[Second Edition,.]

[Second Edition,.]

Vol. VI., No. 19.J AND TRADE MARK CASES. 243

The Bodega Comparu, (Lilnited) and Riviere v, Oioens,

of the Defendant as to it having come into such common use, alleging that allsuch use of it in England and Scotland was by the Plaintiffs or their licensees.If the Defendant can make any such case in evidence as he alleges it will beopen to hirn to do so upon the trial of the action; but even if he were to

5 establish the fact, he would still have to meet the serious difficulty presented bythe statutory rights conferred on the Plaintiffs by registration.

On this portion of the relief sought I am therefore of opinion that thePlaintiffs have established their right to the exclusive use of their registeredtrade mark, and are entitled to an injunction, until the trial of the action, or

10 further order, against the Defendant using the same in connection with the saleof goods of the classes in respect of which it is registered. But on the otherportion of the claim, namely, the injunction to restrain the Defendant fromusing the word "Bodega" to denote or distinguish his place of business, I amof opinion, as I have already stated, that the Plaintiff does not stand in so

15 favourable a position, as he cannot bring his use of the word within the benefitsof registration. He is, in my judgment, entitled on the evidence before me tothe use of the word as a trade name in connection with his trade and business;this, however, does not amount to an exclusive right to it, but only a right torestrain any other person from using it in such a way as to represent that the

20 business carried on by that person is the Plaintiffs' business. I am not satisfiedon the evidence before me that the Plaintiffs have made out their case in thisrespect. The Plaintiffs have not set up any Bodega in any part of Ireland,except in Dublin, and I cannot at present see how a public house in Belfast can,by being called a "Bodega," withdraw any customers from the Plaintiffs' Bodega

25 in Dublin. The Plaintiff, Mr. Fay Iiiuiere, states that he has it in contemplationto establish Bodegas in various other places in Ireland, including Belfast; but thecase of the Ciuil Service Association. v. Dean (L.R. 13 C.D. 512) is an authorityshowing that a mere intention to set up a business in the neighbourhood ofthat started by the Defendant, under a name similar to the Plaintiffs' trade name

30 is not, per se, sufficient ground for an injunction. The case of Lee v. Haley(L.R. 5 Oh. App., 155) is important on this branch of the case, as showing that ifa trade be carried on under the same name as that of the Plaintiff, but in adifferent locality, there may be no ground for an injunction, while if carried onin a situation nearer to the Plaintiff's place of business it would be. The same

35 principle is recognised in Boulnois v, Peake. I shall, therefore, refuse theinjunction as regards the Defendant's place of business in Belfast; but I shall,On the usual undertaking as to damages, grant an injunction until the trial orfurther order against the Defendant using the word" Bodega" on goods sold byhim. I reserve the question of costs.

40 The f'ol lowing Order was made:"The Plaintiffs, by their Counsel, undertaking to abide any Order this Court

"may make as to damages in case this Oourt shall hereafter be of opinion that"the Defendant has sustained any by reason of this Order which the Plaintiffs"ought to pay, this Oourt doth Order that an Injunction do issue to restrain the

45 "Defendant, his agents, and servants, from using the registered trade marks of" the Plaintiffs, or either of them, in connection with the sale of goods in"respect of which they have been registered, or any colorable imitation of"same, until the trial of this action, or until further order; and it is further" ordered that the question of costs be reserved."

50

55

IN THE COURT OF ApPEA.L.

Before LORDS JUSTICES COTTON, LINDI.JEY, A.ND BOWEN.

December 1st, 3rd, 4th, 6th, 7th, 10th, 11th, and 13th, lS88, andFebruary 18th, 1889.

EDISON AND SWAN ELECTRIC LIGHT CO. v. HOLLAND.Action for infrinqernent of tuio patents.-Infringen~ent denied.- Validity of

patents denied. - Subject-matter. - Sttfficiency 0.1 Specification. - Utility.-P 11003-200-11/94-Wt 16289 A

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244 REPORTS OF PATENT, DESIGN, [May 22, 1889.

Edison and Swan Electric Light 00. v. Holland.

Anticipation.-Effect ojprevious judqment upholding one patent.-Unsuccessfuleeperimeni-s-Improvemente preventing sale of the oriqinal invention.-Thirdparties.-Ool~ts,R.S.C., o. 16, r 54.-Certificate of val1°d£ty.

The owners oj two patents, relating to the construction of incandescent electriclamps, brought an action for infringement. The Defendants denied infringe- 5ment, and alleged that the patents were invalid on the ground (inter alia) of'insufficiency of Specification, want oj novelty, and utility.

Held, by Kay, J., at the trial, that one patent was invalid on the grounds that(1) the second claim was too uiide; (2) the Specification did not describe a lampwhich ever became,or could have become, commerciallu successful , (3) the directions 10contained therein for making the carbon required further experiment; (4) oneoj the processes described was pract1:cally injurious , (5) another of the proceesesdescribed was, if not injurious, of no practical utility; (6) the third clai·m wasof no practical 1.ltility; but that the other palent was valid and had beeninfringed; and an enquiry as to damages and delivery up of lamps infringing 15such patent was ordered on motion to vary the minutes.

The Plaimtiffs appealed.Held, by the Court of Appeal, that the former decision in Edison and Co. u.

Woodhouse, 4 R.P.G. 79, so jar as it decided the construction oj the patentnamely, that the invention claimed was a combination of any carbonized 20filament, ioith. a·ny receiver of glass through which leading wires pass and fromwhich. the air is exhausted-must be followed; but that whether that claim wastoo wide or proper subject-matter, and whether the invention. was novel anduseful, were questions depending partly on fact, and must be decided de novo;(2) that the second claim was not too vague, and was subject-matter, the word 25filament conveying a sufficiently defined idea to a skilled person of the class towhom the Specification was addressed i (3) that the inuentiorc was useful, andthe patent was not to be defeated because subsequent inventions improved thepatented article, or because in consequence of sucb improvements practically noarticles were made in accordance with the Specification ; (4) that the patent was 30not anticipated; the evidence showing that the anticipation relied on toas only anunsucceseful experiment; (5) that the objection of insufficiency failed, thedirections contained in the Specification. being sufficient to enable a personhauinq a reasonably competent knowledge of the subject, and reasonably competent skill, to make the article without further invention, though it might be 35some trial and experiment were required, The decision of Kay, J., was accordingly reversed, and an injunction granted as to both patents, unth. a certificateof breaches, and costs on the higher scale in the Court below.

Third parties, who appeared in the Court below and on the appeal, ordered topay the costs, but no further relief granted against them as they were not made 40Defendants, and leave to amend refused (LINDLEY, L.J., dubitante).

When a certificate of validity has been granted in a former action, it need notbe again granted.

On the 10th of November 1879, a patent (No. 4576 of 1879) was granted toMr. Thomas Alva Edison for "Improvements in electric lamps and in the 45"method of manufacturing the same." The Specification stated that "The"object of this invention is to produce electric lamps giving light by"incandescence, which lamps shall have high resistance so as to allow of the"practical subdivision of the electric light. The invention consists in a light"giving body of carbon wire or sheets coiled or arranged in such a manner as 50"to offer great resistance to the passage of the electric current, and at the same"time present but a slight surface from which radiation can take place. The" invention further consists in placing such light-giving body of great"resistance in a nearly perfect vacuum, to prevent oxidation and injury to the"conduutor by the atmosphere. The current is conducted into the vacuum 55"bulb through platina wires sealed into the glass. The invention further~'consistsin the method of manufacturing carbon conductors of high resistance,"so as to' be· suitable for giving light by incandescence and in the manner of"secriringperfect contact between the metallic conductors or leading wires and

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Vol. VI., No. 19.] AND TRADE· MARK CASES. 245

Edison and Swan Electric Light Co. v; Holland.

" the carbon conductor. Heretofore light by incandescence has been obtained" from rods of ca-rbon of one to four ohms resistance placed in closed vessels in" which the atmospheric air has been replaced by gases that do not combine" chemically with the carbon. The vessel holding the burner has been composed

5 "of glass, cemented to a metallic base. The connection between the leading" wires and the carbon has been obtained by clamping the carbon to the metal." The leading wires have always been large so that their resistance shall be" many times less than the burner, and in general the attempts of previous" persons have beento reduce the resistance of the carbon rod. The disadvantages

10 'It of following this practice are, that a lamp having but one to four ohms"resistance cannot be worked in great numbers in multiple arc without the" employment of main conductors of enormous dimensions; that owing to the" low resistance of the lamp, the leading wires must be of large dlmensions" and good conductors, and a glass globe cannot be kept tight at the place

15 "where the wires pass in and are cemented, hence the carbon is consumed," because there must be almost a perfect vacuum to render the carbon stable,': especially when such carbon is small in mass and high in electrical resistance." In the use of a gas in the receiver at the atmospheric pressure which, although" not attacking the carbon, serves to destroy it in time by 'air washing,' or the

20 "attriton 'produced by the rapid passage of the air over the slightly coherent" highly-heated surface of the carbon. I have reversed this practice. I have" discovered that even a cotton thread properly carbonized and placed in a" sealed glass bulb exhausted to one-millionth of an atmosphere. offers from" one hundred to five hundred ohms resistance to the passage of the current,

2f> "and that it is absolutely stable at very high temperatures; that if the thread'" be coiled as a spiral and carbonized, or if any fibrous vegetable substance" which will leave a carbon residue after heating in a closed chamber be so" coiled that as much as two thousand ohms resistance may be obtained without," presenting a radiating surface greater than three-sixteenths of an inch; that

30 " if such fibrous material be rubbed with a plastic compound composed of" lamp-black and tar, its resistance may be made high or low according to the"aluount of lamp-black placed upon it. I have also discovered that carbon" filaments may be made by a combination of tar and lamp-black, the latter" being previously ignited in a closed crucible for several hours, and afterwards

35 "moistened and kneaded until it assumes the consistency of thick putty." Small pieces of this material may be rolled out in the form of wire as small" as seven one-thousandths (7~1000) of an inch in diameter, and over a foot in" length, and the same may be coated with a non..conducting non-carbonizable,. sn bstance and wound on a bobbin or as a spiral, and the tar carbonized in a

40 "closed chamber by subjecting it to high heat, the spiral after carbonization" retaining its form. I sometimes roll a thread within the compound of lamp" black and tar so as to allow of greater convenience in handling the same, and''" the flexible carbon filament is not so liable to crack by its own weight in the" act of winding. To increase the resistance of the compound of lamp-black

45 "and tar, I sometimes work into it a volatile powder such as powdered camphor," oxide zinc, but to make the light insensitive to variations of the current a" considerable mass of matter should be used in order that the specific heat of" the lamp may be increased, so that it takes a long time to reach its full~, brilliancy and also to die away slowly. To do this it is better to have the

f>0 "~arbon as homogeneous as possible, and obtain the requisite resistance by" employing a filament several inches long and winding the same in a spiral" form, so that the external radiating surface shall be small. All these forms" are fragile and cannot be clamped to the leading wires with sufficient force~'to ensure good contact and prevent heating. I have discovered that if

55 " platinum wires are used and the plastic lamp-black and tar material be" moulded around it, that in the act of carbonization there is an intimate union" by combination and by pressure between the carbon and platina, and nearly"perfect contact is obtained without the necessity of clamps, hence the light" giving body and the platina wires are connected and ready to be placed in the

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Edison and Swan Electric Light 00. v, Holland.

"vacuum bulb. When fibrous material is used the plastic lamp-black and' tar" is employed to secure it to the platina wires before carbonizing. By using" the carbon wire of such high resistance I am enabled to use fine platinum" wires for leading wires, as they will have a small resistance compared to the" light-giving body, hence will not heat and crack the sealed vacuum bulb. 5" Platina can only be used, as its expansion is nearly the same as that of glass." B)'" using a considerable length of carbon wire and coiling it in such a manner" that only a small portion of its entire surface radiates light, I can raise the"specific heat of the whole, and thus prevent the rapid reception and". disappearance of the light, which on a plain wire is prejudicial, as it shows 10" the least unsteadiness of the current by the flickering of the light, but if the" current is steady, the defect does not show. I have carbonized and used" cotton and linen thread, wood-splints, paper coiled in various ways; also"lamp-black, plumbago, and carbon in various forms mixed with tar and" kneaded, so that the same may be rolled out into wires of various lengths and 15" diameters, each wire, however, is to be uniform in size throughout. If the" carbon thread is liable to be distorted during carbonization, it is to be coiled" between a helix of copper wire. The ends of the carbon or filament are" secured to the platina leading wires by plastic carbonizable material, and the" whole placed in the carbonizing chamber. The copper which has served to 20" prevent distortion of the carbon thread is afterwards eaten away by nitric" acid, and the spiral soaked in water and then dried and placed in the glass'" holder, and a glass bulb blown over the whole with a leading tube- for., exhaustion by a mercury pump. This tube, when high vacua has been"reached, is hermetically sealed. With substances which are not greatly 25" distorted in carbonizing, they may be coated with a non-conducting non-" carbonizing substance, which allows one coil or turn of the carbon to rest" upon and be supported by the other." After describing the drawings, theSpecification concluded thus :-" I 'claim as my invention: First. An electric" lamp for giving light by incandescence, consisting of a filament of carbon of 30" high resistance made as described and secured to metallic wires as set forth." Second. The combination of a carbon filament within a receiver, made"entirely of glass, through which the leading wires pass, and from which"receiver the air is exhausted for the purposes set forth. Third. A coiled" carbon filament or strip arranged in such a manner that only a portion of the 35" surface of such carbon conductor shall radiate light as set forth. Fourth."The method herein described of securing the platina contact wires to the"carbon filament and carbonizing of the whole in a closed chamber," substantially as set forth."

On the 28th of November 1878 a patent (No. 4847 of 1878) was granted to 40Frederick John Oheesbrough for" Improvements in and relating to electric" lamps, and to a method of charging such lamps with an artificial atmosphere" and purifying the same, and to the production of a carbon for use in electric" lamps and for other electric purposes," as a communication from abroad byWilliam Edu'ard Sanouer and Albon Man. On the 12th of November 1884 45the Specification was amended. It is not in this report necessary to setout further this Specification, since, as will be seen later, this patent did notcome in question on this appeal.

This patent having been assigned to the Edison and Swan United ElectricLight Oompany, they brought two actions against Woodhouse and Iauoson for 50infringement of the two patents. Those actions were tried in 1887, and thetwo patents were upheld both by Mr. Justice Butt and the Court of Appeal."The Edison and Swan United Electric Light Oornpany subsequently broughtthe present action against Mr. W. Holland, the manager of the Albert Palace,Battersea, where lamps had been used which were alleged to be infringements, 55and the Jablochkoff and General Electricity 00., Limited, who had supplied thelamps alleging infringement, and asking for an injunction to restrain them from

lie See Report 4 R.P.C. 79, 99.

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Edison and Swan Electric Light Co. v. Holland.

using any electric lamps manufactured according to the Specifications, fordelivery up of infringing lamps, an account of profits, damages, and costs. Withregard to Edison's patent the Plaintiffs only alleged infringement of the secondclaim.

5 The Anglo-American Brush Electric Light Corporation (Limited), who werethe manufacturers of the lamps, and who had agreed to indemnify theJablochkojf Co., obtained leave to defend the action as third parties.

The Defendants denied the alleged infringement, and put in issue the validityof the patents. They alleged that the Specifications were insufficient, and that

10 the supposed inventions were not new. They also denied the utility of lampsmade according to the Edison patent.

The particulars of objections, which referred to a large number of priorpublications relied upon as anticipations of the Edison and Cheesbrough patentsrespectively, are set out in the report of the case in the Court below, 5 R.P.C. 459.

15 The only particular relied on in this appeal was the exhibition and descriptionof electric incandescent lamps by Mr. Sioan at Newcastle-on-Tyne and Gateshead in December 1878, and the early part of 1879.

After certain interlocutory proceedings" the action came on for trial beforeMr. Justice Kay, on the 17th of April 1888.

20 The Attorney-General (Sir R. Webster, Q.C.), Aston, Q.C., Moulton, Q.C.,and A. M. Bremner (instructed by Ashurst, Morris, Crisp and Co.), appearedfor the Plaintiffs. Sir H. Davey, Q.C., Finlay, Q.C., and J. C. Graham(instructed by Renshaws) appeared for the Defendants.

The evidence was very voluminous and conflicting.25 The case occupied a large number of days in hearing, and was not concluded till

July 16th, when judgment was reserved. Judgment was ultimately given byMr. J'ustice Kay on the 9th of August, 1888, when the learned Judge held thatthe Edison patent was invalid on the grounds that (1) the second claim wastoo wide; (2) the Specification did not describe a lamp which ever became or

30 could have become commercially successful; (3) the directions containedtherein for making the carbon required further experiment; (4) one of theprocesses described was practically inj urious ; (5) another of the processesdescribed was, if not injurious, of no practical utility, and (6) the third claimwas of no practical utility-but that the Cheesebrouqli patent was valid and had

35 been infringed.tThe Plaintiffs appealed from the judgment so far as it found against them,

but no cross appeal was made by the Defendants. The same counsel appearedas in the Court below.

The Attorney-General for the Appellants.40 The appeal only relates to the Edison patent which Kay, J.,held· invalid,

though he found a number of issues in our favour, viz., that Edison was the firstand true inventor, novelty, and infringement. He, however, decided that theSpecification gave insufficient directions for the making of the invention. ThePlaintiffs now appeal from that decision so far as it is against them, There is no

45 cross appeal.Since about 1840, repeated attempts have been made to obtain a successful

incandescent lamp, and this long period of unsuccessful attempts is veryremarkable. Carbon conductors were tried in 1845, so nobody could patentthat; but combustion took place in the vacuum, and that did not do;

50 then nitrogen was introduced to prevent combustion; Edison. suggested theplatinum spiral, and Lane Fox discovered high resistance lamps were betterthan low resistance and invented some improvements. This is the sum totalof the Defendants' 75 objections. All they can say is that it was known longbefore 1879 that you could raise to incandescence conductors of various kinds;

55 that carbon was a suitable conductor; that high resistance lamps were likely tobe of use; that a vacuum was a probable condition in which incandescent lampswould succeed, but nobody had seen that simple carbon in the shape of a

.. See Report 5 R.P.C. 213. t See Report 5 R.P.C. 459.

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"'248 REPORTS OF PATENT, DESIGN, [May 22, 1889.


filament would do. The step was taken when Edison enunciated the idea in apracticable shape. People had been trying previously, over and over again, toget over the difficulties in the same way. In December 1878, Sioan made thenearest approach to the Edison lamp in F.J.B. 1 which was made for him byStearn. .It had a globe of glass, platinum wires, and a pencil of carbon. The 5evidence of Sioan. and Stearn, who are said to have anticipated Edison, andtheir correspondence accidentally preserved, shows that they admitted thatEdison anticipated Swan. Now although they had obtained a great success,they were led astray by it for a whole year, so little did they recognise theadvantages of a filament of carbon. The Defendants set up thatStcan 10went on working on the lines of F.J.B. 1, and produced a thread lampwhich was perfectly successful; that he showed hundreds of carbonizedthread lamps, working at Newcastle, in the middle of 1879. Kay, J., hasfound, even if the evidence is true, that this was only experimental;as a matter of fact the witnesses mistook the time, and no thread 15lamp was made by Swan till after Jannary 1880. This is clear on thecorrespondence and the evidence of Sioan. and Stearn. Moreover, in 1885,there was a paper written by Stearn, at a time when he was hostile to Edison,to minimise the latter's invention. Stearn gives an account of the differentprevious lamps, and he states the Swan lamp was not made till July 1880. It 20would be an absolute success for the Defendants if they could prove that Suian'«was made before Edison's, but it is clear they cannot. Swan and Stearn sworethey never carbonized thread till after January 1880. They had no idea of it.Unless the Defendants can win on F.J.B. 1 they cannot win at all on the ground ofanticipation. The broken pieces of the experiments made in 1879 by Swan and 25Stearn are preserved, and show that they failed to appreciate that it was possibleto make a carbon conductor much smaller than in F.J.B. 1, i.e., they werestrengthening the conductor instead of making it filamentary, and in .consequenceof the greater heat caused by the higher current of electricity, they had tointroduce the coils of platinum wire to take away the heat; but it did not enter 30their heads to use carbon alone and in a filamentary shape) or that thatunstrengthened had sufficient resiliency and stability to do the work. Yet everysingle effective incandescent lamp can be described in the terms of Edison'sSpecification; the material elements of everyone are to be found in Edison'sdescription. Swan and Stearn were working in the wrong direction; directly 35Edison's discovery was announced we have it in black and white that BUJansaid to Stearn, "If Edison means carbon, we are anticipated." That disposes ofthe idea of anticipation. Immediately after Edison's discovery was announcedeveryone began to work in thread lamps.

Edison lamps were sent to Dr. Hopkinson in March 1880, before the Com- 40plete Specification was filed, and six were exhibited in February 1880, in QueenVictoria Street. [Sir Horace Davey.-Not under this patent.] Yes, certainly;but it does not matter if the lamp was made under a subsequent patent, thequestion is what Edison told the public in his Specification. The CompleteSpecification states the object of the invention" to produce electric incandescent 45" lamps of high resistance so as to allow the subdivision of the light, and there is" to be only a small surface of radiation, in other words high resistance and small" cross section." This is new. Then the patentee states a difficulty that, inasmuchas with low resistance the leading wires must be large and good conductors, theglobe cannot be kept tight where they pass in. That is exactly the difficult)? 50Swan and Stearn found. The air got in. Then Edison says: " I have reversed" this practice. I have discovered that a cotton thread properly carbonized" is absolutely stable at a very high temperature." Here is thefirst point of attack. It is said, and was found by Kay, J., that" properly car-" bonized " does not give sufficient information. Then Edison refers to a "coiled 55" fibrous vegetable substance." This contains a description of all subsequent,successful lamps, however they may differ ill improvements. Then he statesfilaments may be made of tar and lamp black; this is the second point of attack.It is said this conveys insufficient information, is impossible and absurd; so

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absurd that some of theDefendants' witnesses had never tried it. Weshowedit was done by boys and girls without scientific knowledge. Then it was saidthe filament of tar and lamp-black could only be made by a trick; the-contrarywas proved by our evidence, and the report of the special referee, Professor

5 Stokes, which Kay, J., has practically disregarded. Then Edison saidsmall pieces of this material can be rolled in wire as small as 7-lOOOthsof an inch. The Defendants said nothing like ,it could be done, and ifmade they could not be carbonized. In the presence of their witnesseshundreds as thin or thinner were made by a boy, and were perfectly

10 carbonized. But the Defendants' witnesses did not try to succeed; theymade their experiments with an unsuitable crucible, which let air in.Their experiments made after the commencement of the trial shew thatthe points of attack were suggested by the scientific witnesses; they ·wereexperiments not to do it. The Plaintiffs' experiments before Professor Stokes

15 were completely successful. The Defendants' witnesses tried again and failed,and the cause of the failure was at once pointed out. "To work in a volatilepowder such as powdered camphor or oxide of zinc," was said to be ridiculous.But this, as well as all the other alternatives mentioned by the patentee, wasshown, and produced good lamps except as to the length of time they burnt;

20 and even now with ten years of improvements, 50 per cent. of the filamentsmade are found to be useless.. No selection was made from the lamps made inthe experiments; they were taken as they came, and those tried proved quitesuccessful lamps. Then Edison suggests a "spiral form of filament." It willbe found this made some of the best lamps; and further he lays stress on

25 uniformity of size. It was admitted by the Defendants they made no attemptin their experiments to secure this. It was said that coiling between a helix ofcopper failed; on .the contrary it produced the most uniform spirals. Then agreat point was made by a witness for the Defendants that the Specification saidyou were to blow your glass bulb over the carbonized filament, and that it is no

30 infringement if you first blow the bulb and then insert the carbon filament.But it is perhaps a reasonable construction of the patent that you must do thelatter, as you cannot do the former; but this difficulty was only raised by theprofessors, not by the practical men. The third serious defect relied on by theDefendants was this; they said you cannot seal platinum wires into the glass

35 as described because the platinum will become porous, and air pass through.This defect disappears after Professor Stokes' report ; yet it was put forwardby their principal witnesses. .

Kay, J., has found infringement; he was of course bound by the formerdecision, but he took the same view as that of the Court of Appeal. Lord

40 Justice Cotton. differed on one point; he thought the Specification must beconfined to a filament carbonized after it was formed. The Defendants arefound to have done this, and therefore the difference of Lord Justice Cottonbecomes immaterial.

Then there was an attack made on us by Mr. Finlay. F.J.B. 1, Sir45 Frederick Bramwell said, in the former trial, might have been made by being

shaped or rubbed down from apiece of carbon, but it appears in the evidencein this trial, that though some lamps had been made that way, F.J..B. 1 wasnot. It was therefore said we misled the Court then, because the conductor ofF.J.B.l was made in France by Carre, who carbonized after the filament was

50 formed. But Mr. Swan did not then know that, and at that time he wassubpcenaed by the Defendants. The whole matter is immaterial, unless yourlordships find the pencil of F.J.B. 1 to be a filament, and that is abandoned.

N ow it was said you could not carbonize these things properly. There wereseveral ways of carbonizing; surrounding with charcoal or sand, or carbonizing

55 in a closed chamber without packing. The Defen ,iants' witnesses, recklesslyrelying on almost a single experiment, said to carbonize with sand wasridiculous; in a closed chamber was impracticable; and that people would notknow they ought to carbonize by surrounding with powdered charcoal. It isadmitted that the last was perfectly well-known; but the Defendants said it

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was not sufficiently indicated. Everyone of these was done, and without afailure, before Professor Stokes. Yet Kay, J., has found the patent bad, becausethere are not sufficient instructions as to carbonization. We could not understand. how their scientific witnesses failed. Kay, J., thought our witness,Professor Dewar, was decei ving the Court, because he said the filaments could 5be carbonized in a brass box. We had to make the experiment again in anotherbox, and it was successful: and again before Professor Stokes. ProfessorFrankland, their. witness, admitted he never tried to find out why he fiailed,yet at the former trial he produced a carbon filament made in accordance withPulvermacher's patent, and said that patent anticipated Edison. Professor 10Stokes tried to find out the reason of the failure. Professor Dewar did thething perfectly easily, and said he could not understand the failure. Professor Orookes produced nothing but ash. Then his crucible was examined andfound to be porous. In the former action this issue was never raised at all.The Defendants in that case said Edison told the world nothing, and anybody 15could make the lamps. Of course, that is not an argument against the presentDefendants; but they ought to. have made their experiments independentlybefore the action was brought. When the question was referred to ProfessorStokes, which of the experiments was correct, he found on every issue for thePlaintiffs.UnfortunateIJ, in this case I was unable to reply for more than a 20quarter of an hour, so that this argument was not delivered to the judge. Thenas to the objection that carbonization in sand was absurd; that was a completemare's nest. Sir F. Bramuiell said you could carbonize in sand. Crookes triedit and failed, and then this argument was raised. A workman is not told howto carbonize; he would know that he might pack with something, and he 25might try with sand, which would fail, and therefore the Specification wasinsufficient. In answer to that, we say it was common knowledge to packwith charcoal, but supposing some description was required, it is proved thatany kind of carbonization would do without packing at all even. We producedsome filaments carbonized in sand, and Professor Crookes characterized this as 30a trick. This was absolutely rebutted by Professor Stokes' report. Then it wasadmitted that charcoal packing was well known for carbon electrodes for arclamps, and yet it was said we must not read the Specification with the light ofthis knowledge. Professor Crookes admits some electrodes were packed insand; that puts him in a dilemma. If that succeeded, why did he say just 35before that sand packing was impossible? If unsuccessful, why does he putthat on me? [BOWEN, L.J.-I understand Kay, J., upset the patent on theground that the directions were not sufficient.] That was the main ground.[BOWEN, L.J.-Then that is a point we did not have in the former case.] Yes.Of course it is open now, though it is inconsistent with the argument in that 40case. Then Professor Crookes actually, in one of his experiments with thetar-putty moistened it with water; it was simply an attempt to fail. He rolledhis filaments with his hand; the proper way is with glass, but he said thatfailed. And it was shown before Professor Stokes that what the Defendants'witnesses did was to use the filament before properly kneading into putty, as 45the Patentee specially directed. Then as to the 3rd objection, that the platinumbecame porous when you carbonized the filament attached to the platinumleading wires, and so air penetrated. Our first answer is, it is not true.Secondly, Edison did not carbonize those wires in connection with the filament-he clamped them on. But we did not understand the alleged porosity. It 50turned out in the experiments before Professor Stokes that it was caused becauseProfessor Crookes inserted a piece of glass, which caused silicate of platinum tobe formed. The Defendants also took plumbago instead of lampblack for theirexperiments, which tended to produce porosity. The experimentsheforeProfessor Stokes showed that porosity did not appear, and no defect was caused 55by carbonizing the filaments in the presence of the platinum wires. The defectdid not exist ; certainly not through anything in Edison's Specification.

It is our case that the combination of Edison was the substratum of everysubsequent lamp; the Defendants' own witnesses show the Edison. bamboo lamps,

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Edison and Swan Electric Light Co. v, Holland.

however improved, were exactly in accordance in all essential elements with thiscombination. It was said they were improvements, but that is no defence ofinfringement. Then at the close of the Defendants' case we produced a number.of lamps made by Giminqhasn, sworn to be made exactly according to the

5 Specification, and we also called Professor Deicar, who showed that everything inthe Specification had been tried and was completely successful, the only issuethen being that the Specification would not work. The case stood thus; ourevidence showed workmen had done the thing; the evidence against wasexperiments of these professors made after action brought. Kay, J. suggested

10 that experiments should be made before Professor Stokes; the Defendants stillsaid everything was impossible, and required everything to be done over again,although, being the Brush Cornpany, who are making lamps of this kind, theycould know perfectly well themselves how far these things could be done. ThePlaintiffs' experiments, made before Professor Stokes, were at their works at

15 Ponders End ; by the Defendants, at the laboratory of Professor Crookes. It isrernarkable they did not choose to work at their own works. Then ProfessorStokes made his report; the first experiment was preparing tar-putty and makingfilaments of that-Professor Stokes sent results of the experiments in a box toKay, J., but the latter never opened them-they are in Court. [It was arranged

20 that the box should be opened if necessary.] The experiments showed fewerfilaments were broken when there was no packing. Professor Stokes -reportsthat he saw no signs of failure in the experiments tried at Punders End;no filaments were burnt to ashes. The report is a severe commentary on theevidence of Professor Crookes. Spiral filaments were also successfully made,

25 which Professor Croolces said was an impossibility. The copper helixexperiments were perfectly successful. Five filaments of tar-putty were rolledto ·0066 of an inch in diameter. The coating process was tried successfully.So the mixing of the tar-putty and zinc and the other things mentioned in theSpecification, and the lamps made were afterwards run and tested: some broke

30 down, others ran successfully for 32 and up to 160 hours without breakingdown. [BOWEN, L.J.-Is there any reason why, if a lamp has run 32 hours, itshould not go on running.] No; the best lamps have only a certain life-perhaps1,000 hours. It is a very important fact that the only substantial improvementshave been directed to increasing the length of life of the carbon, not to carry

35 out a different system. Swan parchmentized the carbon. The only thingapproaching a new departure is J.P. 1, the lamp of Bernstein.

Then the Defendants' experiments were tried, and we see the failures.Tar-putty was made, but they put in lampblack a minute-and-a-half before theend of their kneading; in fact, they did not knead properly. When the

40 Defendants found the putty would not hold together they had no businessto try to make filaments out of it. The lampblack stained the fingers: thatshows the putty was not properly mixed. The next experiment was carbonization:Professor Crookes used a porous earthenware crucible. The Specification sayscarbonizing is to be done in a closed chamber. The experiment of these

45 gentlemen was unfair. Our witness carbonized in a plumbago crucible, whichis what is used- by the Defendants at their own works. Professor Dewar hadused it for thirty years. It is the alphabet of carbonization that if air gets inthere is combustion. The Defendants have never justified the use of thi~crucible; they cannot do so. They made a mud-cased filament instead of a

50 coated filament. Their experiments were in many cases like nothing in theSpecification. But the report shows that what the Defendants said wasan impossibility and an absurdity was done, and could be done by anordinary workman without special technical knowledge. There was anadmission made with regard to the lamps we tested that they could be

55 improved by" flashing" and '10 running on the pumps." The strengthof our case is that our lamps ran without these improvements and theadmission is they would have run much longer with them. The test wassevere, and lamps with these improvements often break down. We wereentitled to use these improvements because there is no departure in them from

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252 REPORTS OF PATENT, DESIGN, CMay 22, 1889.


Edison's description. Now, before Edison no lamp ever lived more than20 minutes; yet many of these lamps made under the dry inexperience of theSpecification ran without breaking down at all. Because an improvement can bemade, that does not prevent the improved lamp being an infringement. Ifthat were so, no patent could ever be infringed. Sir George Jessel pointed out, 5in Otto v, Linford 46 L.T. N.S. 41, the patent had never been made mnch,because it had been improved at once and only the improved articles made.The question is, what has the Patentee described, and if he has described acarbon 'filament-a vessel wholly of glass, platinum wires leading to the carbonfilamentin a vacuum; if that is new and useful, and the foundation of every 10other lamp, it does not matter about improvements. The judgment of Kay, J.,was delivered without having his mind directed to the points on which werelied, or to the results of the experiments before Professor Stokes, and it issubmitted that a number of points in it are inaccurate. To take anything inlater patents of Edison; and treat them as admissions against this patent, is totally 15new patent law, and fallacious, and might be capable of the greatest injustice.The learned judge seems to have forgotten the lamps seen by Dr. Fleminq whenhe says the Plaintiffs have been challenged to produce lamps made according tothe Specification; but there is no actual obligation to make a lamp; it does notmatter what a Patentee has done; it is what he says. There is no condition, as 20in France, that the Patentee shall bring his patent into work. It is enough ifit is a new combination, properly described, and a step in invention. Thewhole judgment is not reconcilable with the facts, the finding you cannot makea lamp in accordance with the Specification, which will burn properly, withoutexperiment, is not borne out by the evidence. The Defendants' witnesses failed 25because they used a porous crucible. [LINDLEY, L.J.-Is there any evidence toshow that an ordinary workman would know, in 1879, that a porous cruciblewould not do?] Yes. Nobody could have used a porous crucible to carbonize.Before we knew how they had failed, Professor Dewar said the air must have gotin. [LINDLEY,L.J.-Was an ordinary crucible known to be porous?] People who 30knew about carbonization must have known some crucibles were porous: atany rate a man is not justified in sticking to a crucible which will not do; hehas no right to give up a Specification after a single failure. Professor Crookes didnot say you could carbonize' in a non-porous crucible-he said you can'tcarbonize at all. [BOWEN, L.J.-The question of sufficiency is open on this 35appeal, but we are bound by our former decision as to construction.] Yes. ASpecification which tells you to carbonize is directed to people who know aboutcarbonization. And such persons, if they found the filaments burnt up, wouldtry to find out where the air got in. The description is apt and sufficient for aperson who knows, and improper directions are not to be imported. Properly 40carbonized in a closed chamber so as to leave a carbon residue is the direction;your Lordships are asked to say this includes carbonization without packing ina porous vessel.

Lastly. It is said Edison's Specification told the world nothing. Kay, J., says,having regard to the smallness of his invention, the Specification does not 45sufficiently define what he was entitled to claim; that all he did was to availhimself of the well-known law that by reducing the size of the conductor youincrease the resistance. Edison really made an immense step: he told peoplenot to trouble about strengthening their conductor.; ntooths of an inch ofcarbon will do. [BOWEN, L.J.-Is this point open?] Probably not, that is in 50my favour, but I will go through it. Now, F.J.B. 1 was in existence inNovember 1878 ; for a year Swan and Stearn work away from Edison. Theyhear of his alleged discovery in Febrnary 1880-all they know is that hecarbonized cotton thread; they immediately make successful thread carbonlamps. How can it be said there was no sufficient description in Edison to 55justify his claim to the new combination. Edison pointed out a new genus offilament. [COTTON, L.J. -We all think this point is covered by our formerdecision.] [BOWEN, L.J.-Perhaps you may tell us how the Defendants say thisis new matter.] They called evidence to show that in September 1879 they

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Vol. VI., No. 19.] AND TRADE MARK OASES.


saw thread lamps or horse shoe lamps burning in Swan's factory, running froma gas engine. We showed the gas apparatus was never put up till the spring of1880, and. by Swan and Stearn that they never made these lamps till afterJanuary 1880. There was an error of date. Swan and Stearn's letters show

5 what they were doing up to the date of Edison's patent. They first made ahair pin lamp on November 26th 1879 ; but it broke down. [COTTON, L.tT.W~ relieve you from arguing that the construction of the Specificationshowed the invention of Edison, and that the invention was sufficientto support the patent; but we do not stop you on the question of antici-

10 pation.] On that point there is no finding against me. The evidence showsthat, bringing to bear on the Specification reasonable knowledge and skill,and an intention to work it fairly, the Specification was amply sufficientto enable persons to make the combination, which was new and was describedby Edison, It was not originally part of the Defendants' case that this

15 was a matter in which directions were required; they said it could not bedone. [BOWEN, L.J.-The greater includes the less.] Not when the thingis entirely new, and no one knew a tender carbon filament would do. Theobjection was not suggested by the manufacturers: this is merely a question 6fdirections in the Specification.. It was said it cannot be done. Edison invented

20 nothing. The evidence was given with reference to that issue. But theobjections taken were not well founded. The lamps produced were effectiveworking lamps, only they do not run as long or as cheaply as the improvedlamps. But the improvements only commence after Edison's Specification, andif the success of these later lamps depends only on improvements, that is no

25 objection to the patent, Canninqten. v, Nuttall L.R. 5 H.L. 205.Moulton, Q.C. followed. [COTTON, L.J.-We desire to hear the evidence on

what was the knowledge previous to the 10th of November 1879, as to carbonization, which a workman skilled in this class of work would know].Carbonization was a well-known term for a well-known operation producing a

30 well-known result. Percy's Metallurgy of 18(~1 shows it was a well-knownterm. The patentee tells you to carbonize; if you do not know what thisis, you must go to the books and find out. The words bear a definitemeaning, and the knowledge of the world must be brought to bear, and must bereasonably used. The learned judge and the witnesses seem all to have gone

35 on this-would an electrical workman at that time be able to carry out thiswithout further instructions? That is not the point. It is enough if thedirections were sufficient when 3, person went and got the world's knowledgeto bring him to the real result. Now the important point about carbonizationis the exclusion of air; it means, if something a little more definite is wanted,

40 carbonizing in a closed chamber. It is of course common knowledge that airmust be excluded. 'I'hen it is not sugg-ested packing with charcoal is notsufficient, but it was suggested that people in 1879 might not use charcoal,though everybody in their experiments had used charcoal till sand was suggestedby Sir Frederick Bramwell. Chambers' Encyclopoedia, in 1861, gives a description

45 of carbonization. Again there is a description of the rudest form, making charcoal in forests, in Wagner's Chemical Technology, edited by Professor Orookes,published in 1872. It was never suggested that an ordinary chemist would notknow that charcoal dust should be used to pack. [BOWEN, L.J.-What was putin as to the process of carbonization on 'very minute articles.] There is a passage

50 in a book on Electric Lighting by Hippolyte Fontaine translated and publishedin England in 1878. [BOWEN, L.J.-The knowledge of the application of carbonization to small objects seems to be critical. This seems to show what wasknown by high scientific intelligence. What was the common knowledge?]The argument that you would not use what was known for large objects to

55 preserve small objects is not sound; common sense would suggest the opposite.This packing with charcoal dust was used for other analogous purposes-in thetempering of hair springs of watches to prevent access of air. It is immaterialwhether the electrical workman knew it or not. It was well known that thiswas the proper way of protecting from access to air. The evidence conclusively

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shows this. Carbonization is edged out by a positive and negative direction.You must drive out the oxygen. You must not burn up the carbon. Ifthe directions are sufficient, the patent is not bad, because a man mayhave to try once or twice before he succeeds. The direction was perfectlydefinite. An ordinary crucible would do if it was packed with charcoal. 5[BOWEN, L.J.-Is not this a summary of the evidence, that this method ofcarbonizing small filaments was not used in trade; that it was probably knownto chemists in 1879, but not known to ordinary workmen who were employedin carbonizing things ordinarily carbonized with the exception of electrodes?What carbonization was, was common electrical knowledge? Packing with 10charcoal was known, and probably known to chemists that the same kind ofprocess but more perfect, would apply to small filaments]. Yes; but there isno evidence that further care is required if charcoal packing is used. Thenthat is our first answer as to carbonization that any person who had inquiredwhat was the proper way, would have heard of charcoal packing, and would 15have known the necessity, and could have used this method. Then there isthe experimental evidence. The evidence shows if you get a simple closedvessel (not a porous crucible) that will do. [BOWEN, L.J.-Does it not come tothis; does the Specification give sufficient directions to an ordinary workmanwhen it says carbonized? You must find out what is the meaning of ordinary 20workman.] A workman who is to properly instruct himself. The box was amost literal fulfilment of Edison's Specification in its most difficult form.Before Professor Stokes carbonization was successfully performed in it. Thefact that in modern methods greater heat is used, because it can be done safely,is not relevant. The learned judge in effect finds, contrary to the report of 25Professor Stokes, that the directions are insufficient. One word as to the Defendants' experiments; they were allowed to do anything they liked, and thereforethe experiments before Professor Stokes are to be taken as a fair sample of theirexperiments and what they meant to prove. All they did prove was that if youcarbonized in a porous vessel the things would be burnt up. On the balance of 30evidence the workman, whoever he was, could clearly succeed with packing,and without, if he tried to do it fairly with proper knowledge. In the BadischeAnilin v. Leuinstein, L.R. 29 Ch. D. 406, [this part of the judgment is not touchedby the House of Lords, see the report L.R. 12 App. Cas. 710J, at p. 426, it is said"the Specification cannot be considered as addressed to the ordinary workman." 35That applies here especially as there was no manufacture of incandescent lampsat this time. BOWEN, L.J.-What did the House of Lords S';1y on this point ?]Nothing; but they must have accepted this definition. The mere ordinaryworkman test cannot be applied to this patent. It must be addressed to somecompetent person [LINDLEY, L.J.-Accustomed to carbonization experiments?] 40Yes; chemical patents are often unintelligible to anybody but first rate chemists;they are not put forward to the uninstructed workman. The suggestion that itis a mere workman must be wrong. All that is meant is that there must be noneed of invention. The Specification is addressed to persons in the professionhaving skill in the subject not to men of ignorance, per Lord Loughborough, 45Arkwright v, Nightingale, 1 Webs. R. 61. The Specification must not be something so recondite that with the ordinary knowledge of the world it cannot beread-but it is to be supposed that the people to whom it is addressed have acquiredan ordinary knowledge of the world on all the subjects to which it refers. Inthis case it is addressed to persons who have the ordinary knowledge of the 50world on carbonization of those people who have to carbonize. If it isintelligible to them that is sufficient. In this case it is so. In Bickford v,Skewes, 1 Webs. R. 218, it is said: "The Specification is addressed not to"persons entirely ignorant of the subject matter, but to artists of competent"skill in that branch of manufactures." In Huddart v. Grimshaio, 1 Webs. 55R 85. p. 87 the term used is "a person skilled in the subject matter." In theBadische A niline case Lord Herschell, 12 App, Cas. 720, refers to "a skilled"person of the class to whom the Specification is addressed." "The competent" workman" was brought in in favour of the patentee, it did not mean you

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Vol. VI., No. 19.] AND TR.A.DE MARK CASES. 255

Edison and Swan Electric Light Co. v: Holland.

were to go down to the level of an unskilled person. [LINDLEY, L.J.-What isyour invention? What am I not to do?] You are not to use a carbon filamentin an envelope entirely of glass with platinum wires for the purpose of lightgiving. [LINDLEY, L.J.-I understand; but a patent must be looked at

5 from two points of view; you must tell what a man is to do, and whathe is not to do]. The cases may be summed up in this, there mustbe nothing left for invention on the part of the person applying for thepatent; but in addition to the general knowledge of the world, you mayalso take into consideration the unwritten knowledge of a workmen. Kay, J.

10 gives six reasons for finding against the patent; 5 R.P.C., p. 459. (1) iscovered by the decision in Edison v, Woodhouse; (2) is wrong in point offact, and is in law an insufficient ground. We have always put forward thatthis is the case of a new form of lamp. [COTTON, L.J.-The learned judge's'ratio decidendi seems to have been that the lamp wanted improvements before

15 it could be commercially successful.] It is not necessary to show it must becommercially successful. [COTTON, L.J.-You need not argue that.] Thelamps made did run successfully, as a matter of fact. [BOWEN, L.J.-Canyou not leave that to the other side?] (3) that the directions are insufficientmere workmen did it in this case; (4) because one of the processes, mixing

20 with a volatile powder, is injurious. It is not law that the patent is invalidatedif by one method an inferior filament is produced. [BOWEN, L.J.-We decidedthat in Ehrlich v. Ihlee, 5 R.P.C., 437.] But the volatile powder experiment wasdone before Professor Stokes. (5) because the coating is of no practical utility.There is no evidence to support that; it was said that it could not be done, but

25 it was done. (6) because the same may be said of the coiling of the filaments.The only evidence quite uncontradicted was that it made a more pleasant lamp.

Finlay, Q.C., for the Respondents. The present case differs in many pointsfrom Edison v, Woodhouse. In that case the Court were led to believe that thispatent caused a great outburst of incandescent lighting, and the judgment was

30 influenced by that. That was a mistake; the patent was a mere unimportantlink in, a chain of experiments and passed unnoticed. Secondly, in the previouscase it was thought F.J.B. 1 was a mere abandoned experiment: F.J.B. 1 on thecontrary, was quite successful, and lamps are now being rnade in all essentialsidentically similar, and further, Swan made other lamps in 1879 and 1880,

35 which owed nothing to Edison. Swan and Stearn admitted that there isnothing new in the principle of the second claim of E'fdison's patent, and that ifthe patent had any virtue it was in the process. We do not infringe theprocess. While reserving our right to argue for another construction of thesecond claim elsewhere," we say this Uourt may hold on the same construction

40 that the claim is bad, because there is a mass of fresh evidence. [COTTON, L.J.We can hear you on the question of anticipation: that is merely a question ofevidence, but we are bound as to the construction of the patent.] Still, so faras evidence might affect the result, your Lordships might come to a differentconclusion. Thirdly, in the former case the point of the patent was said to be

45 that Edison. had discovered a means of making the filament, and afterwardscarbonizing. Now, F.J.B. 1 was, in fact, carbonized after it was made. Ourcase is that the Plaintiffs' principle is not new and their processes worthless. Iunderstand it is not contended in this action that we have infringed theirprocess: in the former action it was said the Defendant had infringed by

50 forming filaments before carbonization. [COTTON, L.J.-'rhe Attorney-Generalsays you have infringed the. process of the filament by a colourable variation.]That point was not made before Kay, J. Fourthly, in the former case thequestion of sufficiency was not raised, and utility was admitted. Therewas no such evidence as now. The case turned on the construction of

55 the Specification and how far a claim for a filament could be good. Ourargument in the present case is, we have not infringed the process. Theonly attack made on us is, we have infringed the principle claimed by Edisonin his 2nd claim. [Bremner.-We do not admit that.] [LINDLEY, L.J.-It isadmitted if the claim fora filament is good you have infringed that.] Yes,

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Edison and Swan Electric Light Co v, Holland.

that is principle; and if the modes described or any of them for carrying outthat principle are insufficient, the patent is bad. We say then there is nothingnew in the principle, and on three points the processes are insufficient. (1) Thetar-putty process. Our witnesses tried to do this and failed; but the ground onwhich they failed W8S never suggested in cross-examination. Why? Because 5the Plaintiffs did not know what the point was. The point is, after you havemade the putty you must go on kneading it with great force for a very longtime, then it changes its form and its consistency and can be made intofilaments. That shows the Specification gives an insufficient description. It isclear my learned friends and their instructors did not know this till late in the 1.0case. This patent led a perfectly obscure existence till raked out for thepurposes of litigation. No lamps were even made under it except for litigation. [COTTON, L.J.-The Attorney-General did not admit that.] Theevidence shews that; if I am wrong, it is a point against us. We could notimagine, after the failure of our witnesses, how it was going' to be suggested 15these tar-putty filaments could be made. The 2nd point on which the Specification is insufficient is as to carbonization. The process of that was, of course,known, but not for such delicate things as filaments. Our witnesses tried theprocess, and they said the directions given were quite insufficient, looking tothe then state of knowledge. The Attorney-General made strong observations 20on this evidence; the ground of his attack being that the crucible used wasporous, and therefore the experiments were not fair. But the crucible used wasan ordinary earthenware one. What was there in 1879 to tell even a chemist,much less the ordinary workman, that an ordinary crucible was not to be used?Before Professor Stokes the Plaintiffs used an iron box ;. this was such a novelty 25that in 1880 two patents were taken out for it. [BOWEN, L.J.--Is thatevidence?] The fact that Edieon took out a patent in December 1879 and anotherin September 1880, each of which includes in one of its processes the use of an ironbox for carbonizing filaments is very good evidence that the ordinary intelligentworkman would not have known, in November 1879, that an iron box must be 30used. The 3rd point on which we say the Specification is insufficient is as tothe coating process. Our witnesses shewed that if any of the non-conducting,non-carbonizable substances are used to coat a filament, there will be a chemicalaction when heat is employed, and the filament will be destroyed, and even ifnot destroyed then, that a chemical action would infallibly take place when it 35was used and the electrical current passed through. In the Plaintiffs' counterexperiments they merely sprinkled, as Kay, J. has found, a mere pretence ofcoating. It is enough if we show that anyone process is insufficiently describedor impracticable. Our evidence shows the Specification is bad on three points.There was a misapprehension in the former case. It was there suggested that 40there was an advantage in a filament for an electric lamp per see That is notthe case for an individual lamp; for that the rod is better. The filament isonly an advantage for a system of electric arc lighting, because you can thenwork with smaller mains, and an economy of material. [COTTON, L.J.-Wasit not also an advantage that such great heat was not required, and so the glass 45not cracked?] Lamps are successfully made now with pencils, at any rate notfilaments. The scientific witnesses are unanimous as to the single lamp.lBoWEN, L.J.-That is a new point. In the former case every rod or pencilhad failed.] "The judgment in the former case proceeded on the assumptionthat the filament was advantageous for a single lamp. [COTTON, L.J.-The 50evidence was so.J We now shew that that is not the case. Then the evidenceshews that for multiple arc lighting it was known increased resistance wasdesirable, and that that increased resistance might be obtained by diminishingthe sectional area of the carbon conductor. [COTTON, L.J.-We had all thisbefore.] Yes, but there is further evidence. On a questionof fact the Court may 55come to a different conclusion. We say there is no novelty. [LINDLEY, L.J.-This class of evidence was before the Court before.J [BOWEN, L.J.-Wedecided that claim 2 was a filament-we are bound as to that; but you sayit is a question of fact whether that was too wide a claim or not?] Yes, and

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even on the same evidence it would be open for us to argue the point.[BOWEN, L.J.-Theoretically, but you would not be likely to succeed.] Thereis the new evidence. [COTTON, L.J.-That is different; but it is no use takingus over the patents we had before us then.] For commercial purposes it is

5 admitted that packing was absolutely necessary. That disposes of theexperiments made in an iron box without packing. Then it is said wehave infringed the 2nd claim apart from the process. The 2nd claim isreduced merely to a diminution in the sectional area of the carbonconductor. Practically, that was known. [BOWEN, L.J.-Not that you

10 could reduce to a filament.] There was absolutely nothing new in Edisonsaying, "Diminish the area of your carbon conductor and you get increased"resistance." If he has given a new method for that, that may be good, but wehave not infringed. [COTTON, L.J. - You are going against the formerjudgment; they found there was invention.] Edison could not patent a

15 principle, a matter of common knowledge. [LINDLEY, L.J.-Practically, theprevious decision comes to this, Edison produced a new material in the shape ofthese carbon lamps for this purpose.] On our evidence, not new. I submit itis a mixed case of law and fact, and we are entitled to bring the whole matter inreview. Then on this evidence this patent had no appreciable effect on electrical

20 lighting. [COTTON, L.J.-Have you proved that there was, before the 10thNovember 1879, any incandescent lamp practically used?] There was F.J.B.1.Lamps identical in structure are successfully used. [BOWEN, L.J. - Withsubsequent improvements.] Without improvements Edison's will not work;at any rate, not commercially.

25 The Plaintiffs take up inconsistent positions : having first said that anyworkman would have known in 1879 to use charcoal dust, they now say nopacking is needed. [COTTON, L.J.-They say it can be done without packing.]In an iron box. [COTTON, L.J.-My impression on the evidence is that anordinary man, skilled in carbonizing delicate things, would pack with charcoal

30 or plumhago powder.] Yes, now; but the question is what would the ordinaryworkman have done in 1879. [COTTON, L.J. -The ordinary workman is afallacious expression-in some cases it may be right: in other cases it is skilledperson.]

The only lamps put in by the Plaintiffs in the first part of their case were, for35 practical purposes, failures; it was only after Professor Stokes commenced his

experiments that they could make the tar-putty lamps successfully, and evennow a lamp made simply according to the patent, though with all the light ofpresent experience, cannot be made a commercial lamp. We deny, according tothe patent of 1879, commercial utility, even with the light of present experi-

40 ence. [COTTON, L.J.-I am afraid we cannot consider commercial utility; it isa new term in patent law.] The results of the experiments made beforeProfessor Stokes were so uncertain that the whole thing was a speculation.

Mr. Sellon's evidence shows that the filaments of the Defendants are made byan entirely different process. [BOWEN, L.J.-1.~his is not material unless you

45 displace the patent.] I wish to be quite sure of what will be said in replythey must confine themselves to an infringment of the principle of their secondclaim. [COTTON, L.J.-They say on the construction put on the second claimyou have infringed.] I wish to guard myself', so that it cannot be said we haveinfringed their process. [Aston, Q.C.-The A ttorney-General said that even on

50 the construction put on the Specification by COTTON, L.J., the Defendantsinfringed: that is for afterwards.] [BOWEN, L.J.-Were any of your experimentsmade elsewhere than at Crookes'? You know it was objected that there was aflaw in those experiments.] Yes, Sellon's were made at the Defendants' works.[BOWEN, L.J.-Was Sellon cross-examined as to the crucible aud other imper-

55 fections of. the process?] Yes; he packed with plumbago. On his crossexamination, as on all the others, there was not a hint as to the going on workingwith the tar-putt)... for a long time, which we know now makes the differencebetween failure and success; the inference is the Plaintiffs did not then knowhow to make filaments from tar-putty. Sellon was not cross-examined about

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what crucible he used: it did not occur to anybody that a common cruciblewould not do. He "as cross-examined to show that certain defects might becured by the Cheesbrough process-but all that we have to do with is the Specification. Sellon honestly followed the directions. [LINDLEY, L.J.-You must notconfine yourself too rigidly; a certain amount of skill and a certain amount of 5desire to succeed must be shown. You must not expect to be told everything.]Certainly not matters of common knowledge; but the secret of these thingswas not revealed till after Professor Stokes' experiments. [COTTON, L.J.-'fheexperiment of Mr. Crookes of putting water to the mixture looks like the act ofa man who was not trying to suoceed.] It rnight be subject to that criticism if 10it was the only way he tried, but he tried other ways. He tried the tar-puttyaccording to the Specification ; we had five witnesses who all worked up thesematerials into the consistency of putty; how could the hypothetical person in1879 know more than these eminent gentlemen? That it was necessary to applyconsiderable force for an hour and a half; we suggest the Appellants did not 15then know, and that they got instructions from America by a series ofexperiments. It is entirely immaterial that a little lampblack was added inProfessor Crookes' experiment before Professor Stokes. The other side shouldthen have made a point about it. [Aston, Q.C. - We asked for it to be statedin the report.] It was only put in to give the proper consistency. It is an extra- 20vagant contention that this made all the difference. Our tar-putty B was a success,tar-putty A was a failure. Why? Because the latter was not, the first was workedup according to the way shown by the Appellants' experiments to be necessary.Then Professor Crookes gives evidence that the working in a volatile powder, suchas oxide of zinc, failed; the carbon was destroyed by chemical action, the carbon 25combining with the zinc. I do not know what is suggested as the flaw in theseexperiments, [Co'rTON, L.J.-You seem to have given up this objection.] Wedid not repeat the experiment before Professor Stokes, but Kay, J., rnentions it inhis judgment, but I will go to the non-conducting, non-carbonizable substanceexperiment, which has much the same chernical action. 'I'his is the coating 30process or pyro-insulation. The Plaintiffs, in their experiment before ProfessorStokes, merely dusted or sprinkled. With a pocket lens the dark surface of thefilament could be seen throngh the coating. Now, in the provisional, Edisonrefers to an earlier patent, No. 5306 of 1878, where he has described the processof coating; in that he describes an application of the coating material to metallic 35wires until it has reached one-third of the thickness of the wire itself.[COTTON, L.J.-You cannot refer to that to construe the Complete Specification.]If a person was in doubt as to the coating, he would be guided by this.[BOWEN, L.J. -Is not your broader point that what they did was not a coating.]Yes, bnt one must look at the state of knowledge with regard to pyro-insulation. 40Edison has described this operation in the former patent, and anyone desirousof knowing, what coating was to be applied, would naturally refer to that.[COTTON, L.J.-I doubt if ,ve can refer to the Provisional except as showingwhat the knowledge was at the time. We have decided you cannot refer backto the provisional for the purpose of construing the Complete Specification.] 45But you can refer back as to the state of knowledge, and there is nothing toindicate that the coating in this case is different. lLINDLEY,L.J.-Your argument is that he puts a construction on the word coating, in another document.]I submit that the state of knowledge was you put on a coating one-third thethickness, and that you ought to do so in this case. 50

Then Professor Thompson. gives evidence that the Edison lamps exhibited atParis in September, 1881, were made in accordance with a later Specification;your Lordships are entitled to look at that; the statements in it are evidence toshow how these lamps were made. [The Attorney-General.-I objected atthe time, and I object now, that these later Specifications are not evidence; they 55'are not admissible to construe the patent.] [Sir Horace Davey.-Not toconstrue it, but we desire to use these later Specifications toshow by what meansthe so-called world-wide Edison lamps and the lamps handed to the Court were.made.] [COTTON, L.J.-If you object, Mr. Attornep-General; we must decide

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Vol. VI., No. 19.] AND TRADE MARK CASES. 259


the point.] [The Attorney-General.-Edison's patent is a perfectly goodimported patent. No subsequent Specification or statement by Edison isadmissible to narrow the ambit of what is a fair construction of the Specification.Improvements are immaterial ; the question is, is the infringing lamp made in

5 accordance with the Specification, see Cannington v, Nuttall.] [COTTON, L.J.I think we cannot reject this Specification in accordance with which they saythese lamps were formed; but do not take it that we decide that it is admissible;we will see what is said about these Specifications.] Finlay, Q.O.-We showthat nota single commercial lamp was made under the first Specification.

10 [BOWEN, L.J.-I doubt if you can support that by showing there is a descriptionwhich would correspond with the way in which this lamp was made, publishedafterwards, apart from the admissibility of it as being a statement made by theinventor.] It is admissible as a statement made by the inventor before theassignment to the Plaintiff Company. If we produced a letter of Edison

15 written in 1881, saying his patent of 1879 was all nonsense, that would beevidence; surely these later Specifications, in which all the details of the processare given, are evidence, only not so strong, of insufficieny or want of utility.

Sir Horace Davey at this point, by the leave of the Court, delivered thefollowing argument on behalf of the Respondents.-This case is presented on

20 different evidence from the former one, and we are entitled to have everyquestion, certainly every question depending on evidence, fairly consideredon the present evidence. (COTTON, L.J.-We ought to follow the formerdecision as to the construction of the Specification.] Strictly, we mightask for a reconsideration of that, but we accept the construction that the

25 second claim includes a filament made in any way. [COTTON, L.J.-Yes;that was the decision.] The points of difference between this and theformer case are these. First-this is of great importance: we now knowhow the carbon conductor of F.J.B. 1 was made. Up to a certain point inthis case it was put forward as the great merit of Edison's invention, that the

30 filament was shaped before it was carbonized. That now appears to be amistake and is dropped. It is extraordinary that in the former case the counselwere permitted to suggest that the F.J.B.1 conductor was first carbonized andthen shaped; that they relied on that as the differentia of a filament, andallowed the Court to give its judgment on that representation. I t is extraordinary

35 that Swan, who was sitting in Court, never interfered. The Attorney-Generalmade a great point of that in the former case; he relied on it; he called it thetouchstone of the invention. On this point, then, the case is different. Andwhen we proposed to have a commission to examine Carre in Paris, thePlaintiffs, instead of being taken by surprise, said they would admit Swan's

40 carbon was obtained from Carre, and the next day, after the Attorney-Generalhad consulted his clients, he admitted the conductor of F.J.B. 1 was made asdescribed by La Fontaine. I refer to this to show that it was not the case, asthe Attorney-General endeavoured to say, that 110 one knew anything aboutthis. Swan knew; he does not say so distinctly, but that is the conclusion to be

45 drawn from his evidence. It is very material, when we come to discuss what isa filament,to take away the misconception on this point. fBOWEN, L.J.-Howfar will displacing that destroy the judgment of the majority on the formeroccasion ?] The majority of the Court put no construction on the word"filament." [LINDLEY, L.J.-They thought what Sioan had was not a filament,

50 I think.] And why? On the evidence before them. Because, according tothe case of the Plaintiffs, the differentia of the word "filament," as used by1!J'di8on, was said to be receiving its shape before carbonization. It may well be,if the Oourt had had before. it what it has now, that it would not have disposedquite so easily of the question of anticipation by F.J.B. 1. The question still

55 remains-what is a filament? Not what was the meaning given in the last case:there is nothing left now as entering into the definition of a filament but a smallcross section, if that be so, and high resistance. Let the Plaintiffs formulatewhat they say a filament means. Whether those two elements enter into thefilament at all is a question to be ascertained from the language used' in the

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patent, interpreted so far as there are words of art by experts. One expertdisclaims the idea of high resistance, another the idea of a particular crosssection as entering into a filament. Therefore the question still remains, andcomes before your Lordships on different materials-what is a filament? TheAttorney-General made a surprising statement that the new evidence did not 5bear on the question of either novelty or subject-matter. We say the case onthis appeal comes before the Court under a totally new aspect.

The second point on which the evidence is different from that in the formercase is the cogent evidence now given as to the insufficiency of the directionsto enable anyone to make a successful lamp. I do not say commercially 10successful; that was an expression of Sir Frederick Bramwell. We say theexperiments before Professor Stokes support our evidence, which is not in anyway met by the rebutting evidence, and there is the remarkable fact that nosingle lamp is known to have been made in accordance with the directionscontained in the Specification exclusively. It was said there was such a lamp, 15and a lamp was handed to the Court at the last trial, and the Court no doubtbelieved in it. But it is now known that that lamp contained other elementsin accordance with directions in subsequent patents of Allison. We heard, onthe last trial, a great deal from the witnesses about the world-wide Edisonlamp, and about the Edison lamp being the first commercial one; but what we 20are talking about is, can a successful lamp be made with the directions in thispatent only? Subsequent discoveries and subsequent improvements of Edison;enabling him to make a successful lamp, are nothing. Of course we do notsay improvements invalidate a patent. It may be true the Edison lampssubsequently sold have the elements contained in the second claim; in fact, if 25the second claim has the wide signification claimed, it will cover everyincandescent lamp; we don't dispute infringement if the second claim hasthat wide meaning, although our filament is made in a totally different manner.Therefore, to say the improved Edieon and Swan lamps are nothing butimprovements is nothing on the question of sufficiency; the question is, 30whether the directions contained in the Specification would alone, withoutexperiment, enable a person to make a successful lamp. That is the issue, andthat is what we mean when we say no lamp was ever made exclusively fromthe directions in the patent of 1879. Therefore, on the present evidence, thecase is different from the former one. Reserving, then, my right to contest the 35former decision elsewhere, I accept it on the mere meaning of the secondclaim, though I say there is no estoppel against me. But that leaves open thequestion on which the Court expressed no opinion-what is a filament; theCourt thought there was no evidence that a maker of lamps would not knowwhat a filament was. The patent then was a patent for a principle with a 40description of the mode in which that is to be carried into effect, The law isthat you cannot take out a patent for a principle, but you may take out apatent for a principle coupled with the mode of carrying the principle intoeffect, provided you have not only discovered the principle but invented somemode of carrying it into effect. Jupe v. Pratt, 1 Webs. R. 146. But there are 45two desiderata, first you must discover the principle, i.e., the principle must benew; secondly, the means of carrying the principle into effect must besufficiently described and practicable, and produce a practical result. We takeissue on both points. Now the first difficulty in finding out if the principleis new is that there is no distinct statement of what is the novely-the inven- 50tion. In the former case it was said to be shaping before carbonization-that isgone. There is nothing in a name, and calling a thing a filament will not makeit a new thing, unless the filament is novel, but the only novel element in theSpecification is this question of filament. The witnesses are hopelessly atvariance as to what the invention really consists in; but it is admitted, what- 55ever meaning be attached to "filament," that the principle said to be involvedin the invention of obtaining high resistance by reducing the sectional area isnot new. [COTTON, L.J.-That was admitted; the point of the patent wastakiue the carbon alone.] I submit that that is process and nothing more. We

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do not impeach Edison's patent as a patent for a process, but we dispute hisclaim to have discovered the idea, and to have the monopoly of all lamps withinthe idea. We say his patent was nothing more than a statement of an idea,with a few crude and imperfect suggestions for carrying that idea into effect.

5 Sir Frederick Bramwell says the feature of the patent is that E1J,ison made thefirst commercially-successful lamp carrying out the desiderata. It is 'a vaguegenerality. Let Edison have his patent for his process, if it is true; but whyshould he have a monopoly of all other ways? As a matter of fact, we saySioan:« lamps were in the market as soon as Edison'«, and we also say Ellison's

10 successful lamp was not made from the Specification; but passing by that, I wantto put this point, that this skilled witness, when pressed with a crucial question,takes refuge in a vague generality. Dr. Hopkinson can only say the merit ofthe patent is in disclosing a means to carry the known principle into effect. Iassume Lane Fox failed to carry the principle into effect; a man no doubt can

15 subsequently take out a patent for a successful means, but how for the principle?Swan says the principle in the second claim was no novelty, only he had not gotsuccessful means. [LINDLEY, L.J.-He seems to say if you mean by a filament,a thing without any special preparation, his lamp, F.J.B.1, was the same.] Yes;if a filament means simply a bridge his is the same. [BOWEN, L.J.-Is there

20 any evidence that filament was employed in that sense before 1879?] No; itwas a known term, but not in that precise sense; the use which lldison makesof tbe word filament is to be found in the Specification, and it includes sheetsand strips of paper. It is perfectly vague and so indefinite as not to be goodsubject-matter. [COTTON, L.J.-There my difficulty is in the previous decision.

25 There is fresh evidence; there is no estoppel. [COTTON, L.J.-The fact of theCarre carbons being formed before carbonization seems material, because itsweeps away what the Attorney-General relied on as an essential distinction.]Yes. I say the mind of the Court may have been influenced by that on theformer occasion. [COTTON, L.J.-We will hear your argument.] Then in the

30 present state of the evidence there .is no such delimitation of a filament: that isto say, of the combination, as would satisfy the requirements of the Patent Lawas to particularly ascertaining the nature of the invention. A Patentee mustparticularly ascertain the nature of his invention, and separately, the mode ofcarrying it into effect: two conditions, neither of which Edison has complied

35 with. [LINDLEY, L.J.-The first point is not untouched.] [BOWEN, L.J.-Itis most important to see to what extent we are bound by the former decision.]There is no point of construction in the previous decision except the construction of the second claim, unless my friends can point to a construction of the wordfilament, looking only to the Specification. The Court declined to do that. I

40 submit then that your lordships should put a construction on that word in orderto support the patent, and that there is no sufficient delimitation of that word,[BOWEN, L.J.-I think we decided the term "filament" was not so wide as toinvolve thickness, otherwise the patent would be void. How far is that aninference of fact or a question of law?] It is a question of fact. [COTTON, L.J.-

45 I do not see any new fact brought before us on the question what a filament is.The facts are all open to you as regards the description of how the thing can bedone.] That is another point. My first point is he has not particularlyascertained the nature of the invention. [LINDLEY, L.J.-That is the most important;you say we are not bound as to that?] Yes. The rest of Swan's evidence

50 clearly shows the principle was known to him. Stearn's evidence shows theprinciple was not new. Then I submit Edison gave no sufficient statement asto what his invention is, and no distinct view has been given at the bar. Thetest is laid down in Turner v, Winter, 1 Webs. R. 80. The Patentee must givea Specification of the invention in the clearest and most unequivocal terms;

55 there must be no unnecessary ambiguity. I submit the Patentee must give thenecessary delimitation of what exactly he has protected by his patent. Has hedone so here? The point being what is the sense of the word filament.Dr. Hopkinson says you cannot say on this side filament and on the other sidenot filament. The Patentee then fails to express himself in precise language, so

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262 .REPORTS OF PATENT, DESIGN, [May 22, 1889•


as to enable you to say, on this side patent, on the other side no patent. Thepoint is clearly put in Wegmann s, Corcoran, L.R. 13 Oh, D. 82. Now,examining the Specification, what is the exact sense of filament? The only twodifferentia suggested by the evidence are small sectional cross areas or thinness,and high resistance. It is difficult to say if those are essential. Dr. Hopkinson ;)says high resistance does not enter into the definition of filament, and says thesecond claim should be read "a filament of high resistance." And I will show,as to the small sectional area, that Edison did not look to that only; he reliedon coiling to get his resistance-on getting greater length by coiling into a smallcompass. The point is, Edison does not make small sectional area, an essential 10element of his patent. He even suggests a conductor of a considerable mass ofmatter. The drawings confirm the view that, small cross sectional area is not anessential element in that word which Edison calls a filament, a wire, a sheet. Isthat a sufficient direction to sustain a patent? Is it a sufficient ascertainmentof the nature of his patent? The Edison lamps produced give ocular demonstra- 15tion of the vagueness and the indefiniteness. The Plaintiff Company makelamps of all sizes to suit their customers.

Mr. Imray was asked to compare J.l. 3, a lamp made by him for the formertrial, and F.J.B. 1, and to say why there was a filament in the one case and notin the latter; all he could say was that a filament was a thing which was flexible 20before it was carbonized, and that F.J.B. 1 conductor was not. That is the onlydistinction he can draw, except that one is rather larger than the other; Iargued in the last case difference in size is not good subject matter. Then theBernstein lamps, which are now being sold by thousands, are identical withSwan's. I put that forward not only to show Sloan's was an anticipation, but 25also to illustrate the extraordinary difficult)... my friends are in in supportingthis patent as sufficiently ascertaining the nature of the invention. The rod inBernstein is exactly the same size as Swan's. [The A ttorney-Gene1'al.-There wasa special provision in Bernstein which explain their success.] But SUJan got hiscarbon from Carre also in the shape of a hair pin, for the express purpose of 30what my friend is alluding to, the want of expansion in a straight carbon.[The Attorney-General.-No hair pin lamp was made before the 26thNovember 1879, and the one made then broke down immediately.] We saythat F.J.B. 1 is a complete anticipation of the idea of Edison's combination.These considerations show that there was no sufficient limitation of the word 35"filament" by Edison; any definition which can be suggested is hopelesslyfaulty; it is not good subject matter, if there was previous publication of theidea, to take out a patent for the purpose of producing a particular element inthe, combination. Lastly, Swan's lamp was an anticipation of the idea. Couldany person have prevented Swan from ordering from Carre and using smaller 40sized carbons?" Then, has Edison sufficiently described the means of carrying his principleout? When a person gives alternative means, and one of those is a failure,the patent is bad.. Simpson v. Holliday, L.R. 1. H.L. 315. The test is wellstated in Morgan v. Seaward, 1. Webs.R. 173. "Has Mr. Galloway 45sufficiently described it so as to enable anyone to know what he has invented,and so as to enable a workman of competent skill to carry it into effect?" InRex v. Arkurriqht, 1. Webs. R. 64, the criterion is given, that the inventionmust be disclosed and specified so that others of the same trade who are artistsmay be taught to do the same thing by following the directions of the 50Specification without any new invention. There must be no problem to solve.Apply the test in this case. Till the experiments before Professor Stokes, ourwitnesses did not know why. they failed. The two main points here are thecarbonization and the tar-putty filaments: there are also the coating, and thequestion of the attachment. Now our.evidence was not all professorial, as the 55Attorney-General said: Sellon and Swinburne are practical lamp makers..Professor Crookes is a gentleman of. unequalled delicacy of skill. They allfailed to rollout filaments of tar-putty-they were too friable. The Plaintiffs'witnesses in chief, in our view, said the same. The secret was .disclosed at

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Edison aud Swan Electric Light Co. v, Holland.

Ponders End: it was that the putty must be worked till it was somethinglike gutta-percha. Professor Stokes' report was, it required a strong youngman to work with great labour for an hour and ten minutes-merely kneadinginto a thick putty, according to the Specification, was not enough. There is not

5 a word of this. in the Specification. When the Plaintiffs discovered this we donot know, but there is not a word of it in their evidence in chief or in the crossexamination of our witnesses. It is obvious why our witnesses failed. Itcannot be said they were not persons of competent skill. Can it be said, then,that these directions are such as would enable a person of competent skill to do

10 what is directed? The integrity of these gentlemen cannot be disputed. Theycall do it now they have seen it done. Is not that the proof which shews thisSpecification will not stand the test laid down in Morgan v, Seaward?Gimminqham, who was put in as the skilled workman, failed on this point, thefriability of the tar-putty, and my inference is that the trick was only

15 discovered after that. Gimmingham had not ventured to try a tar-putty lampfor duration: he said the tar-putty wire was so friable that it could not be rolledinto a spiral, and that he would prefer not to use that kind of lamp. Hisevidence is more reliable than their later evidence. Then as to carbonization. ThePlaintiffsrely on Professor Stokes' report: that surprises us. We say the effect

20 of that is, that you may carbonize tolerably successfully if you take an ordinaryearthenware crucible and stuff it with carbon, or if you use a metal crucibleand exclude the air. Where does Edison say a word telling you to use acrucible of a particular material or a crucible packed with a.material to excludethe air? The experience in this kind of manufacture had all to be learnt.

25 How to carbonize delicate filaments was not known. The bare direction tocarbonize in a closed chamber was insufficient. Professor Crookes took anordinary earthenware crucible: that was used at Ponders End. That was, asProfessor Orookes said, the ordinary form in use for carbonization, but it wasnot successful without packing. It could be done without packing only in a

30 crucible of a special construction. Where are the directions in Edison'sSpecification?

Then, as to the coating; that is a small point, but it shews the crude nature ofthese directions. Edison. tells you to coat with a non-carbonizable material.Professors Crookes and Frankland tried and found that this ruined the con-

35 ductor. There was a chemical action. How do the Plaintiffs answer that? Notby denying it; but they put Professor Dewar in the box, and he takes the mostfusible of these materials, silicate of soda, and puts it on a hard, horny fibre,and shows that when heat is applied it runs off in the form of little globules.What is that for? Why put the silica on at all? Why coat it at all? bfl/ison's

40 object was to have a burner of a considerable mass: therefore he says coat it.Professor Dewar says," It does not do any harm, and it runs away in Iittleglobules." Then you do not attain the object of B'dison, and you spoil yourburner in another way. Then as to the later Specifications. We. used thembecause we said the directions in this Specification were insufficient, exactly in

45 the points. which Edison. himself supplemented by what he calls recent discoveries in his new patents. In the December 1879 patent Edison gives specialdirections as to carbonization. That shews that the directions in the earlierpatent are insufficient. Then take the bamboo filament patent; there Eat·sonsays nothing but structural carbon will do, and he gives. elaborate directions as

50 to carbonizing.Finlay, Q.C. resumed. "I'wo points were laid stress on by the majority of

the Court in the former case, both of which are presented in a very differentaspect by the present evidence. First, they regarded Edison as the discovererof the idea that by adopting small sectional area, a physical law might be made

55 to yield results valuable for incandescent lighting as regards individual lamps,as well as multiple arc lighting. Secondly, they assumed there was a greatoutburst of iacandescent lighting consequent on and due to this patent ofNovember 187g. The first point is entirely done away with by the presentevidence, which shews that their reduction of the sectional area, as a/desideratum,

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Maison and Swan Electric Light Co. v, Holland.

was perfectly well known; of course, not for the individual lamp; thereit is a disadvantage. On the second point there was no such outburst, inconsequence of Edison's patent. The evidence shews there was not even acoincident outburst. The patent in question is dated the 10th November 1879.On the 15th December 1879, Edison. took out the cardboard patent. In January 51880, Swan took out his patent for running on the pumps. [BOWEN, L.J.-I doubt if this is evidence. It is material to know that this invention was madeat this time, but the statement by Swan that he made it is not conclusive.]I am shewing the outburst was not till long afterwards. It does notmatter whether Swart was the inventor or not. I want to shew the 10history of this activity. [LINDLEY, L.J.-You say there was anotherimprovement.] Yes. [COTTON, L.J.-I doubt if we can look at theseSpecifications. I do not rely much on this fact, that there was agreat start in electric lighting.] [BOWEN, L.J.-Let me explain. ThisSpecification of Swan does not prove this was not known before.] My point 15is, it was about this time the process came into notice. [COTTON, L.J.-Inotice Swan said the word" filament" was not used. That may be material.]We rely on this on another part of the case, i.e., how far filament wasdefined in the former case so as to be binding. [BOWEN, L.J.-The majoritythought then, that filament being taken in the usual sense, Swan's was not a 20filament.] COTTON, L.J., thought Swan's might be, if filament was taken inits widest sense, but he thought the word " filament" "vas used morespecifically, and had an implication that it was shaped before carbonization, andtherefore that Sioan'» was not a filament. There was no clear decision of themajority on that point; if there was, it was on a matter of fact, and not 25binding in this case. The question whether it is a filament or not in each case,if tried before a judge and jury, would be left to the jury. All that wasdecided in the previous case was that, on that evidence, the Court drew acertain conclusion of fact; it would not be binding if the evidence were thesame, but the evidence is different. [BOWEN, L.J.-It is a difficult point; if 30the Court decide that a particular animal does not come within the meaning of" horse " used in an Act of Parliament; are the next Court bound by that?]Yes, so far as the general principle goes, but not in the case of any particularanimal; that would still be open, even as regards the very same animal betweendifferent parties. But I have digressed a little. Swan's evidence shews 35electricians were, up to and during 1879, much troubled with the occludedgases. Then he took out his patent for running on the pumps: a greatimprovement. Then, on the 20th of January 1880, Swan took out a patentfor making carbon conductors to meet another difficulty. [BOWEN, L.J.-Areyou proving the facts in the right way? Instead of a patent, as to which it is 40doubtful if it is evidence, give us the evidence of the witness in the box.]Swan got nothing from Edison for these two patents. There were still defectsto be cured, the leakage of the glass bulb and the breaking of the inner archof the cardboard, which Sican remedied. Then the next step in the historyare the six lamps of Edison given to Dr. Fleming, in March 1880. But the 45evidence shows these were made under Edison's cardboard patent, and notunder the November patent. Then there are the two lamps given toDr. Hopkinson; they had paper used for the carbon filament, and clamps, andwere made under the cardboard patent. The Plaintiffs never produce a singlelamp made under the November patent. [COTTON, L.J.-Your object is to 50remove the impression that the great start in electric lighting was dueto the November patent. I was not impressed much with that argument:you have done a good deal to displace it. Still, if that patent was good,even if it did not cause the great start, these things would be within the patentwith improvements.] I submit the November patent remained in obscurity 55till brought out for the purpose of litigation. [BOWEN, L.J.-Your argumentcomes to .this oyer again : the idea of the filament in the wider'sense was notpatentable, the 'process given was not workable.] Swan swore the patent wasbad, and the litigation' commenced against him was compromised, and a

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company formed, in which he took the greatest share. On the 16th September,1880, Edison took out the bamboo patent. In the autumn of 1880, Stearn's housewas lit with Swan's lamps. On the 24th November, there was an exhibitionof Swan lamps at the Institute of Civil Engineers. In the same month Swan

:) took out his parchmentized thread patent, and at the end of 1880, he madea number of lamps. Spot tiswoode's house was lit with Swan lamps inDecember 1880. In February 1881, Bernstein visited If,'dison's works inAmerica; the lamps being made were bamboo lamps: we say every lampmade by hfiisonwas under the bamboo patent. In July 1881, there was an

10 exhibition of Swan lamps at King's College, and in August 18811 at York. InSeptember, 1881 the Swan and Edison lamps were shewn at Paris. That is thefirst exhibition of A(J,'lson lamps in Europe, with the exception of the fewpreviously mentioned, and the first time any of the witnesses ever saw anhl1ison lamp. These were bamboo lamps. At the end of 1881, the Savoy

15 Theatre was lit with Swan lamps. Then in the spring of 1882, there was theCrystal Palace Exhibition. It is for the other side to shew that the patent ofNovember 1879 had anything to do with the springing into life of incandescentlamps. Proctor's evidence shews that Swan had hundreds of lamps atNewcastle and was making before November 1879, lamps with hairpin Carr'

20 carbons.: from the paper written by Swan to "Nature" on the 29th December1879, saying that during the last six months he had overcome his difficulties,and the fact that he took out his cardboard patent on January 20th 1880, theinference is irresistible that Swan is mistaken in saying he had not beenworking or experimenting with the cardboard for ten or fifteen years before.

25 Swan says he did not make thread lamps till 1880 ; it is not, however, suggestedhe was led to use thread by Edison's patent. Heauiside again shews whatSwan was doing during 1879, and that he owed nothing to Edison; that BUlanwithout Edison made about the same time a lamp of this kind said to haverevolutionized electric lighting. [COTTON, L.J.-The question is whether

30 E'dison got out a good patent. A number of witnesses proved that Swanwas in 1879 making lamps with carbon filaments. [COTTON, L.J.-Do yourely on these anticipations?] No, the point is to show that Swan and otherelectricians owed nothing to /i"dison's patent of 1879. There was a conflictabout dates. Mayfield's evidence shows that F.J.B. 1 burnt fairly successfully;

35 if the test of commercial success is not to be applied to b'dison's lamps, neithershould it be to F.J.B. 1, and then F.J.B. 1 was as good a lamp as Edison's.

The Attorney-General replied.The main thing is what was the invention. Mr. Finlay's argument is only

possible by forgetting that. He suggests Edisoi: taught Sioan. nothing. But40 Swan began entirely afresh in March 1880, when he got the knowledge of what

Edison had done. h(1ison made a remarkable invention-namely of a genus ofconductor, a filament of carbon, absolutely out of the track of everything else,described exhaustively, and a complete solution of the theory of electric lighting. In opening, I wished to state what Edison and Stoan. were doing in 1879.

45 Your lordships stopped me. I knew it would be suggested that Edison taughtSwan nothing, and that Swan and Stearn were solving the problem for themselves. Swan and Stearn were about to abandon the matter when they gotb'dison's information. It is said Edison. taught nothing, because he simplymade use of the fact that if you thinned the conductor you increased the

50 resistance, and that there was no invention. It is not the thinning of theconductor-that was tried by Swan and failed-it is the filamentary conductorwhich has solved the problem. Now, F.J.B. 1 is the only combination alleged,previous to Edison of a vessel wholly of glass, platinum leading wires, and acarbon conductor. For nine months after F..J.B. 1 SUJan abandoned the vessel

55 entirely of glass, and in addition he was putting inside a copper coil for thepurpose of radiation of heat. The knowledge of what liaison had done- broughthim back. It was said Sioan. produced his thread lamp independently; henever tried one till he had read a precis of Edieon: [OOTTON, L.J.-Will youdeal sometime with what you say is the difference which makes a filament ?]

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266 REPORTS OF PATENT, DESIGN, May 22, 1889.

bf1ison and. Swan ,l~'lectric Light Co. v .. Holland.

I still say a filament must be made into shape before it is carbonized; F.J.B. 1need not have been. We have admitted it was shaped first, though, then, everyone believed it was not, and even SUJan did not know to the contrary. But wehave never admitted it was a filament. [COTTON, L.J.-But how does E'dis011define a filament in his Specification, so that it would be understood what he 5claimed and what he did not claim?] I will deal with that later; but F.J.B~ 1has none of the properties essential to a filament. My friends evidently feelthe decision of the Court of Appeal a great difficulty; they cannot deny that noprevious anticipation has been suggested, the sole new fact is that F.J.B. 1 wasshaped before being carbonized; they desire to extract some expression of doubt 10as to whether the previous decision was right, in order to use that elsewhere[BOWEN, L.J.-You say, besides the difference of the carbon conductor, Swandeparted from a receiver entirely of glass?] Yes; for a year. [Finlay, Q.C.- .That is contrary to the evidence of Heauiside and Proctor.] Swan and Stearnswore those two had made a mistake of the year 1880 for 1879. The lecture of 15Swan, of October 1880 shows that the subdivision of electric light was ofimportance. What does Suan say in his patent relating to the occluded gases?[COTTOK, L.J.-We rather stopped Mr. Finlay in going through theseyesterday.] It is perfectly -clear that it was the enunciation of Mr . Edison.which made the great step in electric lighting; no difficulty was removed by 20the subsequent improvements, only the lamps were made cheaper and' lastedlonger. I will not say anything with regard to the Specifications, but will goto Swan's letters. [BOWEN, L.J.-We have a doubt as to whether what Swansays in a paper or a lecture is strictly evidence of what he did. We drove Mr.Finlay to the actual evidence.] I desire not to pass over any point, and to 25show that Swan fairly took I!)dison's publication and used it. F.J.B. 1 was inbeing in November and December 1878; 15 or 20 years previous to thatdate Swan had worked at paper carbon and abandoned it. The first ofStearn's letters, 22nd January 1879, to Swan shows they were usingcopper and plantinum caps; that was a departure from F.J.B. 1; that 30they were trying to improve the shape; that Swan was trying to get thecarbon to bend. The letter shows they were leaving the vessel whollyof glass, that they were abandoning F.J.B. 1, that they were attemptinga faulty method of connection, which shows that the mode of connection,suggested by Edison, is probably the best way and a complete novelty. The. 35letter of the 26th April shows that the difficulty of contact" which disappearedafter b(1ison's publication, was so great that it was proposed to insert a copperrod as an axis into the carbon to prevent the rupture of contact. In JulyStearn anticipates a danger from the shrinking of the pencil on cooling. Thisis got over by the filamentary shape; it is fatal to anything like F.J.B. 1. These 40letters show what Swan and Stearn, the most experienced m~n in England,were doing. In the letter of October 3rd there is a reference to Edison'sexperiment, of which an account was given in "Nature," and the" Mechanic,"and a fear expressed that if he was working at carbon, he could anticipate them.The experiment referred to was the patent of Edisor; for running on the pumps. 45But Swan and Stearn were only seeking to improve their old conductor. Thatshows conclusively that Heaviside and Proctor were mistaken in saying thatSwan was working at filamentary conductors in 1879 ; Swan never thought ofa filament till February or March 1880. [BOWEN, L.J.-The letter ofOctober seems to show Stearn was wondering if Edison had anticipated 50him in carbon.] Yes; Stearn says" he has trodden so closely on our ground,"but that ground is not a thread conductor or a carbon filament, but is runningon the pumps. Edison had anticipated them; In his provisional, which wasin England three months before, though not published, he had inserted carbon.So that Suian. was anticipated in running on the pumps. The Respondents 55have throughout ridiculed Edison. and all he has done. It is a vital point to theunderstanding of the patent to see what really was the invention of Edison.Till June 1879,he was working at a platinum filament. The carbon was incubating. Turning to the letter of the 3rd of November, Stearn was actually

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Edison and Swan Electric Light Co.v. Holland.

proposing to let his lamp stand in water. The letter of the 26th November 1879,shows how absolutely impossible it is that the evidence can be correct, that ·60or 100 thread lamps had been seen at Swan's and Stearin's places running successfully. [Finlay, Q.C.-Allow me to explain. I say the effect of the evidence

5 was that in the summer of 1879 Swan was making lamps with thread-likeconductors, not of thread.] The witnesses described it as a thread lamp.[COTTON, L.J.-Perhaps -I mislead Mr. Finlay. I understood he did not pressthis as anticipation.] [Finlay, Q.C.-I did misunderstand. I intended topress the point that Suan was making these lamps with slender conductors at

10 that time. I did not abandon that, but only on the point of publication. WhatI say is, that Swan practically was making lamps with Carre carbons, hairpinshaped, and that probably Heavisideis right in saying Swan was making paperfilaments. Suan, in his letter to " Nature" of the 29th December 1879, says hewas able to make carbon conductors of paper.] The Attorney-General.-That

15 was running on the pumps. [Finlay, Q.C.-JIe said so in evidence, no doubt,attempting to explain his letter; but taking that letter published three weeksbefore his patent for practical carbon conductors of the 20th January 1880, theinference is irresistible that Heaviside is right.] [LINDLEY, L.J.-We understandyour point.] The Attorney-General.-My friend is wrong; the witnesses said

20 they saw thread carbonized before and after. [Finlctll, Q.C.-I said Swanvirtually admitted the Oarre carbon and the paper, but clearly contradicted thethread.] The point of .the evidence was to show the use of carbonized thread.My friend now tries to alter the position-the witnesses give the same date forpaper and thread. My friend now says paper lamps were made in hundreds in

25 August and September 1879. What does Stearn say in his letter, that he. wasusing the copper coils and making experiments which he must necessarily keepsecret from anyone; the witnesses could not have seen them. Proctor says hesaw hundreds of lamps at the very time when Swan wrote he had nothing todo. And Stearn, who is said to have made them, is still attacking the problem

30 in November, and using something approximating to F.J.B. 1. Stearn writeson the 14th of December 1879 :-" I have had a lamp 'constructed out of a single"rod of carbon, thinned down in the middle. I do not think there can be a" rupture in this one." Is it conceivable that that is written by the man who hadmade hundreds of successful horse-shoe carbons? On the 23rd December 1879

35 Stearn writes: "Have you seen the announcement that Ldison has turned his" attention to carbon; if he has patented the method of preparing carbon in vacuo,,. and not confined it to carbonized paper, I fear you are forestalled." Stearn isreferring to running on the pumps clearly, not the shape of the conductor.Swan was working for the improved texture of carbon by running on the

40 pumps; he thought that was the solution. My friends are in a dilemma; theynow allege Swan was working at carbonized paper in August 1879; but how,then, would Stearn have said what he did? The points are two: (1) publication of carbonized paper would not have forestalled what Swan was reallyworking at; (2) it would have forestalled what Heauiside &; Proctor, according

45 to Mr. Finlay's contention, did say they were working at. Stearn, in this sameletter, says, " Could you come and spend a week experimenting? . . . . . we wantplatinum caps ....." The case of the other side was, that Swan was makingthread and paper lamps in a vessel wholly of glass. They said the outcome ofF.J.B. 1 was thread lamps before Edison. If I show the outcome of F.J.B.1 was

50 nothing, it is the strongest evidence of the merit of Edison. [COTTON, L.J.-Whatdo these letters prove? . 'I'hey cannot show there was no knowledge, except whatwas disclosed in them. Lindley, L.J., suggests they are perhaps to be taken asagreed by both sides as a compendious statement of what has taken place.][Finlay, Q.C.-I do not agree to that.] Subject also to the oral testimony.

55 [Finlay, Q.C.-I did withdraw any objection to the letters.] Now, the actualannouncement to which Stearn was referring in the last letter was a clearreference to carbonization of paper, and ~u'an and Stearn never say this is whatwehave been doing. On the 28th December 1879 Stearn writes again: "Let"me have the larger kind of platinum caps," and a specimen he is there

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referring to is produced with copper spirals and straight carbon conductor, withthick blocks at the end. We believe they came from Carre; we do not knowwhen they were shaped. I do not think they could have been made withoutbeing cut down. t;wan did on some occasions thin down a conductor after hereceived it from Carre. Carre shaped before carbonization, so far as uniform 5conductors are concerned ; he drew through a draw-plate, but he could hardlyhave made a non-uniform conductor like this in that way. On the 29th December1879 Stearn writes :-" I have attempted to exhaust three more lamps-one of"hairpin form lighted up for a few minutes." Could this have been writtenby a man who had made hundreds of the hairpin form in August and 10September? He talks of lashing together two straight pencils of platinum wire.On the 1st January 18~0 Stearn writes :-" The cardboard film did not live" more than ten minutes." The evidence of Swan and Stearn shows that Stearnmade about eighteen lamps altogether in the year. In the letter of the4th of January 1880 Stearn, an expert at the pump, ridicules the exhaustion 15spoken of by Edison-" the millionth of an atmosphere "-yet that is strictlytrue. The same letter shows he is still working with caps. Then Buran:«publication to " Nature" of the 1st January 1880 says :-" Fifteen years ago I".used charred paper and card for an electric lamp, and in the shape of a" horse-shoe; I did not then succeed in obtaining durability, but I have since 20"made many experiments, and within the last six months I believe I have" conquered the difficulty, and can now make a perfectly durable lamp by means"of incandescent carbon." If Swan had made hundreds of paper lampsrecently, he would not have referred to experiments of fifteen years ago.On the 20th January 1880, Swan took out his cardboard patent. On the 5th 25February 1880, Stearn writes and shows that they were still using the platinumcaps. I think I have now shown that Swan and Stearn had never even tried athread. [BOWEN, L.J.-The hairpin, supposing that be a filament, seems tohave worked.] No; the first evidence of the hairpin, which I contend is not afilament, is in the letter of the 26th November 18.79, and it did not work 30successfully. Proctor and Heaviside only talked of horse-shoes. Then in thatlast letter Stearn referred to Scribner's Magazine, which contains an accountof Edison's invention communicated by Mr. Upton, his mathematician, whichdescribes the use of the thread-like form. Mr. Finlay says Edison confesseshis patent of December, 1879, is the more valuable; but Edison put that patent 35forward only as an improvement. It is still within the patent of November.My argument is that every single lamp since is only an improvement, exceptBernstein; but I never talked of a panic in gas-shares or the world-wide Edison:lamp. [COTTON, L.J.-We hardly consider that point material.] But a greatdeal of argument has been addressed to this point. 40

Now, within a few weeks of this, Swan started thread lamps, improvedthem, and brought out his parchmentized thread patent-an improvementof the structure of the carbon: the date of the use of thread lampsby Swan is conclusively proved, by the fact they were run from analtered Otto gas engine, to be March 1880. The evidence shows that F.J.B. 1 45was never heard of from the 26th December 1878 till the formeraction. [COTTON, L.J.-I thought it was an advantage of the filamentthat it did not crack the glass; the other side say you have droppedthat advantage now.] Oh, no, it is insisted on ; the Defendants have adoptedthe filamentary forms. [Finlay, Q.C.-I said with the proper kind of glass there 50is now no objection to larger platinum wires.] We have nothing to do with aproper kind of glass; our patent deals with any kind of glass. It is neversuggested that that advantage pointed out by the patent is not true. [F'inlay, Q.C.We had witness after witness saying that there was rio advantage so far as asingle lamp was concerned in having a small carbon conductor; our witnesses 55should have been cross-examined.] We have an infringement in which the smallleading wires and the tiny filament' are taken; it is utterly beside the mark tosay that you can make a lamp which is not an infringement. No witness hassaid that the statement of the advantage in the patent is untrue. No witness of

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Edison and Swan. Electric Light 00. v. Holland.

the Plaintiff was cross-examined on this point. [COTTON, L.J.-I think there wassome evidence that for a single lamp the large size of the leading wire was notan injury.] There is no evidence of use; there is some evidence of theoreticalopinion; against that we show that with the exception of Bernstein, multiple

5 arc lighting is alone used. The merits and utility of our invention are provedby our witnesses and not contradicted. [COTTON, L.J.-The other side say yourwitnesses did not give this advantage.] They did state it, Professor Bramwellstated it ; we were in fact stopped by Kay, J., on this point. Where a combinationis infringed, it is a novel argument to say that if a witness says, "Oh, you could

10 get over this in another way," which way was not taken, that the Patentee isbound to follow it up. To suggest that it is possible to use F.J.B. 1 and get overthe difficulty by using another kind of glass, is not relevant. Swan's evidenceis clear; he used no thread lamp till 1880; in 1~79 the difficulty he wasworkin-g at was the making a good contact. Edison. solved that difficulty by his

15 patent of November 1879. Swan was using the caps and the copper coils;Ellison re-enunciated the advantage of the glass vessel. Swan never used anythread that was not parchmentized; he exhibited these lamps, a few weeks afterhe first made them, in the middle of 1880. He absolutely contradicts Proctor andHeaviside. The evidence shows that within three weeks Swan knowing

20 of Isdieoti was able to produce a successful lamp. His lamps were exhibited innumbers in 1880. The point is, where did the step in advance come? Thestrongest possible evidence is that Swan abandoned years of experiment, andadopted his combination, which is clearly an infringement. There is not a singlewitness who does not admit the infringement; and there is practically no new

25 evidence to distinguish this case from the former. Swan's lamps had theplatinum leading wires, a vessel entirely of glass, a thread carbonized so as toleave a carbon residue. Mr. Finlay says it is a useful lamp. If so, because itis an improvement on Edison. Taking Heaviside and Proctor to be witnesses oftruth, but mistaken in the year, they are the strongest witnesses of the step made

30 by Edison: It is important that when Swan began to make thread lamps, theydid not go to Oarre any more, they· carbonized their own thread lamps; h(Jisonenabled the world to carbonize for itself, and not to have to rely on specialcarbons, made in a foreign country. The merit of Edison was that he sweptaway everything previously known, and said, take a thread of carbon, a bit of

35 tar-putty or wood, &c.; carbonize that for a conductor and it will do. Theinfringers say : we knew all that-all that was necessary was to reduce the pencilof F.J.B.l. That, I say, was neither flexible, nor resilient, nor capable of beingbent. Swan wanted, and was unable to get, a bent carbon: there was no evidencethat any filament could be bent before Edison. The importance of this flexibility

40 and resiliency is very great, and I pointed it out at the last trial. The infringementhas these qualities: F.J.B.l has not got them, and it is no answer to call ita filament. Now, continuing Swan's evidence, he denies absolutely that anyhorse-shoe cardboard or paper carbons were made for him in 1879 ; some hairpinshaped carbons were used by him at the latter end of the year, which is

45 corroborated by the drawing in Stearn's letter of the 27th November 1879. Ifthey had been used earlier, the drawing would have appeared in an earlierletter; but the hairpin lamp and the horse-shoe are not the least alike, whichshows how entirely wrong Heaviside was. Swan is cross-examined as to theword "filament." He says it was not a known term at the date of the Specifi-

50 cation. [COTTON, L.J.-That was one of my difflculties.] The word is theexpression of an idea; he might have used a carbon thread. [COTTON, L.J.Possibly we are bound by our former decision; but is there anything in thefacts now which would alter our decision as to what is a filament?J No. Aconductor is only a filament so far as it has the properties of Edison'« conductor

55 before it is carbonized. [LINDLEY, L.J.-W·hy is F.J.B. 1 not a filament?]Taking filament to mean what Edieon. has described, it is essential that youmight be able to twist and coil the thing "before being carbonized. There isnothing to show this could have been done with F.J.B. 1. F.J.B.l had noneof the properties of a filament. [BOWEN, L.J.-Did the former judgment

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Edison and Swan Electric L1:ght 00. v. Holland.

describe a filament?l Yes. It was said it was what Edison. describes. It hasnow become a term for a conductor. Swan first used the word filament in hisComplete Specification of July 1880. 'Turning for a moment to the suggestionof Mr. Finlay that series lighting is as good as multiple arc lighting; in theformer, if one lamp goes out all go out; in the latter it is not so, and the latter 5is used in consequence throughout the country. The evidence of ProfessorThompson, so much relied on, I submit, shows that the subsequent lamps arewithin the patent of Edison, He says, in chief, they would come within the ,second claim with improvements. All the differences he can suggest areunsubstantial; they may be important for durability or economy, but they do 10not touch the problem Edison. solved. There is not one single point in hisobjections which prevents the substantial combination being taken. What isthe use of suggesting other people have made improvements which may bemore useful or more certain? [Finlay, Q.C.-Our point was, no lamp had everbeen made in exact accordance with the patent of November 1879.] I say 15again, the invention of Eaison was a departure from everything else, includingF.J.B.l. It was a description of a genus which had never been described before.The Specification is a description of an electric lamp never made before. Whenit is impossible to show one electric lamp used for multiple arc lighting after1879, which is not exactly described in Edison's second claim, I say the 20suggestion that Edison. invented nothing is refuted by the Defendants' ownwitnesses, and is untrue in fact. It has been argued that witness after witnesssaid that there was no advantage, so far as the individual lamp is concerned, inhaving a small carbon conductor, and that we have abandoned that point. Theevidence is not so. Only one witness said that, and not with the meaning 25attached by Mr. Finlay. The problem was, I stated, subdivision of light.Sellon said that lamps like F.J.B. 1 worked satisfactorily as single lamps, butthat, being lamps of low resistance, they would not be suitable for distributionwhere a large number of lamps are to be used at distances from the source ofgeneration, the problem being to use an electric current at a variety of places. 30Now, none of the other witnesses were asked about this till Professor Thompsonwas examined. [COTTON, L.J.-The point of Mr. Finlay was that, for anindividual lamp, the large carbon and leading wires were just as good as thesmall one.] My point is, that what everybody was striving for was to be able tocarry a large current into a number of small points. [COTTON, L.J.-I under- 35stood part of the advantage of the filament lamp was the use of a very small pieceof carbon, and that this, though raised to a great heat, was so small it did not communicate heat enough to the wires to crack the glass.] Certainly; using a filament,you could have small leading wires, and they communicated very little heat.One witness said, '~If you only want to use one lamp, and pass the current 40through one lamp, the small wire is no advantage." But the case we are dealing with is where the current in the main leads is much greater than isrequired to go through one lamp. It is with reference to subdivision that theadvantage of the small leading wires and conductor has to be considered. Whenyou talk of one lamp you are dealing with a problem to which the invention of 45Edison. and everybody else had no relation. The problem was the subdivisionof a much larger current. The Specification gives a statement of the utilitywhich has never been questioned. Sir Frederick Bramwell was never crossexamined on this point. The point is not open to my friends after ProfessorThompson'« evidence. Do they say that what Professor Thompson said about 50breaking the glass was not true? He does not deny small wires cured this defect.Mr. F'inlay twits us with not having cross-examined their witnesses to prove itwas useful, ·when there was no witness who denied the utility. All that thewitness said was that you could get over the defect of thick wires in anotherway. [LINDLEY, L.J.-The thin wires enable ~tOU to deal with any kind of 55glass.] Yes. It is admitted the small wires save expense in copper. It isadmitted that practically the muliple arc lighting is the only one used. Serieslighting is of no particular use, because if one lamp goes out all go out. The pointnow raised by Mr. Finlay was never raised till Professor Thompson gave his

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Edison and Swan Electric Light 00. v, ·Holland.

evidence; it was not really alleged in the Defendants' summing-up. The pointin the evidence is not worth consideration. One other point; the Defendantsoame into Court to prove that thread carbonized lamps had been made by thehundred by Sioam. in 1879-that two or three witnesses saw cotton carbonized

5 thread lamps in that year. On that point they have completely broken down.Ridley swore he saw them in August and September. His o,vn book was produced, and he admitted he was not at Swan's between the 24th May and the28th October. [COTTON, L.J.-We all think the witnesses were mistaken as todate.] Suia»: and Stearn's evidence shews no thread lamp was made till April

lO 1880. See how important that is. After F.J.B. 1 the next published lamp isJ.R. 17, a perfectly successful lamp made under the patent of Edison, Yet it issaid Edison is not entitled to his patent. J .H. 17 came from Edison as a presentto Dr. Hopkinsonui March 18S0. It was not in evidence in the former case;but this point was not taken by the then Defendants. The proof of this lamp was

15 not contested. First of all Professor Fleminq produced six lamps, brought overby Mr. Johnson, which were run in Queen Victoria Street in February 1880,and then Dr. Hopkinson remembered his lamps. Dr. Fleming describes the sixas good efficient Edison. lamps. There was no cross-examination on the facts.Mr. Finlay's only point is that they were made under the December patent;

20 that point is .wholly immaterial. The question is, are they within the newcombination described in the patent of November? The Patentee is not obligedto make lamps; he has only to describe the new invention and say what he hasdone. If an improved process is described in the December patent-if that bethe exposition in the flesh of what is described in the November patent-why is

25 it not a good patent? The Defendants try to fritter away the invention. PutF.J.B. 1 and J.H. 17 side by side; is the latter a combination for which a man isentitled to a patent? The conductor of F.J.B. 1 was not a filament, becauseit had not the. properties of the genus filament described by the Novemberpatent. The paper conductor of J.H.17 is within the genus. Paper is .now

30 abandoned, because it does not last so long, but it is good subject-matter. Now,F.J.B. 1 was an abandoned experiment-it has vanished away after misleadingSuxu: for a year; the change from it is a change of type, and au entirely newcombination not to be limited to any particular form. The judgment in theformer case, when we had not the advantage of shewing the struggles

35 of Swan and Stearn, found that the disappearance of F.J.B. 1 was cogentevidence of want of success, that the difference between the carbon rodand the carbon filament was the difference between failure and success.I will boldly say, the difference between the filament in F.J.B. 1 and thefilament in the Edison, was the difference between failure and success. There

40 is no magic in the word. Filament now has such a technical meaning thateverybody speaks of filament' independent of size. But hkiison. gave it thatmeaning, and everybody used it afterwards, including Swan, in his Specification of 18S0. 1 submit that the Court of Appeal correctly decided that thiswas the invention. They enunciated the invention. The first form they say,

45 which is referred to, is the cotton thread. That is now admitted to be themost useful, especially if parchmentized. The second form is any fibrousvegetable substance. Again, a most improved form is made of fibrousvegetable substance. To this class may be referred the cotton and linen thread,wood splints and paper. The fact that Edison thought afterwards of an

50 improved horse-shoe of paper does not make it not a good patent for paper.The 4th form is such fibrous material rubbed with plastic compound. The 5tha carbon filament of tar and lampblack or plumbago or carbon in other forms.The 6th is the last form, but coated. The word filament denotes all the classes.It means something which would bend and coil, which is of small diameter

55 and thread-like, before you carbonize, and which has afterwards those propertieswhich are due to its having been in that shape before it was carbonized. Thatenunciation is accurate; and if that is the kind of invention to be patented,the claim is not to be limited to a particular method. If the patentee hasenabled p~ople to work it, it is not to be called an idea. Itis a new.element of

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b"'dison and Swan Electric Light 00. v, Holland.

a new combination which produces success. If every species of this will doand every member, this attack is an unworthy one. It is only by losing sightof the breadth of the invention, and the extraordinary step taken, that such anattack can be made. Edison was able to say: "Throw aside all the previousattempts of numbers of clever men and take the thread of carbon." It is not 5necessary for the patentee to make and vend to show utility; he may sell animprovement on it. Otto v. Linford, 46 I.J.T. 41. Renard v: Levenstein,10 L.T.N.S., 94; 11 L.T.N.S., 79,505. [BOWEN, L.J.-The Defendants say thatthere is no proof that any lamp was made under the November patent, becausethe process described was either not valuable or not sufficiently described.] To 10make good their argument, they must show that what they allege was done afterwards is successful, as distinguished from the original thing, in the matter inwhich it differs. Let me refer to the December patent and J.B.17. It is nothingto say that every lamp was made in accordance with J.H. 17. The questionis, is J.B. 17 an infringement of the original patent? J.R. 17 is merely the 15patent of November 1879, with an improvement. [BO'VEN, L.J.-The factthat no lamp was ever made till the later patent, merely seems to depriveyou of a certain amount of evidence.] Yes, all it did was to throw on us theonus of showing the lamps were useful. We show every combination, assubsequently used, is described in terms in Edison'« Specification. Any fibrous 20vegetable substance which will have a carbon residue will do. Every success-ful lamp is that, and yet it is said that what is subsequently done is not underthis patent. That is a wrong expression. The question is, is it in accordance?I say, as in Cannington v, Nuttall, L.R. 5 H.L. 231, that any merit in theRespondents' discovery is a superaddition to the merit of the Appellants' 25discovery. Everything done afterwards was infringement, and nothing morethan something added to Edison'« invention. F.J.B. 1 was not an infringement,because the conductor could· never have been bent or coiled before carbonization. WhJ' do they not try it? That is the way to test it. It is not aninfringement, because it is not the filament that Edison. describes. If you want 30to see what Edison means, you must limit him by his description and thequalities which his filament must have. [LINDLEY, L.J.-Your argument isthat the Specification is to be read as if it contained a definition clause.] Yes.I say you must see what is the step taken. It is a travesty to say this inventi.onwas merely increasing the resistance. It was a necessary consequence, but that 35would not do it. The carbon filament of F.J.B.1, rubbed down, will not do. Thequestion is not, is it different from F.J.B.1, but is it agreat step? [BOWEN,L.J.-You have spoken of the importance of the resiliency and flexibility of thematerial. What passages in the evidence show us their value?] The evidenceof Sir Frederick Bramuiell ; but this point was not contested. What they say 40is, given those qualities, the Specification is not sufficient. Resiliency meansspringiness. Flexibility comes at an earlier stage, to enable it to be twistedinto shape, to be coiled, or to be made spiral. It must be flexible to be resilientafterwards. A straight piece will not do so well. There is no evidence that it willdo at all unless an elastic joint is used, as by Bernstein. It bulges in heating 45and parts when cooling. The hairpin was not a filament, because it was rigid.On this question of all abandoned experiment, Mttrray v. Clayton L.R.,7 ChI App. 581, shows that the exhibition of an useless machine cannot affect asuccessful machine, though there is a degree of similarity. J.l1organ v. Windover,5 R.P.C., 30a. Jones v, Pearce. 1 Webs. R. 124. 50

Now, it was said that we never found out how to make tar-putty filaments tillafter Professor Stokes began his experiments. But Gimingham had long beforethat made lamps which ran for hours-150 hotrrs. [COTTON, L.J.-Mr. Finlap'»point was that no question was put in cross-examination to their witnesses as tothe kind of process used. He pressed that there must have been communica- 55tion from America after the commencement of the trial-that there must be timeand force expended to make the putty.] That suggestion ought not to be madeif not supported by evidence. There were in existence these lamps made byGimingharn when a boy of 16. Why did they not ask for these to be run?

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.Vol. VI., No. 19.J AND TRADE :MARK CASES• 273

Edison and Swan Electric Light 00 v, Holland.

Before Professor Stokes boys and girls rolled out the filaments. Now, theDefendants rely, and Kay, J., relied, on its taking one-and-a-half hours. Theworkmen on the first occasion took 70 minutes doing it with simply a chisel;he would be anxious not to break down. Subsequently it was done more

5 quickly-in 17 minutes. Of course it was done carefully, because the Defendants were suggesting it could .not be done at all. Now the cause of failurewould be that the filament rolled broke to pieces. We are making a filamentof tar and lamp-black-a viscid and a granular substance. There must be homogeneity. The process described is kneading or mixing together. The Defendants

10 thought it was enough if they got it to a thick putty. But the thing to bemade i3 a thing of the thinness of a hair. The thread to be rolled must obviouslybe at least so homogeneous that it can be rolled out. Therefore, if you found yourfilament cracked when bent, you would consider if the lamp-black and tar wereproperly combined. [The Court then desired to see some lamp-black, and

15 neither side objecting, the boxes sent by Professor Stokes to Kay, J., wereopened.J [COTTON, L.J.-Is it admitted that the operation only took 17minutes?] [Grahal1~.-Yes, but with the, qualification that a greater amountof energy was expended.] Professor Thompson, their witness, made a note-theshortest time was 16 minutes. Now it is said kneading is a term of such

20 difficulty that you are to assume a man is not to use this amount of force ortime. This is mere special pleading. To knead two substances so that theycan be rolled into such small things must mean that there must be no pocketsof lamp-black, not even infinitesimal. My friends say you are not told howlong to knead and what strength to use, and that therefore tl,e Specification is

25 insufficient. The first attack made by them was that it could not be done atall. It is not a fair thing on this point, for a man who said it could not bedone, to say-oh, I meant it could be done, but I did not know it requiredso much force and time. Look at the Defendants' failure after about17 minutes. They used a spatula, and it is a remarkable coincidence they stopped

30 after 17 minutes. Professor Stoke» reports" the tar-putty being deemed to" be of proper consistence by comparison with common putty." Is that a fairtest? Certainly not. It should be rolled out to see if it is properly kneaded.Then a little more lamp-black was added a minute-and-a-half beforefinishing. How could it succeed? It was not homogeneous. It developed

35 cracks, and stained the fingers. Is this a proper kneading? Could therebe a stronger commentary on their experiments than the report? Theyattempted to do the processes with a little tar-putty which evidently wouldnot hold together. Mr. Finlay says the secret of kneading was never known tothe Plaintiffs till the experiments made in the course of the trial. How did

40 Professor Dewar and Mr. Imray make the filaments which were actually run andburnt? The answer to this is, if you try to succeed, you will; if you try tofail, you will fail. Professor Orookes was afraid to repeat his experiments beforeProfessor Stokes; they only ventured to carry out as many experiments as theycould without showing that their previous experiments were wrong. Professor

45 Crookes abstained from doing' things which he had. sworn would fail.[BOWEN, L.J.-I cannot help saying that is a fraud if it is so; say it if youmean it. I I am obliged to say it. I said, and I repeat, Professor Urookes trifledwith my questions. These gentlemen took seventeen minutes, but neverconsidered if they had properly kneaded. Professor Stokes reports the stuff

50 obviously would not hold together. Is it right to construe the Specificationthat way? Professor Crookes was not fair. They made tar-putty B. Then thewinding was accomplished without difficulty--It hardly soiled the fingers, ordeveloped cracks. How would you test homogeneity? The Defendants do notsuggest seriously, I suppose, that the filament was -to be made of a non-

55 homogeneous substance. All they can say is, that if you take an hour and a halfyou need not work so hard as if you take seventeen minutes. The answer is, ifyou work sufficiently long, you will be successful. You would expect cracksand moisture if the thing was not properly kneaded. This is only one form of thegenus. Can the Specification be upset.because labour is required to knead together

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274 REPORTS OF PATENT, DESIGN, [May 22,1889.


the things directed to be kneaded together? Otto v. Linford applies. It saidthere, a quantity of gas: objection, what quantity? The M.R. said you must try.Mr. Finlay's argument is, we never cross-examined on these points. Howcould we anticipate this? We knew these filaments could be rolled. ProfessorCrookes said it could not be done. Professor Dewar did it in a room adjoining 5the Court. We put that to Professor Orookes, and he said, "All I can say is, I didnot do it." [Finlay, Q.C.-That was rolling the filament-not making the putty.]Professor Dewar made the putty himself, though not on the premises. ·He wasnot an expert; he merely did it according to the Specification. Of course, it canbe doue better by practice. The Defendants' argument is, Jon are not even to 10practise to do the Specification. Tar-putty A-the first putty made by theDefendants-failed because (1) they put in more lamp-black at the end; (2) theydid not knead properly. There is no rule that a Patentee must say a givennumber of minutes. He cannot do so. The test is that it will do. TheSpecification says the putty must have such a consistence that it will rollout 15to 7 one-thousandths of an inch. In the former trial Dr. Frankland, theirwitness, had actually made a filament, had put it in a lamp, and produced thatas a working-out of an anticipation of onr patent. So far from saying then thatmen could not make a filament, he said they knew how to make it beforeEdison. [BOWEN, L.J.-What did he say on this occasion?J That he was 20surprised at Professor Crookes' failure. Professor Frankland pressed out hisfilament through a draw-plate. Now they ask to invalidate the patent becauserolling out will not do, and yet they ask you to exclude com.mon knowledge,which this gentleman used on the previous occasion in Pulvermacher to drawit through a draw-plate. Dr. Frankland had told this to Professor Crookes. 25When Dr. Frankland was trying to break down the patent on the point of novelty,he gave evidence that Scott's method of rolling out would enable you to make afilament of any fineness, Either we are to use common knowledge or we are not.It is a vital discrepancy. According to my friend, you may use prior knowledgeto break down a patent, but not to explain it. [Fi-nlay, Q.C.-Kay, J., expressly 30found that he saw no reason to doubt Professor Orookes made the experimentshonestly.] Kay, J., decided this case without any argument from us on thefacts. But there are other things. This attack on tar-putty depends entirelyon the experiments made after the trial commenced. I was right in sayingthat these were the only experiments made, because, though Sellon said he had 35made experiments, no results were produced-no evidence given as to what theywere. Mr. Finlay said we never knew about tar-putty till after the Defendants'case had begun; that we then began experimenting and found it out, andprocured secret instructions from America. Yet we had called Gimingham, onthe 19th April, in our evidence-in-chief. He put in lamps of the tar-putty which 40he had run, and which gave an average of 75 hours. That shows the straits towhich these infringers are driven. [l~-'£nlay, Q.C.-Gimingha1n did not run thelamps for duration. There' is an error; he means the thread-lamp.] No; insaying he did not run the tar-putty lamps for duration, he means he did not runthem till they broke down. Besides, we produced a number of other tar-putty 45lamps made by the Giminqhams, which ran for 132 hours. Are we to go onProfessor Stokes' Report or not? [COTTON, L.J.-What is Mr. .linlay'sargument ?] [Finlay, Q.C.-I said that Giminqh.am never tried these lampsto see how they would run.] [COTTON, L.J.-That hardly seems pertinent.]What is the point of my friend's objection? They objected that the lamps 50could not be made at all; now they say they were not rnn for duration. Whatis their point? That lamp-black and tar-putty could not be made till aftersecret instructions from America, or by experiment-viz., to knead longer. Whydid the Defendants not cross-examine Gimingham on this point? This attackon the tar-putty discredits their case. 55

The next point is the coating point. It is said you cannot do this, and youcan only carry out the Specification if you sham to do it. See the judgment ofKay, J., 5 R.P.C., p.481. Both Kay, J., and the counsel for the Defendantshave made a most complete misunderstanding. They mixed up the putting in

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Vol. VI~, No. 19.] AND TRADE MARK CASES. 275


the zinc oxide or camphor to make the filament porous and the coating process.The latter process was simply to keep the coils apart when they are beingcarbonized, not in the filament at all, but simply coating it only during thecarbonization. Professor Orookes made an experiment which failed-i-rolling the

5 filament in some powdered fireclay sprinkled on a sheet of glass. He said itburnt up the filament, and wholly failed. Now Professor Dewar did it andso did Gimingham. At Ponders End we repeated exactly Professor Crookes'experiment with success. He never ventured to repeat it. He and the otherwitnessess admitted that this was only to keep the coils apart-the same thing as

10 pyro insulation. It was not disputed. Professor Crookes said the alumina,the fireclay, the oxygen of it will combine with and burn up the thread. Wetried it, and all the silicate of alumina ran to one or two nodules. Then theysaid," That is quite true." We were meeting the point of the burning up. Thenthey turned round and said: "The reason it has not done so is because you

15 "have not taken tar-putty, but a hard, heavy filament." As a matter of fact, itwas parchmentized thread. We did first try it on 'an ordinary lamp, becausethe only point made was the burning up. Then, on their next objection, wetried it in various ways. We did it with tar-putty before Professor Stokesquite successfully. We used asbestos powder, silica, and kaolin. The

20 object being merely to prevent the coils touching one another, it did notmatter whether they were completely coated or not. We did identically whatProfessor Crookes did. [LINDLEY, L.J.-One of Mr. Finlay's points was,that dusting is not coating.] My friend is grasping at a straw. If whatProfessor Orookes did was coating, why is not the same thing coating .when

25 we did it. Their own witness does not say it was not coated. This is the waytheir witness construed the Specification; and when we do the same thing) itis said we are shamming. Kay, J., read the wrong passage; he was thinking ofthe mixing.. He says: "The filament, which is. to have a volatile powder like" oxide of zinc worked into it, has been. imitated by dusting." . There is not a

30 shadow of foundation for that statement. The. dusting was for coating.[LINDLEY, L.J.-What becomes of your coating?] It either remains on ordrops o.ff-it is immaterial; the lamp works perfectly; it does no harm.[COTTON, L.J.-Was not the argument that it would evolve OAJ-ZAn duringcarbonization and spoil the filament?] Yes. [Finlay, Q.C.-And tna, "-~t

35 would take place sooner or later, if not during carbonization, at any rate whenthe heat of the lamp came on, if a proper coating was put on 1J Yes; and theanswer is, the lamps ran perfectly. My friends simply read Kay, .I's., judgmentwithout the evidence. Then it was said we only dusted. Gi1ningham producedone coated. allover with the silica paste so thickly that the coils touched. That

40 has all disappeared without the least harm to the lamp. Is it possible to contendafter that that this is so unworkable that it breaks down the Specification? Theirexperiment before Professor Stokes was no repetition of what they had donebefore ; they actually coated so as to make the filament three times as thick asit was before. There is not one word in the Specification to justify their

45 experiment. Now as to the oxide of. zinc. We made one experiment on thatbefore Professor Stokes with 80 grains of tar-putty and 20 of oxide of zinc; thatwas the proportion which Professor Crookes said failed. It is admitted10 per cent. would be more reasonable. We made one experiment with25 per cent. Professor Crooke« tried camphor, so we showed that experiment.

50 The lamps made are produced; they were perfectly successful; one ran for41 hours, another for 35 hours unbroken. No'V, Professor Thompson andMr. Swi1lburnehad said zinc and camphor were absolute nonsense, would besimply fatal. The lamps burned-that is a complete answer. The copper helixmade before Professor Stokes ran perfectly successfully ; there is no evidence to

55 suggest it was not useful.As to the effect of carbonization on the platinum, this was .a main attack ;

that if you carbonize the filament in the presence of the platinum, the platinumwassoinjured that it wouldnot do to seal in the glass. In the first place there isno reason to use the same piece of platinum, because clamps are shown. But

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276 REPORTS OF PATENT, DESIGN, lMay 22, 1889.

Edison and Swan Electric Light Co. v: Holland.

I wish to say that it was pointed out that plumbago had a good deal of silicon init, which caused the porosity of the platinun. Accordingly, in the Defendants'experiments they used plumbago and tar, though the Specification says tar andlamp-black. The contest was, did silicon do it? In their carbonization therewas a piece of glass. We said that caused the porosity. They said" No." We 5showed carbon and platinum did no harm. Professor Dewar read the textbooks to show that silicon did it. Professor Crookes then took plumbago whichhas silicon in it. I leave your Lordships to-draw the inference.

Lastly as to the directions as to carbonization. Their defence is a sham. Theynever alleged that an iron box was not a proper thing to carbonize in. We pro- 10duced the iron box, and they said it could not be done. The first allegation thatthe iron box should have been specified in the Specification is in this Court.Mr. Imraq proved that an iron box had been previously used by him. It was anold thing. If you use a big iron box for large things, why may you not use asmall iron box for small things? It would be absurd to put them into a big 15box. Professor Crookes said if it could be done it was a trick. ProfessorStokes reports that six filaments weighing a grain were put into a box, closed inthe ordinary way, and carbonized. It is agreed that it was common knowledgeto pack ordinary things with charcoal. If so, why should that not be done withdelicate things? Why are you to exclude common knowledge in the case of 20the most delicate things? What is the whole outcome of this? Giminghamproves the making of the lamps, and is never cross-examined on these points;and our case closes without a suggestion of their objections or case. ProfessorOrookes goes and makes experiments, and developes three points: tar-puttycannot be made, corbonization, and porosity of platinum. A mass of evidence 25is called, all resting on those experiments. We met this by producing everything done. Kay, J., desires a report, which comes out, and is entirely in ourfavour. I say the Defendants originally had no idea of attacking the Specification. They started on these points because they thought they could breakdown the answer of Sir Frederick Bramwell about carbonization in sand. 30Kay, J., says if you are allowed to carbonize in charcoal, there is an end of thedifficulty. Why are we not allowed to do so? After that answer they set towork to try. They used a porous crucible and found everything burnt up. Thenthey started the theory the thing could not be done. The whole thing wasstarted in Professor Crookes' laboratory. We met every point; we produced 35the lamps made; they would not try them. I ask you to say this attack completely fails.

The Court reserved judgment.COTTON, L.J.-This was an action brought against the Defendants in respect

of two patents, both of which have become vested in the Plaintiffs, and' they 40sought to restrain the infringement of those patents. One of them was a patentgranted to Cheesborough. In respect of that Mr. Justice Kay decided in favourof the Plaintiffs, and granted an injunction and consequential relief. Asregards the other patent, which was one obtained by Edison, and dated the 10thof November 1879, he decided against the Plaintiffs, and hence the appeal. 45Now this Patent has been before this Court, and I had the advantage or disadvantage of being one of the members of the Court on the previous occasion.There was a difference of opinion between myself and the other Lords Justicesas to the true construction of the Specification, but I consider myself bound bythe decision of the Court on that point, and in my opinion, except on questions 50of fact, which, of course, must be decided by the evidence in this action, theCourt ought to consider itself bound by the previous judgment. In the previous case the Court held that if there was no anticipation of the inventionclaimed by Edison it was a good subject matter for a patent, being for a combination, many parts of which were not new, but which was rendered useful by a 55carbon bridge or burner, described as a filament, which the majority of theCourt held notto be confined to the particular things described as filaments inthe Specification, but I think held that it must possess the characteristicspointed out in the Specification, and must be substantially the same as regards

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Edison and Swan Elect,--ic Light 00. v, Holland.

these characteristics, as the particular filaments described in the Specification.The Court then decided that the utility of the invention was established. Herethere was a great effort made to contest the utility of the invention. This wasprincipally based on the contention that no successful incandescent lamps were

5 made in accordance with the Specification without further Improvements.Inventions for the improvement of the carbon filaments followed quickly onthe patent of November 1879, which greatly assisted in the manufacture anddurability of the burners of the incandescent lamp of November 1879. That, inmy opinion, was a useful combination, and a patent is not to be defeated simply

10 because subsequent inventions improved the patented article, or because, in consequence of subsequent improvements, no article was in fact made in accordancewith the Specification. But in my opinion it is established by the evidencethat in fact incandescent lamps were made by Edison in accordance with the;Specification of 10th November 1879, and even sent by him to Dr. Hopkinson"

15 and publicly run by him in March 1880. I do not see any fact now broughtbefore us which ought to induce the Court to depart, or would justify the Courtin departing from the previous decision of the Court on the question of theinvention being useful, and being the good subject-matter for a patent.

But we then come to the objection of want of novelty, which is a question of20 fact. The only alleged anticipation which I need consider is that of Sioan'e

lamp, exhibited in December 1878, and February and March 1879 by Mr. Swan.In the previous case, on the evidence then before us, I thought this lamp would,on the construction put by the majority of the Court on the Specification, be ananticipation. How does the evidence now stand? It is now admitted that the

25 carbon burner of Swan's lamp was formed into its shape before it was carbonized,and this removes one of the points much relied on by the Plaintiffs in theformer action. But we have now evidence, which was not before the Court inthe former action of what was being done by Mr. Swan and by Mr. Stearn afterthe ex.perimental trial of this lamp. We have the evidence of Mr. Swan and of

30 Mr. Stearn. We have had before us the lamp, and we have the letters writtenby Stearn to Swan in 1879 and 1880, which were apparently admitted byCounsel to show what was' being done by Swan and Stearn. We see thatlamp was treated by them as a failnre, and that their attempts to correct itsdefects led to lamps which differed more widely than this one did from the

35 lamp described in Edison's patent. This evidence assists the conclusion atwhich the Court arrived in the former action, that Sioan'« lamp of 1879 was nota success, and I think enables me to come to the conclusion that this lamp wasan experiment which failed aud was abandoned, and that the difference introduced by Edison was one which changed failure into success. But it was con-

40 tended by the Respondents that, in fact, Swan had used for electric lightingincandescent lamps with carbonized thread burners before the 10th November1879. Two witnesses Proctor and Heaviside, stated that carbonized threadlamps were, in 1879, used by Swan. There is no ground for imputing dishonesty to these witnesses, but there was direct evidence by Swan that he ~

45 did not make any thread .carbon lamp before 1880, or before a fire,the date of which is fixed as 17th January 1880, and I am satisfied thatthe witnesses were mistaken in fixing the date as 1879. Reliancewas placed by the Respondents on a lamp made by Bernstein, not asan anticipation of Edison's patent, for it was not made till after 1879, but as

50 showing that Swan's lamp was a practically useful one. But though Bernstein'slamp has a bridge or conductor, a pencil of carbon like Swan's, it has a differentjunction with the leading wires, which probably obviates some of the difficultieswhich prevented Swan's lamp becoming a success.

Then I come to an objection which was much relied on by the 'Defendants,55 which was not raised in the former action, and which is now supported by a

great deal of evidence. The objection taken as a whole, was that the Specification did not sufficiently show how the invention is to be carried into effect.It is necessary that this should be done so as to be intelligible, and to enablethe thing to be made without further invention-not, as was pressed upon us,

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Edison and Swan Elect/ric L1:ght 00. v, Holland.

by all ordinary. workman, but by a person described by Lord Ellenborough inHuddart v. Grimshaw (1 Webs. R. pp. 85-87) as a person skilled in theparticular kind of work or, .as said by Lord Loughborough in Arkwright v.Nightingale (1 Webs. R. P. 60) a person conversant in the subject. But in myopinion it is not necessary that such a person should be able to do the work 5without any trial or experiment, which,when it is new or especially delicate, .may ,frequently be necessary, however clear the description may be. Oneof the principal subjects of attack was that part of. the Specification whichgave directions for making a combination of lamp-black and tar to form amaterial to make the filament to be carbonized. Before the experiments, which, 10by the direction of Mr. Justice Kay, were made under the the supervision ofProfessor Stokes, the Defendants' witnesses said that useful filaments could notbe 'made out of" the material, and Professor Crookes was particularly strong inhis ridicule of the idea that tar-putty could be practically useful. Gimingham,a young man in the employ of the Plaintiffs, produced and proved lamps with 15burners made of tar-putty' filaments; and after the experiments made beforeProfessor Stokes, the Defendants contended before us, without any support fromthe evidence, that the material could not be effectually prepared without atrade secret which they said had only recently, during the course of the trialof the action, come to the knowledge of the Plaintiffs, and probably had 20been communicated from America. It was said that the secret was thenecessity of kneading the material for a length of time, and with the exercise ofgreat pressure. In fact Gilningham had, for the trial of the previous action,made lamps with tar-putty filaments which were made exhibits in this action,and though there are no express directions in the Specification how this tar- 25putty is to be prepared, it is stated that the material can be rolled into threadsas small as TJooths of an inch, and I think it would be obvious to any intelligent workman who wished to prepare the material that it must be kneaded so asto make it perfectly homogeneous, and to prevent any breaking of the threadin consequence of any particle of lampblack not being perfectly amalgamated 30with the tar. I think that this objection fails.

But it was contended that lamps with tar-putty filaments had not sufficientendurance to make them practically useful. No point was made of this beforeProfessor Stokes, so that no experiments were made to test this question. Infact, on the evidence before us, many of these lamps were shown to have run 35for a sufficient time to prove that they could not be considered failures in thisrespect. Another objection taken to the Specification was that no sufficientdirections were given as to the carbonization of the filament. The Specificationsays, page 3, "a cotton thread properly carbonized," and speaking of the threadof tar-putty, that" the tar may be carbonized in a closed chamber by subjecting 40it to a high heat," but no directions are given as how this is to be done.

Before the experiments made under the supervision of Professor Stokes, it wassaid that carbonizing the filament in a closed chamber without any packing, orwith a packing of sand, which was suggested by Sir Frederick Bramwell, wasimpossible, as the filament would be reduced to ash. But this was proved to be 45unfounded, and before us it was still contended that no sufficient directions asto the mode of carbonization were given. Carbonization was a well-knownterm. The ordinary process may be described as roasting without the presenceof oxygen. This was well-known and practised before the date of the patent,and Sir Frederick Bramwell in his evidence said, that any person who knew 50the ordinary process of carbonizing would succeed in carbonizing filaments.But it was strongly contended by the Defendants, and by some of their witnesses,that such slender things as filaments could not be carbonized in a closed chamberwithout being protected by packing, which the. Specification did not direct tobe adopted. In fact filaments were, as sworn by the witnesses of the Plaintiffs' 55and demonstrated by the experiments made before Professor Stokes, successfullycarbonized in close crucibles or boxes without any packing; moreover, thoughthe Specification says nothing about packing, any skilled workman conversantwith carbonization would take the ordinary process of packing to exclude

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oxygen, and would, I think, know that when so delicate an article as a filamentwas to be carbonized, the greatest care would be necessary to prevent anypossible access of oxygen. It is true that there was rro trade secret incarbonizing anything so delicate as these filaments, but great care only, in

5 exercising a known process and applying it to all unusually delicate article,and no invention would be necessary. When the Defendants' witnesses failedin carbonizing the filaments, I think that they did not use reasonable care toexclude oxygen as shown in· the case of using porous crucibles. I am of opinionthat this objection also fails.

10 Another point urged by the Defendants was that the coating with a non-carbonizable substance was injurious. The result of the evidence is that whenthe coatin.g is a thin one, the process can be and is done without any injuriousresults. But then it was' objected that the Specification did not direct the thincoating; and it was objected, and so held by Mr. Justice Ktu], that this thin

15 coating was a mere pretence of coating, and it was dusting only. But it appearsfrom the evidence of Mr. Crookes that he had himself, in fact, adopted thesame method as was adopted on behalf of the Plaintiffs for this coating. Theprocess was, I think, in the Specification, proposed as preventing the filament oftar-putty from sticking together during the process of carbonization, and what

20 I have said about Mr. Crookes, I think, shows that the process which producedthe so-called dusting must be considered as that which would naturally beadopted. I think that this objection also fails.

I have dealt with the principal points urged by the Defendants, thoughshortly, in order to avoid ·the extreme length which would be necessary if I

25 were to deal minutely with the various points. In my opinion, the Plaintiffsare entitled to judgment, and the appeal must be allowed.

LINDLEY, L.J.-The validity of the patent in question on this appeal isdisputed on two broad grounds, viz.: First, because the Patentee has notparticularly described and ascertained the nature of his particular invention.

30 Secondly, because he has not particularly described and ascertained in whatmanner the same is to be performed. The 9th section of the Patent Act, 1852(15 & 16 Victoria, cap. 83), under which the Plaintiffs' patent was granted,imposes upon the Patentee the necessity of complying 'with both of theseconditions in order' to sustain his patent, and the patent is bad if he fails to

35 perform either of them. The two conditions, although often confused andoverlapping, are really distinct, and it is always necessary to keep clearly beforeone's mind, and not to commit the mistake of supposing, that compliancewith one is necessarily compliance with the other.

The first condition imposes upon the Patentee the necessity of stating in clear40 and intelligible language what his invention really is, so that others may know

what addition the Patentee has made to what was known before; so that theymay know what they are not at liberty to do without his consent during theexistence of the patent; in other words, so that they may know what themonopoly is that is granted to the Patentee. The nature of the invention

45 must be stated both in the Provisional and in the Complete Specification; butwhilst it is sufficient in the Provisional Specification to state the nature of theinvention in general terms, it is necessary in the Complete Specification to" particularly describe and ascertain it."

The second condition imposes upon the Patentee the necessity of stating in50 clear and intelligible language, in what manner the patented invention is to be

performed; so that others may learn from the Specification how practically toavail themselves of the patented invention when the patent has expired; howthey are to do what is necessary to carry out the new invention, the nature ofwhich has been previously described. This condition applies to the Complete

55 Specification only; there is no necessity to state in the Provisional Specifica..tion how the invention is to be performed.

With reference to the degree of clearness and distinctness of the languagenecessary to be used in order to comply with those conditions, it is .obviouethat no hard and fast rule can be laid down ; the degree of clearness can only

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Ed1~son and Swan Electric Light Co. v. Holland.

be stated in language which itself admits of considerable latitude in itsapplication. On the one hand, the Patentee must make the nature of hisinvention, and how to perform it, clear and intelligible; on the other hand, itis not necessary for him to instruct persons wholly ignorant of the subjectmatter to which his invention relates, in all that they must known before they 5can understand what he is talking about. The Patentee is adding something towhat was known before, and he does all that is necessary as regards thelanguage he uses, if he makes the nature of his invention, and how to performit, clear and intelligible to persons having a reasonably competent knowledge ofwhat was known before on the subject to which his patent relates, and having 10reasonably competent skill in the practical mode of doing what was thenknown. In complying with the first condition, i.e., in describing the nature ofhis invention, the Patentee does all that is necessary, if he makes the natureof his invention plain to persons having a reasonably competent knowledge ofthe subject, although from want of skill they could not themselves practically 15carry out the invention. In complying with the second condition, i.e., indescribing in what manner the invention is to be performed, the Patentee doesall that is necessary, if he makes it plain to persons having reasonable skill indoing such things as have to be done in order to work the patent, what theyare to do in order to perform his invention. If, as may happen, they are to do 20something the like of which has never been done before, he must tell themhow to do it, if a reasonably competent workman would not himself see howto do it on reading the Specification, or on having it read to him. The principleto be applied to the language used to comply with the two conditions is thesame for both ; but one class of persons may understand only one part of the 25Specification and another class only the other, and yet the patent may be valid.In a well drawn Specification, the two conditions that have to be compliedwith are kept distinct; but in many Specifications this course is not pursued.The nature of the invention and the manner of performing it are oftendescribed together. It may be that one set of words sufficiently discloses both 30the nature of the invention and the mode of performing it, as in Boulton v,Bull, Dav, P.O. 162. But it may be, and sometimes is, very difficult to severthe two, and to see whether both are sufficiently described. Still, if they arein fact sufficiently described, the conditions must be held to be compliedwith, however difficult and troublesome it may be to arrive at the conclusion. - 35

I have been induced to dwell at some length on the above matters because oftheir importance in the present case, and of the danger of losing sight of theprinciples by which the Court ought to be guided in deciding it.

I proceed now to enquire whether these two conditions have been performed;and I will take them in the order in which they logically present themselves. 40First, as -to the nature of the invention. This Court has had to consider thispatent before and, although there was a difference of opinion among the membersof the Court, the decision of the Court was, as I understand it, first, that theexpression" carbon filament" on which so much turms, was sufficiently clearand definite; secondly, that the nature of the invention was sufficiently described 45and ascertained, and was summed up in the second claim; thirdly, that thesecond claim was, in substance, a claim to "every combination of any carbon" filament with any receiver made entirely of glass through which any leading" wires pass, and from which the air is exhausted; " fourthly, that the Plaintiffs'"carbon filament" was essentially different from the carbon pencil used by 50S-wan in his lamp" F.J .B. 1," and that Swan had not by that lamp 'anticipatedthe Plaintiffs' patent. The patent was upheld notwithstanding the very widenature of the second claim as construed.

This decision is, in ID)T opinion, binding- on us so far as the construction ofthe Specification is concerned, but no further. I do not regard the decision as 55binding us, upon the questions whether the conditions to which I have alludedhave been performed or not, for these questions depend not only on theconstruction of the Specification, but on evidence as to the previous state ofknowledge, and as to whether a person of reasonable skill could, at the date of

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the Patent, carry out the invention without further instruction than theSpecification gave him. I have, therefore, whilst taking the construction ofthe Specification as settled, considered myself at liberty to exercise my ownjudgment on the effect of the evidence in this litigation.

5 The construction of the Specification which I oonsider binding, involves threepoints, viz.: 1. That the Specification is not too vague and unintelligible 'to beconstrued by the Court. 2. That what is meant boy "carbon filament" isreasonably plain from the Specification itself; and 3rdly, that the second claimas construed by the Court is not so wide as to invalidate the Patent. The

10 meaning of the expression" carbon filament" appears to me to be the crucialpoint for determination when dealing with the question whether the nature ofthe invention is particularly described. This point, nioreover, is, in my judgment,by far the most difficult in the whole case. Everything, I think, turns upon it ;but as I was not a party to the decision, and the case will probably be appealed,

15 I think it desirable to state that after much consideration and doubt I havecome to the conclusion that what is meant by the expression, " carbon filament ".can be gathered from the instances given in the Specification, and that what ismeant is any thread which can be, and is, bent into the required form, and canbe, and is, carbonized when so bent. The thread, as shown by the examples,

20 may be a fibre or a group of twisted fibres or as it is to be gathered from the tarlamp-black instance, it may be an artificial substance pressed or rolled intothread or wire-like forms. The evidence shows that at the date of the patent,the expression" carbon filament" was new as applied to electric lighting. Itsmeaning, or, in other words, the sense in which it is used by the Patentee, must

25 therefore be gathered from the Specification. The sense in which the Patenteehas used the expression" carbon filament" can, in my opinion, be gathered fromthe typical examples given in the Specification and referred to in the judgmentof Lord Justice Fry in the former case. The Lord Justice says :#_" It is not"needful for us to pursue the description of all the processes given by the

30 "Specification, but we will refer to the forms of carbon conductor described."The first form referred to as suitable is a ' cotton thread properly carbonized,'" which is stated to offer from 100 to 500 ohms resistance to the passage of a" current; the second form of conductor referred to is any fibrous vegetable" substance which will leave a carbon residue after heating in a closed chamber.

35 "To this class may be referred the cotton and linen thread, wood splints, and" paper coiled in various ways to which Mr. Edison refers. The fourth. form ish such fibrous material as before mentioned, rubbed with "a plastic compound of" black lead and 'tar. The fifth form is a carbon filament made of a com bination" of tar and lamp-black, or plumbago or carbon in other forms, the lamp-black

40 ." and tar being subsequently carbonized by being subjected to high heat in a closed"chamber. Mr. Edison observes that small pieces of such a compound may be" rolled out in the form of a wire as small as nfooths of an inch in diameter."The sixth and last form described is a carbon filament of the kind lastly"described, but coated for the purpose of support. with a non-conducting-

45 "non-carbonizing substance." The size of the filament is not stated, but it isquite clear from the objects to be attained that it must be long and thin, andnothing more definite is necessary to be stated.

Having arrived at that conclusion, it follows that, in my opinion, the Patenteehas " particularly described and ascertained the natura of the invention."

50 . The next thing is to consider whether he has sufficiently described" in what" manner the same is to be performed." This is a pure question of fact and isin no way touched by the previous decision of the Court. Mr. Justice Kay,however, has found this against the Patentee. Having carefully attended tothe evidence and to his judgment I have come to the conclusion that I am

55 unable to agree with him, and I cannot help doubting whether he would havearrived at the same conclusion if he had had the advantage which we have hadof hearing the Attorney-General's reply to his opponents.

• &e 4: R.P.C., p. 87.

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2~2 REPORTS OF PATENT, DESIGN" [May 22" ~889.

Edt'son and Swan Elect/ric LiU,ht Co. v. Holland.

The Defendants, in the first place, endeavoured to make out that "carbonfilaments " could not be made as described by the Patentee. The evidence onthis point was so conflicting that Mr. Justice Kay called in an expert to assisthim. This gentleman's report is absolutely conclusive in favour of .the Patenteeupon the question whether "carbon filaments ' can or cannot be made as 5described. Beaten on this point, the Defendants contend that no competentworkman could have made" ca.rbon filaments" according to the Specificationwithout further instructions than are there given. If it be meant that fewcompetent workmen could make them without some practice, I think the contention is well founded; but this is not sufficient to invalidate the patent. If a 10person is told to carbonize a thread, and, for want of thought or practice, he takesa porous crucible for the purpose, and does not protect his thread, and fails,when, if he had packed this crucible, or had taken a non-porous crucible, he wouldhave succeeded, his failure can hardly be said to be the fault of his instructor,if a little thought and consideration would have shown that a packed crucible, 15or a non-porous crucible, was the right one to employ The fact that 'a workman may use a wrong tool when he has a right one, which a little thought willlead him to see ought to be used, does not warrant the inference that a Specification is bad if it does not tell him which tool to use.

Again, with respect to tar-putty, the object to be attained is plain; the putty 20must be kneaded so that it can be rolled out thin without a break or flaw.Practice alone can teach any man how long and how hard he must knead. Ifhe stops too soon and fails, is it the fault of the Patentee? I should say,certainly not. A similar observation applies to coating with a non-conducting,non-carbonizable substance. If the coating is made lightly by dusting, all goes 25well; if too much is put on, failure is the result. A little is all that is required.Mr. Crookes himself tried dusting as the most natural way of coating, and theunsuccessful coating experiments were not repeated before Professor Stokes.I feel the great difficulty of describing in words the distinction between anamount of practice, without which failure is probable, but the necessity for 30which does not destroy a patent, and an amount of experiment and invention,without which failure is certain, and the necessity for which destroys a patent.The test, however, by which to decide such a question ia, I think, to be foundby asking whether anything new has to be found out by a person of reasonablycompetent skill, in order to succeed, if he follows the directions contained in 35the Specification. If yes, the patent is bad; if no, it is good so far as thispoint is concerned. 'Practice is one thing, experiment and trial are somethingdifferent. On this point I derived considerable assistance from the judgment ofthe late Master of the Rolls in Plimpton v. Malcoimson; L.R. 3 Ch, D. 531, andfrom the judgments in Simpson v. Holliday, L.R. 1, H.L. 315 ; and Macnamara 40v, Hulse, 2 Webs., R. 128 n, It is settled that a Patentee who does not disclosethe best method known to him of carr-ying out his invention, does not complywith the second of the conditions to which I have before referred. But if aPatentee says that something must be done, which a reasonably competent manwould know how to do, the Patentee need not tell him how to do it, nor warn 45him to be careful, and to exercise such forethought and attention as the delicacyof the process to be used, or the material to be employed, plainly demand.

The evidence upon the question; whether at the date of the patent a. reasonably competent man could make" carbon filaments" without further instructionthan is' given in the Specification, or without further experiments, was un- 50doubtedlyconflicting, and Mr. Justice Kay, who saw the witnesses, came to theconclusion that further instruction and experiment were necessary. TheAttorney-General, however, -convinced me that on this point Mr. Justice Kaywas mistaken. I cannot, myself, come to the cunclusion that the Patentee haskept back any secret that he possessed, by virtue of which he could in 1879 55make " carbon filaments" better than other persons possessed of reasonable skill,and who followed the directions contained in the Specification with a bona fidedesire to succeed. To insure success, all that is necessary is carefuly to followthe instructions there given, bearing in mind the objects to be attained. and

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Edison and Swan. Electric Light Co. v. Holland.

that the filaments are extremely delicate and easily destroyed. That is, in myopinion, the fair result of the evidence, and the fact that Edison. in later patentsgave particular instructions as to the mode of carbonizing, &c., only shows thathe had then ascertained that those instructions were necessary to enable. a com-

5 petent man to attain the desired results. It cannot, I think, 'be inferred that in1879 special instructions were necessary to enable reasonably skilful men to dowhat the Specification of that date said must be done. The evidence on thismatter is no doubtconflietlng, but I cannot agree in thinking that the mannerin which the invention is to be performed is not stated with sufficient clearness

10 to support the patent. If this were really true, it would have been found outlong ago, at least so far as carbonizing i~ concerned.

There, remain, however, two other matters for consideration, namely,novelty and utility. The novelty depends on whether Swan's lamp,F.J.B. 1,was an anticipation, for I am convinced that Proctor and Heaviside are

15 wrong in the date they assign to the hairpin lamps made by Swan.The correspondence referred to b)" the Attorney-General is conclusive asto this matter. The lamp F.J.B.1, was held by this 'Court, in the actionagainst Woodhouse, not to be an anticipation of the Plaintiffs' patent,but it was then supposed that the carbon pencil used in it was carbonized

20 after and not before it assumed its final shape. This was a mistake,and was admitted to be so in this action. The question of anticipation mustbe considered anew on the evidence before us. If Swan's lamp F.J.B.l hadbeen a success instead of a failure, it would, in my opinion, have been ananticipation of the Plaintiffs' patent. The evidence, however, shows that it

25 was a failure and that Swan had not got the key to success. His own effortsto improve this lamp show that he was not thinking of filamentous incandescentcarbons, but of other matters. Still his lamp did give light for a time, andwas very near, though in my opinion, not quite an anticipation. It .was, intruth, an unsuccessful experiment. I agree with Lord Justice Fry in thinking

30 that the point at which Mr. Edison:« instrument departed from Mr. Stvan'swascrucial, and the departure, though slight, had all the merits of a new invention,and produced anew apparatus. Regarding the lamp F.J.B. 16s an unsuccessfulexperiment, this part of the case is governed by the principle of Murray v,Clayton, L.R. 7 Oh. App., page 570. _

35 The question of novelty, which I am now considering, is closely connectedwith, although really different from the question as to the sufficiency of thedescription of the nature of the patented invention. Given Swan's lampF.J.B. 1 can it be said that Mr. Edison added anything to what was knownat the date of his patent, and that he sufficiently described the nature' of what

40 he added? In my opinion he did; not indeed in words distinguishing hislamp from Swan's, but by giving and describing a new type of body to berendered incandescent, or, if I may use such an expression, a new type ofthread. One mode of trying this question is to ask whether anyone wouldmake such a thing as Swan's lamp, F.J.B. 1, if he took Edison's Specification

-15 'as his guide. 1 am convinced he would nof; he would avoid and not reproduceSioan'» carbon pencil, and would adopt Edison's type of carbon in the carbonfilament. The two may be made to shade off into each other until it becomesimpossible to. draw the line sharply between them; but this does not preventaman from perceiving the difference between the two types, or from adopting

50 the one which succeeds in preference to the one which fails.There remains the question of utility. Edison's patent is said to be of no

use, and the proof of this statement is said to be furnished by the fact thatlamps are not made according to the patent, even by· Edison: himself. The'utility of the patent must be judged by reference to the 'state of things at the

55 date of the patent; if the invention was then useful, the fact that subsequentimprovements have replaced the patented invention and rendered it obsoleteand oomrnercially of no value, does not invalidate the patent. Such has beenthe fate of lamps made in the way described in Ed£son's Specification. Suchlamps appear to have been made and sent to England, but they were so soon

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284 REPORTS OF PATENT, DESIGN. [May 22, 1889.

Edison and Swan Electric Light o« v. Holland.

improved that they at once ceased to be used in their original form. Butlamps having the carbon filaments in combination with the other essentialsmentioned in the second claim are in constant use, and their utility is provedby the fact that this particular combination is used by the Defendants, and byeveryone, in fact, who .makes incandescent electric lamps. The utility of the 5patented invention,meaning thereby the above-mentioned combination isincontestable; and Mr. Justice Kasf'« opinion to the contrary, is, I think, tobe attributed to the 'View he took of the construction of the patent, a matterwhich, as I have said before, I consider settled by the previous decision ofthis Court. 10

Before concluding, I ought to notice the very formidable objection taken byMr. Justice Kay, to the validity of the patent, on the ground that the secondclaim is for a monopoly of incandescent lamps containing a filament of carbonfor a burner, and that such claim is far too wide considering how muchMr. Edison had invented. Whether the view here taken of the patent is 15correct -or not, turns, in my opinion, on what Mr. Edison. did when heintroduced "carbon filaments." 'I'hat was, I think, a new departure of thehighest importance in electric lighting, and if this be so, the claim is not toowide. (See Househill OomlJany v. Neilson, 1 Webster R. p. 673.)

For the reasons above stated I am of opinion that this patent, construed as it 20has been by this Court, is valid, and that the appeal ought to be allowed.

BOWEN, L.J.-In order not to add more than is necessary to the voluminousIiterature on the subject of this patent, I will express my views as briefly aspossible. As regards the construction of the second claim, I think we oughtto follow, on principle, what has been already decided by the majority of the 25Court in the case of the former action, but as I retain the same opinion as Ithen formed, this point becomes less material. The patent appears to me toclaim in distinct and unmistakeable language, every combination of anycarbonized filament with any receiver of glass, through which leading wirespass, and from which the air is exhausted. Whether a claim so framed is too 30vague or too wide, or unfit to be the subject of a patent, or whether it iswanting in novelty or utility, constitutes an enquiry, which, in part, at all

.events, may be said to be bound up with questions of fact, and, as far as allsuch points are concerned, I think it desirable to judge this appeal de novo uponits independent merits. 35

Construing claim 2 as embracing all combinations such as I have mentioned,is it too vague? I see no reason to doubt that in the year 1879 the termfilament, though new at that date as regards electric lighting, would nevertheless convey to the minds of ordinary persons, of the class to whom thisSpecification was addressed, the idea of a slender thread, or thread-like 40substance, and it seems to me that the Specification indicates that the thread orfilament was first to be formed and then to be subsequently carbonized. Onpage 2 of the patent the thread is distinguished from a rod. " Heretofore, light" by incandescence," says Mr. Edison, "has been obtained from rods of carbon."I have discovered that even a cotton thread, if properly carbonized," will 45produce the requisite effect. The instances given in the Specification whichare enumerated in the judgment of Lord Justice Fry and myself in the previousappeal, and in the judgment of Mr. Justice Kay in the present action, areillustrations of the sense in which the term, which appears to me to be in itselfintelligible, is used. The term filament is nowhere defined. It is a descriptive 50term, not a definition. But it appears to me to indicate the nature of thisparticular factor in the combination in a way that describes and ascertains thenature of the invention, so as to render it plainly intelligible to a skilled personof the class to whom the Specification is addressed-language which embodiesold law, but which is tersely expressed in Lord Herschel's judgment in the 55Badische Anilin. Case (L.R. 12 Appeal Cases 710,4 R.P.C. 449).. The merits ofthe filament, as distinguished from a rod, are manifest. The filament or threadhas an extremely small sectional area; it is flexible before carbonization andresilient afterwards. It is true that these merits are not explained, but! know of

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no law which renders it incumbent on the Patentee in such a case to explainthem. It appears to me, moreover, to be proved, not only that every successfullamp since 1879, which is available for multiple arc lighting, has employed afilament, but also that there is no proof yet that any filament cannot be adapted

5 to the patented combination. If this is so, why is the claim too wide? It isnot the fault, but the virtue of the invention that it covers so large a field.

We have been pressed with the argument that the Edison patent is uselessand that no lamp in the market has been made exclusively on the patent of1879 without the aid of subsequent improvements. Improvements of real value

10 followed with great rapidity on the patent, and were naturally utilized. Theirrapid succession does not destroy the legal validity as regards usefulness of theoriginal combination, to which such improvements were felicitously applied.The utility of this invention, which was admitted in the Woodhouse case, hasbeen challenged in the present action, but I think unsuccessfully, and the

15 evidence shows that lamps made solely on the patent will and do succeed,although subsequent improvements have been generally engrafted on theoriginal design.

Was F.J.B.1 an anticipation? We know now what the Court did not know inthe last action, that the carbon conductor in F.J.B. 1 was formed before it was

20 carbonized. Was it a filament? The question is one of degree. I doubtwhether it is one, and I still more doubt whether anyone who saw it wouldunderstand it to be such. But in any case, I think F.J.B. 1 never was morethan an experiment which was unintelligible on account of its failure, andbarren of all fruit, and which was regarded even by its inventor as practically

25 valueless in the race. The correspondence between Messrs. Sioan. and Stearn;shows, I think, to demonstration, that till the middle of the year 1880 Mr. Swandid not consider himself to be upon the right track. The dates put forward bythe witnesses, Proctor and Heaviside, seem to be unreliable and inaccurate, andI think there is reason for believing that it was Mr. Edison'~ patent which led

30 back "the world of electricians to the true path. Certainly, from the date of itsexhibition, the lamp F.J.B. i-disappeared from history until it was exhumed forthe purposes of the trial in the Woodhouse case.

With respect to the .remaining points raised in argument before U8, I havenothing to aid to what has been said by my brothers. I think this patent

35 constituted a new departure in electricity; that the Specification sufficientlydescribes and ascertains the nature of the invention, and that no reasonablycompetent operator, alive to the delicacy and care obviously requisite in formingand carbonizing so light a thing as a filament, ought, without any exercise ofinvention, but with reasonable watchfulness only, and fair goodwill, to have

40 been embarrassed in making and carbonizing Mr. Edison's filaments. Theappeal, in my judgment, should be allowed with the ordinary results as to costs,and I think I ought, in conclusion, to express my own personal obligation forthe conspicuous clearness and ability with which this case hac been placedbefore us at the bar.

45 The Attorney-General and Aston, Q.C., then submitted that they wereentitled to an injunction against the third parties, and referred to Rules 49 and 52of Order 16, and Hornby v, Cardwell, L.R. 8, Q.B.D. 329; Piller v, Roberts L.R.21, Ch. D.198, and Eden v. Weardale I?"on o«; L.R. 35, Ch. D. 292. They asked,if necessary, leave to amend by making the third parties co-Defendants.

50 COTTON, L.J-A point has been raised here which is a curious one, but itarose simply after judgment, and I thought the matter was simply giving thejudgment now to apply to both patents, which Mr. Justice Kay had given asregards the one which he decided in favour of the Plaintiffs. But the Plaintiffsnow claim to treat the third parties as if they were Defendants, not only in the

55 way of making them pay costs, but also in the way of granting relief againstthem-granting an injunction and consequential relief. As regards that, Ithink it would be wrong, because the third parties are not Defendants. If aPlaintiff has a direct claim against' a third party, as soon as that is known theproper course is to amend the statement of claim and make him a Defendant,

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286 REPORTS OF PATENT, DESIGN, [May 22,1889.

Edison and Swan Electric Light Co. v. Holl~nd.

and then the Court has all that jurisdiction, as against the Defendant which itgains by serving that party with a writ, and bringing him in as a party tothe action. Why that was not done here I cannot understand, except thatposslply the Plaintiffs did not like to bring in another person against whomthey would be liable to costs. 5

I do not wish that there should be unnecessary litigation, but I do not seethat for that reason I could assume a power which, in my opinion, we have notgot. It is very true that when this third party came in and desired todefendthe action, and the direction was given, he might have had that Iiberty given011 his undertaking to submit to any judgment which the Court might think fit 10to give as against him, supporting the interest of the Defendant, and reallybeing the person who ought to have been made Defendant. But that was notdone. The order which was made was simply an order in .these terms, that heshould be at liberty to appear at the trial of the action and take such parttherein as the judge shall direct, "and the.. said Anglo-American Brush Electric 15" Light Corporation, Li-mited, shall be bound by the decision of the Court in"this 'action in any question as to the above indemnity which may arise"between that Company and the Defendants." If the Plaintiffs were notsatisfied with that, they. ought to have said : "No, that will not do for us; other" terms ought to be imposed upon this third party;" but the proper course, 20looking now still to the origin of the jurisdiction, and that which brings aperson within the jurisdiction of the Court, ought to have been for the Plaintiffsto have amended their appeal, and said : "Here are the real persons who are" disputing or infringing this patent, and who are making these things which," we say, are infringements of the patents." That course was 110ttaken for SOIne 25reason: I do not know why. In my opinion, we have no jurisdiction to make adecree against this third party as if he were a Defendant, and to make aninjunction against him, and grant damages against him in this action as ifhe were made a part)". Whether he will be unwise enough to dispute thePlaintiffs' right as regards this patent when another action is' brought 30against him, I cannot suppose. But then the Attorney-General says, "Giveme leave to amend," and Mr. Aston says that we ought to make such order asthe Court ought to have made below, and to make such amendments as maybe necessary for that purpose. But what was the course taken by the Plaintiffson the trial in the Court below. In the Court below they never asked for this 35relief as against this third party. It is very true there was an expression bySir Horace Davey which was relied upon, that the third party sought to beput.in direct relation to the Plaintiff. I do not quite understand what "thatmeant. It is not as clear ·as Sir Horace Davey's expressions usually are, butthese parties did not act on that, and treat it as a statement that the third 40party should be made a Defendant. It may have been immaterial then,because the costs given to the Defendants were the costs of the Defendantsas regards that part of the action in which the Plaintiffs failed, and costs weregiven as against the Defendants as regards that part of the action on which thePlaintiffs succeeded. In my opinion, it would be wrong, under those circum- 45stances, and in the course which has been adopted by the Plaintiffs, now togrant liberty to amend to enable the Court to give different relief against thethird party than that which was asked for at the trial of the action.

Now as to the costs. As regards the costs of the appeal, as the third .partiesdo appear on the appeal, and as. they were served with notice of appeal, there 50will be no difficulty in making an order against them for payment of thecosts of the appeal, and in my opinion the Court has jurisdiction havingregard to Rule 54, to make them pay the costs. Therefore, as regards this.part of the action, I think it would be wrong to alter the judgment. Asregards the other part of the action we may, when we alter the judgment of 55Mr. Justice Kay, make an order against the third party as well as against theDefendants for payment of the costs of the action.

LINDLEY, L.J.-In substance, the third parties here are the people whofought the Plaintiffs, and if I had tried the case and come to the same

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[S~cond Edition.]

Vol. VI., No.·20.] AND TRADE MARK CASES. 287


conclusion I have done on the merits, and had been asked to amend bymaking the third parties Defendants, I should have done it without theslightest hesitation, and I am not at all sure, if I were sitting alone on theappeal, I should not do it now. I think there is power to do it, but I will not

5 differ from my learned brother on that point. There is very little doubt asto whether it ought to be done and so let in the very wide terms of Order 28Rule 1. When you see, at least apparently, that no conceivable injustice canbe done-there are no merits in it: it is a mere matter of form-I should getover it. However, as I say, there has been no amendment. As to costs there

10 is no difficulty at all. Rule 54 of Order 16 clearly gives power to make whatorder we think right as to costs. Now what order is right? Those who reallyfought the Plaintiffs and failed should pay the costs. The order will be thatthe third party do pay the costs here and below.

The Attorney-General asked for a certificate that the validity of the patent15 came on issue in the action. The Oourt refused the certificate on the grounds

that a certificate had been granted in the previous action, and to give one in thisaction would be to throw a doubt on the sufficiency of the former certificate.

IN THE OOURT OF ApPEAL.

Before THE MASTER OF THE ROLLS AND LORDS JUSTICES FRY AND LOPES.

20 March 21st and 22nd, 1889.

CRAMPTON o. THE PATENTS INVESTMENT COMPANY.

Patent.--Action to restrain threats by patentee.-Validity of patent.Injringement.-Alleged disconjormity.-...4.lleged anticipation.

The patentee oj an improved electric belt commenced an action against rival25 patentees for an injunction. to restrain the Defendants from threatening the,

Plaintiff and his customers with liability in. respect of alleged infrinaement,and for damages. The Plai1~tijJ, by his statement of claim and particulars ofobjections, alleged that the Defendants' patent uia« inualid on the grounds ofanticipation. of the invention; and of disconformitu beuoeen the Provisional

30 and Complete Specifications, and that he had not infringed any legal rights ofthe Defendants. .

Held at the trial that the Defendants' patent toas valid and had been infringedby the Plaintiff. Certificate that the validity of the patent came in qu-estion inthe action gra'nted to the Defendants unthoui prejudice to the validity of such'

35 certificate, if it should come into operation. The Plaintiff appealed.Held that (1) there ioas no evidence that the Defendants' patent had been antici

pated; (2) the main. object of the patent was to provide electric bells which couldbe operated on by a smaller electric battery than was necessary with the electricbells previously i-n use, and the remaining claims were for different manners

40 and modes oj carrying out that invention; (3) the Complete only elaboratedand rendered specific the invention claimed in the Provisional Specification;and (4) the Plaintiff's bell had the armature balancing the clapper, and sosaved electric force, Cl'nd cor~seqruently was a·n infringement, thouqh. varying incertain details. The appeal uias accordingly dismissed.

45 In 1882 a patent (No. 4712, of 1882) was granted to Browne Wolsey TVebb,Hans Peter Frederick Jensen, and Jens Jensen, for "Improvements in and"relating to electric bells and alarm clocks, and apparatus to be used in" connection therewith." The Provisional Specification stated as follows :-" Our" invention relates to electric bells and alarm clocks, and apparatus to be used

50 "in connection therewith; and the said invention comprises various improve" ments and novel features hereinafter described.... In some cases a second or" branch circuit is provided, which is normally opened, but can be completed'by a push knob, so that the apparatus can be used as a call bell, or forsignalling purposes if desired. According to another part of our Invention,'

P 12574-200-12j95 Wt 17614 D & S MM

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ay 2022

[Second Edition,.]

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