# Brief for Petitioner — General Electric Co. v. Jewel Incandescent Lamp Co. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386404_0203%3A3 ## Record - **Collection:** Supreme Court brief - **Document type:** Brief for Petitioner - **Published:** January 1, 1945 - **Citation:** 326 U.S. 242 ## Text a 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 eo 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. ii a -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 ; Q “- . ’ | Bes / % 7%, . a oe bad ry - bad ’ s ° ° 4. 4 aa - ° os a . > 77 y" eg . 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 \ 4 \ “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 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 “ ¢ ? bd . 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 © é oy oe first claim: SB 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 ee “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- 2 ® ated we a ast etch which actually ate away more of the . glass.* The actual iilate of the art shows -that this ‘was true, 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.* a 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 - - © snrface.’’ It-may well be that sucha, meré. discovery i is not 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. ; ba e covery of this peculiar property, inferent in the physical characteristics of the mat surface, was not a_ 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 \ ! i: ‘ — sé ee 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 Ne 34 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 « 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 8 36 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): as ‘high? and ‘substantial’ in describing ar invention é6r discovery in patent specifications ayd claims have been recog: © “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- as ‘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 men were the ‘individual defendant Herzberg; organizer © 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 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 out, is equivalent to’ washing with a hot. solution of © ‘ 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 Se “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. 8) “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, had. escaped. observation, the fact that no one had © . “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. x under the strictest interpretation of the standard 50 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 oe ete eas ully submitted, Aisin C. Neave, Harky R. Puasa, Jr., Joun H. ‘Anpersoy, - Counsel for Petitioner “September 24, 1945 . 9 + .e . ° ‘ oy 2 a re Pho . ® , : ° . ~ ’ ° : ’ ~ : 2 “4 . < ° ‘ e ~ ’ ° 6 ‘ ¢ , 2 ’ . oo ‘ é . 3 rs . . : . hod ; - } * ‘ . - 1-7 . ¢ % . © * a. af, . . ‘ @,~ . ‘ --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386404_0203%3A3. Public record. Not legal advice.