Friday, March 10, 2006

Injunctions, eBay, and Thomas Edison

Every one of the manufacturing corporations, the competitors of XXXX, commenced their operations with a knowledge of the existence of the patent in suit. They were controlled by business men of intelligence and experience. Their promoters and managers may have believed, and probably did, that the patent could not be successfully maintained; but they entered upon the business with an understanding of its risks, and of the consequences which would befall them as infringers, if the patent should be sustained. None of them can now be justly heard to say that an injunction which is essential, if not indispensable, to the protection of the owners of the patent and their licensees ought not to be granted because of the great pecuniary loss which may result.

Sounds like RIM facing NTP, or maybe eBay facing MercExchange, dealing with patent law in the 21st century. Nope. It's the Second Circuit Court of Appeals speaking of SAWYER-MAN ELECTRIC in 1892, after getting clobbered by Thomas Edison's US Patent No. No. 223,898, granted January 27, 1880.

But the story is more complicated than the Second Circuit indicated in 1892. From the internet:

An English gentleman (Joseph Swan) patented a similar light bulb in England a few months before Edison and other light bulb development considerably predated that. In fact, on October 8, 1883 the US Patent Office ruled that Edison’s US Patent was invalid due to prior art by William Sawyer. (...) By 1889, 10 years after the patent, there were only 710 customers. The problem was that electricity and its support infrastructure cost too much and, of course, had to be installed. Ten more years later, after electricity costs had come down, there were 3 million customers and all the basic light bulb patents had expired. (...) Seven years, and more than $100,000 in litigation expenses after Edison’s patent was invalidated by the US Patent Office, on October 6, 1889, a judge ruled that the electric light improvement claim for "a filament of carbon of high resistance" was valid. Unfortunately further research exposed in A Streak of Luck by Robert Conot (1979), also shows that Edison and his attorneys hid significant information from the judge. They cut out the October 7-21, 1879 section of a notebook that the judge might have determined showed that they were simply extending Sawyer’s (or Swan’s) work with carbon "burners" or "rods" in an evacuated glass bulb. (...) In fact, Edison and his team did not find a commercially workable filament (bamboo) until more than 6 months after Edison filed the patent application. [IPBiz: the USPTO action mentioned is presumably the interference, Sawyer and Man v. Edison (1881 - lamp filament [U.S. Patent No. 223,898]); note also the earlier post about Alexander Graham Bell establishing viable telephone only after he obtained his patent.]

The 1892 court case mentions:

This company was the owner of and operated under what are known as the "Sawyer-Man Patents" for electric lighting apparatus; and under these patents it assumed that it had the exclusive right to make and sell the lamp claimed in the patent in suit. In May, 1885, suit was brought against it by the Edison Electric Light Company upon the patent in suit, and about the same time it brought suit against the Edison Company for infringement of its own patent.

In 1885, when the companies were fighting over the competing patents, there were few customers. By 1892, the year of the court case, the company we know as General Electric was formed.

In 1895, the US Supreme Court took a related case, CONSOLIDATED ELECTRIC LIGHT CO v. MCKEESPORT LIGHT CO, 159 U.S. 465 (1895) Text therein is also of significance to today's problems:

Is the complainant entitled to a monopoly of all fibrous and textile materials for incandescent conductors? If the patentees had discovered in fibrous and textile substances a quality common to them all, or to them generally, as distinguishing them from other materials, such as minerals, etc., and such quality or characteristic adapted them peculiarly to incandescent conductors, such claim might not be too broad. If, for instance, minerals or porcelains had always been used for a particular purpose, and a person should take out a patent for a similar article of wood, and woods generally were adapted to that purpose, the claim might not be too broad, though defendant used wood of a different kind from that of the patentee. But if woods generally were not adapted to the purpose, and yet the patentee had discovered a wood possessing certain qualities, which gave it a peculiar fitness for such purpose, it would not constitute an infringement for another to discover and use a different kind of wood, which was found to contain similar or superior qualities. The present case is an apt illustration of this principle. Sawyer and Man supposed they had discovered in carbonized paper the best material for an incandescent conductor. Instead of confining themselves to carbonized paper, as they might properly have done, and in fact did in their third claim, they made a broad claim for every fibrous or textile material, when in fact an examination of over 6,000 vegetable growths showed that none of them possessed the peculiar qualities that fitted them for that purpose. Was everybody, then, precluded by this broad claim from making further investigation? We think not.

The implication noted above about Edison's failure to disclose bamboo in his patent seems to be correct. Inspection of the patent the second page, first column, lines 30ff shows no mention of bamboo in the list of materials for the filament.

This when one reads of a discussion of the 1895 case by Merges and Nelson:

Edison pointed to his own painstaking experimentation with a wide variety of materials, arguing that his discovery that a particular part of a variety of bamboo plant performed well as a filament was not made any easier by Sawyer & Mann's disclosure.

one notes that the discovery of the use of bamboo is not disclosed in Edison's US 223,898. The statement of Merges/Nelson stems from the text of the 1895 case.

Merges/Nelson also state:

One older case with a similar holding is Edison Elec. Light Co. v. Boston Incandescent Lamp Co., 62 F. 397 (C.C.D. Mass. 1894). Here the court found that since Edison's patent was for a pioneering invention, it was entitled to a broad construction, which included finding that after-developed technology was equivalent to that specified in the claims.

Separately, there is an obvious relationship of the 1895 case to University of Rochester v. Searle over COX-2 inhibitors.


Blogger Spousal Unit said...

Found this to be very interesting. The distinctions between Edison's execution of the concept and Swan's seem miniscule, yet Edison receives all the credit.

I suppose it's the power of personality and PR.

12:58 PM  

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