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10 F.(20) 861 dicates so plainly that he was attempting to 5. Patents E-235—Retaining principle and lay the foundation for salvage service with

mode of operation and attaining result by use

of same or equivalent mechanical means conout the consent and over the objection of the

stitutes infringement, notwithstanding form owners of the Trinidad, and his testimony is has been changed. in some respects so lacking in that frank- One may not escape infringement by adding ness which should characterize a witness, to or substracting from a patented device, by that I am disposed to accept the testimony changing its form or by making it more or less

efficient, while he retains its principle and mode of McLeod as to the rate agreed upon. of operation, and attains its result by use of

A decree will therefore be entered in same or equivalent mechanical means. favor of the libelant for two days' towage 6. Patents en 328—1,018,502 and 1,180,159, service at the rate of $250 per day, without claims 4, 5, 12, and 13, for incandescent lamp costs.

and bodies, held infringed.

Just and Hanaman patent, No. 1,018,502, for incandescent bodies for electric lamps, and Langmuir patent, No. 1,180,159, claims 4, 5,

12, and 13, for incandescent electric lamp, GENERAL ELECTRIC CO. v. MINNE- held infringed. APOLIS ELECTRIC LAMP CO.

7. Monopolies w21-Violation of Anti-Trust (District Court, D. Minnesota, Fourth Division. Laws will not deprive right to maintain suit October 9, 1924.)

for infringement of patent. 1. Patents Om 297 (3)-Preliminary Injunction

Mere fact that party may be guilty of viowill be granted, where there has been prior lating the Anti-Trust Laws (Comp. St. § 8820 adjudication sustaining patent and infringe

et seq.) will not deprive him of his right to

maintain a suit for injunction on account of ment thereof in same or another circuit.

infringement of patent owned by him. Where there has been a prior adjudication sustaining patent, and infringement there. 8. Equity Ow65(3)-Maxim, “He who comes in. of in same or another circuit, validity of pat- to equity must come with clean hands," applies ent being contested on full proofs, trial court only to case where the unconscionable conshould, upon motion for preliminary injunction, duct of the plaintiff is directly connected with sustain patent, and leave question of its validity the subject matter of the suit. to be determined upon final hearing.

Maxim, "He who comes into equity must 2. Patents 297 (7)-New matter, other than

come with clean hands,” applies only to case introduced in prior suits to sustain validity tiff is directly connected with the subject-mat

where the unconscionable conduct of the plainof patent, must be such as to lead court to

ter of the suit. believe patent would have been held invalid, in order to defeat preliminary injunction. 9. Patents w283(1)-Fact that patent owner

In order to defeat preliminary injunction, had breached contract with defendant would where patent has been sustained in same or an- not be defense to patent infringement suit. other circuit, new matter relied upon must be Fact that owner of patent had breached of such character as to lead the court to believe

contract with defendant would be no defense to that, had new matter been presented in former

patent infringement suit against defendant. suit, patent would have been held invalid.

10. Patents 316-Defendant to patent in3. Patents w297(7)-French court's decision, fringement suit cannot compel plaintiff to holding patent invalid, can only raise doubt

perform contract which it had alleged was il. as to validity where patent was held valid

legal and void. in another circuit which had before it French

Where counterclaim to patent infringement court's decision.

suit asks for relief that it be given right of Decision of the French court, holding in- purchasing from plaintiff according to contract, valid French patent covering same invention as

after having made allegation that sales made United States patent in suit can only serve to

under such contracts were illegal and void, held raise doubt as to validity of French patent, that defendant had no valid cause of action to and is not new matter which might affect the is- enforce such contract. suance of preliminary injunction, in view of fact that French court's decision was before 11. Patents Om 283(1)-Counterclaim to patent other United States courts which sustained the infringement suit, which is legal and not equi. French patent.

table, cannot be set up.

Under new equity rule 30, counterclaim to 4. Patents am 297(7)—New matter set up with patent infringement suit, which is legal and not old, insufficient to have changed prior deci.

equitable, cannot be set up. sion sustaining patent, will not defeat issu. ance of preliminary injunction. Where so-called new defenses are in reality

In Equity. Suit by the General Electric old defenses, and new matter set up with old Company against the Minneapolis Electric would hardly be sufficient to have changed prior Lamp Company for an injunction and acdecision sustaining patent, such new defenses, although entitled to full consideration upon

counting for infringement of patents. On final hearing, will not defeat issuance of pre

motion for preliminary injunction, and on liminary injunction.

motion to strike out parts of answer. Pre

watt per

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liminary injunction granted, and motion to “5. An incandescent electric lamp havstrike parts of answer granted.

ing a filament of tungsten of large effective Appeal dismissed 7 F.(20) 1020.

diameter and a bulb or globe therefor filled Paul, Paul & Moore, of Minneapolis, with dry nitrogen at a pressure as high or Minn., Frederick P. Fish, of Boston, Mass., higher than that corresponding to 300 milliHubert Howson, of New York City, Albert

meters of mercury, the filament being there. G. Davis, of Schenectady, N. Y., and H. A. higher than that which it would have if opG. Davis, of Schenectady, N. Y., and H. A. by adapted for operation at a temperature Couse, of Cleveland, Ohio, for plaintiff.

erated in a vacuum at an efficiency of one Stanley S. Gillam, Rome G. Brown, and

candle." Whiteley & Ruckman, all of Minneapolis,

12. In an incandescent lamp, the combiMinn., for defendant.

nation of the lamp bulb, a tungsten filament

therein, and a gaseous filling, the effective BOOTH, District Judge. This is a suit diameter of the filament being sufficiently for an injunction and for an accounting for large and the heat conductivity of the filling damages and profits for infringement of being sufficiently poor to permit the lamp to two patents. The present hearing is upon be operated with a filament temperature in a motion for a preliminary injunction, and excess of that of a vacuum tungsten lamp ophas been heard upon bill and answer and a erating at an efficiency of one watt per canlarge number of affidavits and exhibits. The dle and with a length of life not less than patents involved are United States patent that of such a lamp. No. 1,018,502, February 27, 1912 (applica- "13. An incandescent electric lamp having tion filed July 6, 1905), to General Electric a closely coiled tungsten filament, the coil Company for "incandescent bodies for elec- giving the effect of a filament of large diatric lamps," known as the Just and Hana- meter, an inclosing bulb and a filling of gas man patent, and United States patent No. having a materially poorer heat conductivity 1,180,159, April 18, 1916 (application filed than hydrogen and at a pressure as high or April 19, 1913), to General Electric Compa- higher than 300 millimeters of mercury, the ny for "incandescent electric lamp," known filament being adapted for operation in said as the Langmuir patent.

gaseous filling at a temperature higher than The claims of the Just and Hanaman that which it would have if operated in a patent are:

vacuum at an efficiency of one watt per can. “1. A filament for incandescent lights, dle.” consisting of tungsten in a coherent metallic Both patents have been repeatedly held state and homogeneous throughout.

valid—the Just and Hanaman patent in the 2. A filament for incandescent lights, Laco-Philips Case (C. C. A.) 233 F. 96; consisting throughout of substantially pure the Langmuir patent in the Nitro-Tungsten metallic tungsten of high fusing point and Case (D. C.) 261 F. 606, Continental Lamp electrically conductive, the light-emitting Case (C. C. A.) 280 F. 846, the Incandesproperties of the filament being due to the cent Products Case (D. C.) 280 F. 856, coherent, homogeneous metallic nature of the the Brite-Lite Company Case (D. C.) 290 F. tungsten.

967, the Nitrogen Electric Company Case "3. A filament for electric incandescent (D. C.) 292 F. 384; and both patents, in the rights, comprising dense, coherent tungsten Alpha Case (D. C.) 277 F. 290, same case metal, having its fusing point approximate- on appeal (C. C. A.) 280 F. 852, the Mally 3200° C. and capable of incandescent ef- lory-Save Cases (D. C.) 286 F. 175, Id. ficiency at the rate of less than one watt per (D. C.) 294 F. 562, same cases on appeal candle power and substantially free from (C. C. A.) 298 F. 579. perceptible disintegration at that efficiency.” [1] The rule to be applied in reference to

The relied upon claims of the Langmuir the issuance of a preliminary injunction in patent are:

cases of this character, has been laid down “4. The combination of a lamp bulb, a in this circuit in the case of Fireball Co. v. filling therein of dry nitrogen at a pressure Commercial Co., 198 F. 650, 653, 117 C. materially in excess of that corresponding C. A. 354, 357, as follows: to 50 millimeters of mercury and a filament "It is an incontrovertible rule of equity of tungsten of large effective diameter, the jurisprudence that where there has been a filament being thereby adapted for operation prior adjudication sustaining a patent and at a temperature higher than that which it an infringement thereof in the same or an. would have if operated in a vacuum at an other circuit, where the validity of the patefficiency of one watt per candle.

ent has been contested on full proofs, the Cir. 10 F.(20) 851 cuit Court should, upon a motion for a and Hanaman, patent and was before the preliminary injunction, sustain the patent court in the Mallory and Save Cases (D. C.) and leave the question of its validity to be 286 F. 175, 180; The Letang patent was determined upon the final hearing."

before the court in the Incandescent Products The same rule was adhered to in Wayne Case (D. C.) 280 F. 856; the Henry patent Co. v. Coffield Co., 209 F. 614, 126 C. C. A. was before the Circuit Court of Appeals in 608. The same rule prevails in other cir- the Mallory and Save Cases, 298 F. 579— cuits.

yet in all of these cases the Langmuir pat[2] It is contended, however, that there is ent was sustained. an exception to the above rule, where in the Fourth. The conclusion which it is sought later suit new matters are set up in defense. to have this court draw from the French Conceding that such exception exists, yet it court decision, is that the French court is must be qualified by the condition that the the only court thus far which has actually new matter must be of such character as to understood the Langmuir patent, and that lead the court in the later case to believe all of the other courts which have passed that, had the new matter been presented in upon it have failed to understand it. the former suits, the patent would have been Fifth. It further appears from the recheld invalid.

ord, in the case at bar, that the French court On the present hearing, most of the mat- decision was before the Court of Appeals ters bearing on the question of validity of of the Second Circuit, in the Mallory and the patents, have been the same, in sub- Save Cases, and it must be assumed that the stance, as those which have been considered decision received due consideration. in prior suits. In the interest of economy of [3] In view of the foregoing, I am unable time, such matters will not be here discussed. to accord to the French court decision such

Turning to the alleged new defenses as decisive value, at this time, as defendant outlined in the affidavit of counsel for de- claims for it. At most, it can at present fendant: One new matter to which atten- serve only to raise a doubt as to the validity tion is called is, a decision by the French of the Langmuir patent. court, Civil Tribunal of the Seine, under date Some of the so-called new defenses are of June 1, 1923, holding invalid the French merely renewed and enlarged expositions of patent procured by Langmuir in France, De patents or other matters already considered cember 20, 1913, No. 466,581, and covering, by the courts in the prior suits. For exit is claimed, the same invention that is cov- ample, the setting up of the German patent ered by the United States patent No. 1,180,- No. 154,262 to Just and Hanaman, which was 159.

considered in the Laco-Philips suit (C. C. This decision of the French court was A.) 233 F. 96, and in the Alpha suit (D. C.) based upon prior patents: Sinding-Larsen, 277 F. 290, and (C. C. A.) 280 F. 852; Kellner, Letang, and Henry.

and the setting up of the British patent No. In reference to this decision and its effect 20,277 to Siemens and Halske, which was upon the case at bar, it is to be noted: considered in the Laco-Philips Case and in

First. That the French Langmuir pat- the Mallory and Save Cases (C. C. A.) 298 ent is not before this court, and it cannot be F. 579. assumed that it is identical with the Lang- Another alleged new defense is that the muir patent here in suit.

construction placed upon the Just and HanSecond. The Kellner patent, on which the aman patent by the plaintiff makes it a patFrench decision is to some extent based, isent for mere result. This contention was not here in evidence before this court. Un- exploited in the Laco-Philips Case. der these circumstances, this court is not in Another alleged new defense is based a position to properly evaluate the French upon the Bottome patent, No. 408,286. This decision.

patent also was before the court in the LacoThird. All of the patents, Sinding-Lar- Philips Case. sen, Kellner, Letang, and Henry, have been Another alleged new defense is that Just before the courts in connection with litigation and Hanaman were not entitled to their respecting the Langmuir United States pat- French and British filing dates for priority ent. Sinding-Larsen was before the court purposes in this country, because they were in the Alpha Case (D. C.) 277 F. 290, and citizens of Austria-Hungary, and that counin the Nitro-Tungsten Case (C. C. A.) 266 try was not a member of the “Convention" F. 994; the Kellner patent was considered at that time. It appears from the record in in the Patent Office interference on the Just this case, however, that this defense was presented to the Circuit Court of Appeals on pe- vice, by changing its form, or by making it tition for rehearing in the Alpha Case, and more or less efficient, while he retains its again on petition to the Supreme Court for principle and mode of operation, and attains a writ of certiorari in the same case.

its result by the use of the same or of equivAnother alleged new defense is based alent mechanical means. Walker on Patupon evidence, said to be presented for the ents, $ $ 347, 348; Sewall v. Jones, 91 U. S. first time, “that the coiling of filaments in 171, 183, 23 L. Ed. 275; Coupe v. Weathervacuum tungsten lamps was begun immedi- head (C. C.), 16 F. 673, 675.” ately upon the advent of drawn tungsten [6] Without discussing the matter in furwire, and long before the filing of the Lang. ther detail, it is sufficient to say that on the muir patent." This matter, however, was present record infringement is in my judgexploited in the Nitro-Tungsten Case. ment clearly established, of the claims of the [4] It is thus seen that all of these so-called Just and Hanaman patent and of claims 4, new defenses are in reality old defenses, and, 5, 12 and 13 of the Langmuir patent. while some of them set up new matter along The defense that the plaintiff has conwith old, yet I am not persuaded that, had doned what it now claims to be an infringesuch new matter been presented to the courts ment, by the sale of lamp bases to the dein the prior suits, the decisions would have fendant, was considered and disposed of adbeen different. Though these alleged new versely in the Continental Lamp Works Case defenses, as well as the other defenses, con- (C. C. A.) 280 F. 846. cededly old, are all entitled to full consider- The motion for preliminary injunction is ation upon the final hearing, yet that fact granted. The form of the order, if not does not prevent the application of the above- agreed upon by the parties, may be settled quoted rule in regard to the issuance of pre- on five days' notice. liminary injunctions in this class of suits.

Motion To Strike Parts of Defendant's Infringement.

Answer. The evidence shows sales by the defend

At the bearing on the motion for preant of Save lamps which were held to be liminary injunction a motion was also made infringements in the Save suit.

by plaintiff to strike out divisions III, V, VI, The Melco lamps, No. 1129 and No. 81, and VIII of defendant's answer. The ground which defendant makes and sells, are, accord- alleged for the motion is that the facts set ing to the affidavit of Langmuir, "identical in forth in said divisions, respectively, do not structure, theory, and mode of operation with constitute a defense to the complaint, and the lamps of the patents in suit.”

that the facts set forth in division VIII do Defendant seeks to differentiate its lamps, not constitute a counterclaim cognizable in because of their short life. It is a matter

equity. of choice with defendant whether to have

These divisions of the answer set up, in short life and high efficiency, or longer life substance, that plaintiff has been guilty of and lower efficiency of its lamps. This is violating the Anti-Trust Laws of the Unitclearly shown by Langmuir in his affidavit. ed States (Comp. St. § 8820 et seq.); that A change in the voltage used, or change in the it is engaged in a conspiracy to monopolize length of the filaments used are not such dif- the entire business of the manufacture and ferences as go to the principles and therry of sale of electric lamps; that as a part of said the inventions of the patents in suit. Nor are conspiracy it has engaged in efforts to dethey such differences as will avoid infringe- stroy defendant's business by refusing to ment.

sell lamps to defendant, and by canceling a [5] The use of the thoriated drawn tungsten contract once existing between them. wire as an avoidance of infringement was [7] It is well settled that the mere fact that considered in the Alpha suit and in the Mal- a party may be guilty of violating the Antilory and Save suits. It was held that the Trust Laws will not deprive him of his right use of thoria was for purely mechanical rea- to maintain a suit for injunction on account

The evidence on the present hearing of infringement of a patent owned by him. appears to support such holding. The rule Brown Saddle Co. v. Troxel (C. C.) 98 F. laid down in Lourie Implement Co. v. Len- 620; Virtue v. Creamery Package Mfg. Co., hart, 130 F. 122, 129, 64 C. C. A. 456, 463, 179 F. 115, 102 C. C. A. 413. is applicable:

[8] The maxim, “He who comes into equity “One may not escape infringement by must come with clean hands," applies only adding to or subtracting from a patented de- to cases where the unconscionable conduct

sons.

10 F.(2d) 851 of the plaintiff is directly connected with the tion for an injunction to arise in favor of an subject-matter of the suit. The maxim does individual against a violator of the Antinot mean that the general conduct of a Trust Act, as amended by the Clayton Act plaintiff must have been above reproach, nor (Comp. St. § 8835a et seq.) (see General Ineven that the plaintiff's conduct towards the vestment Co. v. Lake Shore Railway, 260 U. defendant as to other matters must have been S. 261, 287, 43 S. Ct. 106, 67 L. Ed. 244), fair and equitable. Langley v. Devlin, 95 yet the allegations in the defendant's counWash. 171, 163 P 395, 4 A. L. R. 32, note, terclaim in the instant case are not sufficient 44, 65; Talbot v. Independent Order of to constitute such an equitable cause of acOwls, 220 F. 660, 136 C. C. A. 268; Bent- tion. ley v. Tibbals, 223 F. 247, 138 C. C. A. 489; Apart from the alleged breach of conTrice v. Comstock, 121 F. 620, 628, 57 C. tract and the alleged cancellation of conC. A. 646, 61 L. R. A. 176; American Sugar tract, the whole grievance set forth in the Refining Co. v. McFarland (D. C.) 229 F. counterclaim seems to be that defendant is 284.

being deprived, by plaintiff, of the oppor[9] If plaintiff has been guilty of violating tunity of selling the lamps manufactured by the laws of the United States, there are rem- plaintiff, which plaintiff claims are covered edies which may be pursued by the proper by the patents in suit; and that this deprivaparties in interest. If plaintiff has commit- tion has been brought about by plaintiff's reted breach of a contract with defendant, fusal to have further business relations with whether of agency or sale, or has wrongfully defendant relative to the sale of such lamps. canceled such a contract with defendant, or But no facts are set forth showing that committed a tort against defendant, remedies defendant has the right to force plaintiff inexist which are available for the defendant; to such business relations; on the contrary, but none of such acts of the plaintiff, even the allegations of the counterclaim, assuming if they were committed, are so directly con- them to be true, show that defendant is not nected with the plaintiff's right, which it is entitled to the equitable relief asked, to wit: now seeking to protect and enforce in the (1) That plaintiff, be enjoined “from refusinstant suit, as to make applicable the above ing to sell electric lamps to defendant upon quoted maxim.

the same terms and conditions as it sells to Division VIII of the answer sets up also any other dealer or agent; (2) that plaintiff a counterclaim. As a pleading, this counter- be enjoined "from refusing to grant to declaim can hardly be called artistic. It gath- fendant a license upon proper and lawful ers together by reference all of the preceding terms and conditions to use said patents heredivisions of the answer, and makes them in in suit, in case the same are herein found part of the counterclaim. It then adds two to be valid.” new paragraphs and a prayer for relief. As to the first prayer for relief, it is to

There is thus thrown into this counter- be noted that defendant has alleged in its claim, a great mass of allegations which has counterclaim that plaintiff is in reality makno proper place in the cause of action which ing sales of its lamps to dealers through its the defendant is apparently trying to set up. so-called "agency contracts,” and that these Part of the prayer for relief would indicate agency contracts are illegal and void; yet that this cause of action is equitable; anoth- defendant asks as relief that it be given the er part would indicate a legal cause of action. right of purchasing from plaintiff on the

After considerable study, I have reached same (illegal) terms and conditions as other the conclusion that, if any cause of action so-called agents. can be spelled out of the counterclaim, it is [10] Defendant can have no valid cause of one which is legal in its nature; one grow- action to compel plaintiff to make with it an ing out of an alleged breach, or out of an al- illegal and void contract, even though plainleged cancellation of a contract formerly tiff has heretofore made many such contracts existing between the parties.

with other people. No contractual relations are alleged to The allegations of the counterclaim, asexist between plaintiff and defendant at the suming them to be true, also show that depresent time, so that no specific performance fendant is not entitled to the second equitacan properly be prayed for. The contract, ble relief prayed for. which it is claimed was wrongfully canceled, It is alleged at great length in the counwould have expired by its terms long before terclaim that both the Just and Hanaman the commencement of this suit.

patent and the Langmuir patent are illegal Though it is possible for a cause of ac- and void; if this be true, no license is neces

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