plaintiff’s: iniside-frosting | oper-

ations (R. 106, 107). ~Ambrunn formerly, worked in the. :

plaintift’s frosting en, (R. 109). ae

cee | - Fp : 2 Ce

Sua a 4

" ized by the presence ‘of rounded as distinguished f rom .

Herzberg and Ambrunn are designated as ‘joint inven-

be tors in the Herzberg and Ambrunn patent No. 2,025 7088,

applied for in 1933 and issued in 1935 (R. 311) which, it is

asserted, describes defendants’ frosting eeptreg ss (R..99,

- 115).

Specimens of defendants’ accused bulb are in ‘evidence: +

as Plffs. Exs. P-17 and P-18 (R. 31, 32). :

A collection of photomicrographs of the frosted interior 7

surface of defendants’ bulbs is in evidence as Piffs. Ex. P-19

(R. 39), one of these photographs being reproduced in the

printed record (R. 155). . For comparison a collection of:

photomicrographs of the interior-frosted surface of plain-

tiff’s commercial bulbs made under the Pipkin patent is in

evidence as Plffs. Ex. P-16 (R. 25), one of these plioto-

graphs being reprodiced in the printed record (R. 151). -

Although defendants’ expert attempted to draw certain

_minor distinctions between the surface of defendants’ bulbs

and that of plaintiff's bulbs, the District Court, after. hear-

ing the experts and examining the photomierographs, ‘some

of them with the aid of a stereoscopic ’ apparatus ‘{R. 68

70); found that defendants’ interior- frosted surface is ins

fact ne :

‘camtesenl by the presence’ ‘of rounded as distin-

‘guished froin sharp angular ¢ crev ices’? (opinion, R.

343).

-Atinee this nding was amply cpus ty the evidence”

= (R. 37, 39, 68), and since itis ‘admitted (R. 8) that defend-

ants’ bulbs are frosted by etching, it is established that,

so far as thé character of the surface is concerned, defen¢..

ants’ _ bylbs ss ac to the erent of the. claims in’

suit. —

Also, it was saesex and not dts uted, that defendants’

bulbs conform to the requirements of the claims as wh

maximum brightness and as to ‘strength. ‘

The claims require that the maximum brightness ( cise

_» of. an incandescent’ dy ge say asada the bulb of the patent

ti re

fe)

39 ©

shall be’ less than 25% of that of’ the same lamp he a

clear bulo. The maximum brightness of defendants’ 25

watt lamps with the frosted interior averages only 3.2 units

as against 194 units maximum brightness for ‘the same . aiet

lamps with clear bulbs (R. 35); and the maximum bright-

_ ness of defendants’ 40 watt lamps with the frosted interior

averages Only 5.4 units as against 366.9 units maximum

. brightness for the same lamps with clear: bulbs (R. 36). .

Thus the maximum brightness of defendants’ lamps is much

less than 259% of that of the same lamp with a clear bulb

and faily complies with the —— of the claims in

this regard.

The claims hirther require that ie strength to vesiét

‘breakage of the bulb shall be greater than 20% (claim 1), — |

or greater than 45% (claim 2) of that of a clear bulb.. The

average strength of defendants’ inside-frosted 25 watt

* lamps covered by the test report-at R. 35 was 32.4 units -

and-that of defendants’ 40 watt lamps covered by. the test. —

report at R. 36 was 29.6 units; whereas the. strength of

corresponding clear bulbs as measured by the same bump- ——

testing apparatus averaged 52 and 47 units; respectively

(R. 37). Thus the strength of these inside frosted bulbs

‘ was greatly in excess of the value required by the claims.

It is, thus, apparent not only that defendants’ lamps

have the type of inside-frosted surfacé defined in the claims, .

but also that they retain to all the other requirements e.

the claims. =:

It follows that defendptite’ bulbs infringe the patent.”

But the District Court held rare

Basis of the District Court's s folding of non- feild,

The District Court hela Ahat defend ‘ts? bulbs did not

infringe, on the ground that

_ the mat surface of the structure nufactured by

the Bees is- “aaeaiantially identi al wel the mat

‘‘the mat surface of. the accused structure, a as well as

« @e

| satus of, the prior art. [The siete referred to

“in the prior art ‘double treatment’ disclosure show-

ing the etching of such things°’as camera screeis,

ete.] If this is the mat surface defined by Pipkin in- -

his claims, there can be‘no infringemen ** (Opinion,

an 342). ao sa

In this holding, as elsewhere thronghouf its opinion, the

District Court entirely loses sight .of/the fact that the

Pipkin patent is not for ‘ta mat surface’’; it is for a new

« lamp bulb, with a particular structure. ‘Such a bulb never

existed before Pipkin’s invention, despite the long felt

need for sucha bulb, and defendants have paid. Pipkin’s

invention the tribute of imitation and infringement. Af: 3

In addition to assigning this erroneous reason for/its

holding of ‘‘non-infringement,”’ ‘which, pf ¢ourse, is simply

a repetition of its mistaken views of invalidity, the District

_ Court ‘also held (R. 342, 343) that the claims of the Pipkin

' patent must be constr ned to embrace the particular frosting

method recomme nded ini the specification of the patent (al-

though the claims are expressly article claims and are not

limited in any way to any particular process) and that the’ -

Jewel lamp ‘‘is not manufactured under the method em-

braced in the claims... .7?—

The District Court, we respectfully. shbmit, pasa both

_ in the-assertion that the claims in suit ‘‘are so drafted as

necessarily to embrace the chemical. process by which, the

defined result is preduced,’’ and also,.if the point-be mate-

rial, in holding that’ defendants’ bulb-i is not manufactured. “1

by that method, as we shall ghow.

The claims are not Liniitod to. the process disclosed in the

patent. , S g vA

_ In holding that the Pipkin claiins are, in effect, process”

claims and limited to the process disclosed in the patent,

_ the District Court made, in our opinion, an error of law.

Its view on this ae, directly. prasad to that « the two

the

Sire

Phd

Paes ae

Courts of Appeals which - had prev iously cunenderes the

Pipkin patent. :

Save case, 82 F. 2d 100, 102, 103:

“It is important to note ‘that both of’ Pipkin’ s claims

‘cover a. a product and not a | method.’ Fae

‘Just as an old process may be practiced by. a.

new machine, or a new process - -by machinery which

may be either old or new, just so a new article of.

commerce may involve the exercise of the inventive

faculty even though-in producing itca known method

is resorted to. -

Similarly, the Court of “Appeals for the Second Circuit said

in its opinion in the Wabash case, 93 F. 2d 671, 672:

‘“‘The patent gives the formula which ’ may be used

for the frosting solution and the strengthening solu-.

‘tion. The claims, however, are directed to the ‘prod-

~ uct—-the bulb. structure ttself. £3

The District Court advances as.a.reason for its v iew v Hie en

asser‘jon that the claims contain ‘‘an explicit reference-to

the etthing /process as the only.means by which the, result i

may be produced’’ (R. 329).

But the claims say nothing in régard- to process except

as they say that the interior surface of the bulb ‘‘is frosted

by etching,” which is very far from requiring that tie feo

uct shall be produced by any partic ular etching process;.

ind the requirement that-the bulbs are to “be frosted by.

etching’? does not differentiate thé claims from defendants*

bulbs, for: defendants’ bulbs sré admittedly frosted by .

etching (Stip. R. 8)."

tinguished from one h ving an Cg erate of coatings

iR. 1411. Rigor

—

* Use of the term ‘frosted by etching” does'not import

' 4 process into the claim. The language i is descriptive of the |

kind of surface, that is one which is edten away as. ey :

ae ee a

The District Court aise said that ‘‘the process and the

result are so interrelated that they are inseparable’’ (R.

328)... eee 8 ,;

We see no basis for this assertion. Ev en if it be’ yee

that a two-step,process, such as that disclosed in the pat

was the only known méthod of producing an etched aaa

with rounded ¢revices, a different process might have been

- discovered the next day, or may be discovered tomorrow,

for producing the rounded crevices, once Pipkin had taught

- that a bulb with sygh crevices was desirable. And, indeed,

if the District’ a. be correct in holding that a surface

_‘*charaeterized by The presence of rounded as distinguished

- from sharp angular crevices’? (which the Court finds de- °

’ fendants’ bulbs to have), is produced by defendants bya -

method different from that des¢riped in the Pipkin patent,

- that fact of itself negates the proposition that the ‘4 precels

and result are so interrelated that they are inse »parable.’”*

_. ,An inventor who produces a new product, is entitled te

a patent covering that: new product as an article of manu-

facture, regardless of the procéss used in. its manufacture, ,

and regardless of the question whether that process be new

or old. Deed *

his is a pr odunt patent, and we think the court

belo ; fell into error in limiting it because the proce?

of manufacture was disclosed in the patent. A pr

uct patent. may not be limited to ihe exact proted

‘disclosed [citing eases|.’? Hookless Fastener Co. ¢.

ig, Prentice Mj. q.Co., TOF. 2d 264, 266.(C: CTA. 2).

“Thwour judgment,. it. is very’ clear that the claim

- is not restricted to the product made by the nr.

‘y

- Iti is of interest in this connection that just priok to

thie’ issuance of his°patent: Pipkin cancelled, his process

claims which had* been allowed by the Patent Office ‘to

avoid any possible contention that the arti&le claims ;are

to be limited by the method claims. ** (Patent file history,

R. 238). :

Per. 43

process; but covers fhe chetical indiv idual, howev er

produced. .We know of no rule requiring a construc-.

tion limiting a claim for a chemical product to the‘

described ‘process, because the evidence shows that

-it cannot be made in any other way than by the process

: recited. No warrant for such a rule is to be ‘found:

— either inthe statute or in the decfsioris:’? .Maurer -

v. Dickerson, 113% ed. 870, 874 (C. C. A. 3)..

‘Certain it is, in view ‘6f-the weight of authority

‘and the latest decisions, that the inventor ef a new °

| y and useful product ‘or article of manufacture may .

* have a patent which covers it and gives a monopoly ‘

upon it regardless of great variations in the method

of making (citing cases) and that in the ordinary and .

‘typical case, the method and the product are separ-

able invenfions.’. . — Dunn ve Toronto, 259 Fed.

208, 261-(C. C. A: 6).

Disfcndonte’ method -is im Fat fhe + two-step method de-

scribed by Pipkin.

Fort. the reasons stated in the Keoceding section, we

_ think it quite immaterial whether the defendants’ process

- is thé sameas. that described in the. patent or not. It is*~-

sufficient that, as the District Court found, defendants’ bulb

asa product has the interior surface of the patent ‘‘char-

. acterized by the presence of rounded asalistinguished from °

sharp angular crevices’? (R. 343). But, in fact, the method

by which defendants produce this surface is a two- step .

etching process like that.of Pipkin; and this is shown. by

_Aefendants’ owt expert testimony and by the Herzberg et al.

_ patent. (R. 311): which admittedly ‘discloses’ defendants’.

commercial process (R. 99,115) and which répeatedly refers

to its ‘second treatment”’ (R. 311, Col. 2, lines 12,47 and —

: 48) and “second. step". (R. 312, Col. 1, line 24). -

Defendants’ process as described by their oibiia Herz-

berg at R. 92, 93, 95, 96, 102 and 103, consists af the sonie:

ed — re, reste :

- interior walls of the bulb after the first treatment a mass

. » (R. 115).

ao. 44

First: The bulb is sprayed internally with a special

‘ acid frosting solution the forniula of which is stated in the

Herzberg et al. patent at R. 311." This first’ step obviously. .

is, and is admitted to be, the first —— treatm t of the

Pipkin patent (R. 93). ,

Second: Following the first irdateisat: theginterior of —

the bulb, te whieh adheres a portion of the | frosting

. solution from.the frosting step, is subjected to a second

_ treatment which consists of spraying hot water into it

‘ several times for a few ‘seconds gach time (R. 93, 95, 102,

103); the hot water being carefully maintained at a tem-

- perature of 180° F. (R. 93). Ttis ““compulsary to‘have that

* hot in our operation”? (Herzberg, R. 93).

Third: There then follows a eile treatment. in. |

: which the bulb is washed cut with cold water (R. 96).

It is essential to note tKat there is left adhering to the,

of the etching solution, which sticks to the walls of the t bulb |

because of its viscosity. yo

‘ _ If the s¢cond step of defendants’ process consisted in

‘ merely spfaying the interior*of the bulb with cold water,

this residual material would be merely washed out without

acting further on the glass, and the Bulb would be a fatally

weak bulb; as defendants took the‘pains ,to demonstrate at’ =

the trial (Horshery, N. 104).** nee =f

ae 9

| . Merhatg testified that the hydrofluoric acid referre

to in the formula ‘‘as 10% solution’’ is, in fact, a-60%

solution and that the pat tent was in error ine this vespect

** The bulb of the’ demonstéation in which cold water

was used instead of hot water ‘‘smashed at 5 on the bump

tester,’’ while a similar bulb in which defendants’ ‘‘hot

water’’ treatment was used did not shatter unfil 45 on the

bump tester (R. 104, 105), thus showing almost as: great

i as that ofa clear bulb (R, 2G, 27). fae

. ‘

- c.

. : - PA

_ ee

° ,

But what actually hide in Meliadant’ second treat-

~ ment is very different from merely washing. The reason

_ why the use of ‘very hot Water (140° F.). is ‘“‘compulsory”’ .

in that treatment, as-plainly stated in the Hefzberg et al.

patent and also definitely admitted by defendants’ expert;

ae this extremely hot water, combining with the special

tching solution which sticks to the walls of the bulb, forms.

a diluté solution of the material, which, though dilute, -yet

is active enough chemically becausg of the heat of the water

and the strength of the original solution, so that it eats

away more glass, and rounds the theretofore sharp angular

crevices of the surface. Thas defendants’ seecnd treatment:

_ produces the same rounded crevices and the same strength-

ening effect in thé same/way that: the second treatment of

the Pipkin patent with ‘the dilute ftehing, solution accom-

plishes that result. epee as

“As defe ndagts’ expert Allen said (R. 131):

‘vou ean get the same effect with a dilute acid at 2 a

higher temperature that you get with a more con-

- centrated acid as the temperature i is: ‘lowered. ere

his subject is. worth quoting in :

_ detail. He teetified (R. 1 , 132):

“IT: interpret the weak. acid which has been

. present? from the etch which remained in the bulb.

when the hot water was applied to it-—that it acted

in the same way that the weaker acid acted in etching

the experimental bulb which was only etched with a.

50% acid. In other words, it tends to eat out a

_ flattened area between these crystals. . .. Now,

—— you take. the experimental: bulb which was

din the same way, but rinsed in cold water .

: mt see that the sharp angular crevices at the bottom

persist; and | think that the: technical, scientifie -

yam eason for that is this: that there is a reciprocity

law, well- -knowy in chemistry, that concentration of a

BE (Seok wy,

Allen's testimony on

e”°

3. ete ast eget, aKa: “ '

reagent and temperature are ititesrelated. That ist

that you,can get the sanie-effect with a dilute acid

at a higher température .that you get with a more

i concentrated acid as the te mpe rature ts lowered.

OW hen this etched bulb therefore -was ‘washed ae

cold water, the cold watér washed out the- acid at.a~

_ temperature which did not allow the conceptration

_of the acid: to operate to do further etching, and .

therefore there is naturally a weakened bulb; where- -

as wi the case of the warm .water etch, the “acid has’

tended to flatte n out the space between. ” .

r 3 QR . . .

“Picts: own expert’ Sw itgeine thus testified, in effect,

he’ second treatment of .de fendants* bulbs, with the .

hot water combining with the acid remaining in the interior

ofthe bulbs, after the. first treatment, performs the same_

_ function’ ‘as the second treatment deser ibed, in the Pipkin

patent, namely, a farther etching, which tends to: flatten,

‘that is, to round the crevices betw een the srenpaies ‘of the

‘surface, .!

Also the asiheve et al. patent {R. 311), which defend-

ants assert to’ be deseriptive of the process: whieh” they

employ (R. 99), plainly says that in defendants’ process the

; “first etching treatment ‘‘is followed gL a treatment apply-

ing heat and moisture”? (page 1, col. 2, lines 11, 12) whieh’

the patent correctly refers to as ‘‘the second treatment”

: effect of this ‘‘second: treatment”

| (Sig to be aserihed sidialy to the effects “ heat upon’

there sidue of the etching mixture, making - of more

active’’ (Herzberg et: al. ‘patent, page 1, oe ; tines

2 : j1- 03). ms ‘@ : as oe Z

’ The Herzberg et al. patent says that Wri .. : A

‘if the outa applied in the second step of the process

is ‘much -helow: 150°. F. thie ‘bulb will bé ‘weak and

easily broken. - In fact, we prefer to heat the water

és ms SD

: =e

. 7 3 | .

‘used in this tre atmenit to about 180° ¥’.’or even con-_

siderably higher’? (He rzberg. et ai. patent, page *

‘ eol.-1, lines 23-28).

“Thus defendants’ process is not, as they now assert, a

one.step process, but on the contrary it is a two- -step. process

> followed by wW ashing like the process described by Pipkin in .

his patent as the \prefererd method for rreg : r his new bulb...

The second step of defendants’ process, like that ‘of Pip-

kin, is a treatment in which the etching. solution used is .

more diluge than that used i in the first treatment. *Defend- _.

ants merely dilute the Sohition uséd in- ‘their Second treat-

ment to a greater degree than’ Pipkin proposes and com-

pensate for the greater dilution by-raising the temperature »

of the water, in order to make the sdlution, dilute as it if

chemically active enough so that it will do the same work :

Fae rounding thé .erevices which Pipkin 'w second treatment

does.

Defendants’ method i is in all substance thes same‘as that _

bs ‘wt forth i in the Pipkin patent ; and indeed the District ccna

itself, in. effect, Jreld it so when it said (R. 332) : :

; “Tteseems obyious that. the: ‘rinsing, as thing surtied

‘ dilute- hydrofluorie acid; the etching sglution remain-

* ing on the etched sut face becomes: the active ingredi-

- ent of the rinse.’ i

We respectfully’ stibmit that the. District Court oored | in ‘ i

holding that defendants’ bulbs did not infringe the ‘patent.

The court erred,. ‘first, because it erronedusly held that the -:

claims, although skpressed to be for a product,-are, never->

theless, limited to. a. psoduct made: by the method described

in thé Pipkin. patent ; ;:and, it erred secondly, becausé ever

' if the first br aneh of the Court’s theory were correct, de-

_fendants’ method of producing their bulb surface is actually

‘in all substance. the two;step etching method described in

‘the be patent.

- In many cases’ the alleged invention ie come ints the |

art as soon as there was a demand for it and the Court is

obliged to speculate as: to whether or not it would have been

obvious to. the man skilled in the art:if his attention had-

been sooner directed to the problem. In such cases the.

% A subsequent commercial suevess of the invention is not re-

lated to the- past history of the problem and has little evi-,

-dentidry value in aiding‘the Court ini its speculation. | -

’ In other types of cases the history of the art demon-

strates, ‘as it does here, that the improvement was entirely

beyond the reagh ¢ of those skilled in the art. In stich cases,

' the practical failure of other worfers coupled ‘with the

.4immediate-and practical success of the patentee’s improve:

‘thent historically demonstrates. invention as a fact. In such

_ eases the Court does not have to speculate about invention;

the law accepts the verdict of history no matter how simple

the invention may seem in the light of hindsight,

Thus, i in Potts ¥. Creager, 155 U. 8. 597, 608, ‘this Court .

said:

> ~

3 “The appargnt bittiplictty. of a new device often leads

an inexperienced. person to think that it would have

occurred .to any. one familiar with the subject; but

the decisive answer ts that with dozens and perhaps

-hundreds of others laboring in the same field, it-had

_nevér occurred to any one before. The practised eye

' of an ordinary meefianie may. be- safely trusted to

see what ought to begpparent to avery one.’’ .

‘oni 3 in ee Co. v. Higgins, 105 'U. S. 580, 591, this

Court said: Fis ir °

“But it is plain from the ev vidence, and from. {he very

fact that it was not sooner adopted and used, that

it did not, for years, occur in this light to even the

‘most. skilful persons. It may have been under their

/ very eyes, they may almost be ys have-stumbled

% ?

| ana in Diamond “Rubber Co. Vv: Consolidated’ Co. -» 220 |

os a! gee . : - pee ee

“over: it; an ihey certaj of led to see it, to estimate

‘its value, and to bring 4 inito notice. * * * Now that

’ it has sueceeded, it may seem very plain to anyone .

that he could have done it-as well. This is*often the

* ease with inventions of the gr eatest merit.’’

U. S..428, 435, the Supreme Court said:

Vand j in Eibel ‘Process Company v. Minnesota &: Oniario

Paper Company, 261 = 8. 45, the ‘Supreme Court sald ofp.

“Knowledge after the eyent is always easy, and

' problems’ nce solved present no difficulties, indeed,

‘nay be represented as never having had any, and

expert witnesses may be brought forward to show

. that the’new-thing which seemed to have eluded the

search of the world was always ready at hand and

easy to be seen’ by:a ‘merely. skillful attention. But

. the law lias other tests of investion. than subtle con-

jectures of what might have been sd@p and ‘yet was

not. It regards a change as evidence of novelty, the

acceptance and utility of change as a further evi-

dence, even as demonstration. "9

“The fact that in a gf are of’ an eager gasat for:

higher speeds this important chain of cireumstances,

“applied a remedy for the .consequent trouble until

‘Bibel,:and the final-fact that when he made known.

“his discovery, all adopted his remedy, leave no doubt.

in our minds’ that what he saw and did was net ob-

‘vious and did involve discovery and invention.’’ .

‘This Pipkin invention i is one of the f ruits of the plaititist” 8

extensive einge aad development work in the ingandes-

‘cent lamp 3 The very object of our patent laws is to ~

“encourage ark of this character. The right to exclude ,

infringers which the Pipkin patent gives ‘to ti.e plaintiff,

‘its owner; is the consideration paid to induce such research

and the disclosure of resulting inventions for free use by

ill members of the public after the expiration of the patent.

under the strictest interpretation of the standard

Seah ‘ ‘ ee é

We respectfully submit, that Pipkin’ s‘ new bulb, the pat-

ent for which is here in issue,.is an invention of great merit,

one that-has resulted in a real advance in electric lamps, and

that the Pipkin patent is one which should be sustained

invention required for a valid patent. - ae =a

Since the patent will have expired before. this ¢ case can

be decided by this Court, no question of an injunction § is in-

volved.

We submit that the: judgment below aaa be ° “evers

and the Pipkin claims held valid and inf ringed, p ‘aintiff (

--have the usual age ee

oh ee Pe ae el ater

ete eas ully submitted,

Aisin C. Neave,

Harky R. Puasa, Jr.,

Joun H. ‘Anpersoy, -

Counsel for Petitioner

“September 24, 1945

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This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.