Saturday, March 24, 2007

Merges/Nelson on Edison

Relevant to discussion of Edison and the light bulb, the relevant text of the 1990 paper by Merges and Nelson, 90 Colum. L. Rev. 839, is:

In 1895, Thomas Edison brought a Supreme Court challenge to a very broad patent held by Sawyer and Mann for materials used in light bulb filaments. n43 The patentees had found that carbonized paper worked as an effective light-emitting conductor in light bulbs. Based on this invention, they filed a patent claiming the right to use all carbonized fibrous or textile material as an incandescing conductor. n44 Edison challenged Sawyer and Mann, contending that the claim was too broad: it did not indicate which of the thousands of "fibrous or textile material[s]" would work as conductors in light bulbs, since most do not. Nor did it describe any method for finding out. In effect Edison argued that all Sawyer and Mann had invented was a carbonized paper [*850] conductor for use in a light bulb, not a broad class of materials. 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. The Court agreed, stating that "[i]f the description be so vague and uncertain that no one can tell, except by independent experiments, how to construct the patented device, the patent is void." n45 The patent would have been upheld, the Court suggested, if it had claimed only what Sawyer and Mann had actually invented (carbonized paper incandescence); it was invalid, however, since it would take a good deal of additional experimentation to determine whether incandescing conductors could be made out of the many materials they claimed. n46

[IPBiz notes that the irony here is that Edison's 1880 patent does NOT mention bamboo, either. Thus, Edison also could have said that his discovery that a particular part of a variety of bamboo plant performed well as a filament was not made any easier by Edison's 1880 disclosure].

**Footnote 52 mentions Edison:

In some cases a process patent can be broader than a product patent. For example, a patentee might claim a process for making products A through E; this would be broader, in some sense, than a product patent on product A only. Even here, however, the product patent has advantages, due to the patent principle that a product patent covers a product no matter how it is made. See Amgen, 706 F. Supp. at 107, 9 U.S.P.Q. 2d at 1844. Perhaps if patent scope were more effectively circumscribed by the enablement doctrine, in many of these cases process patents would be granted rather than product patents. Consider the situation where an inventor comes up with a significantly better process for making a chemical product, but the inventor of the earlier process holds a product patent. One might think that an Edison-like argument that the disclosure of the earlier product patent was no help whatsoever towards the discovery of the new process might carry weight, but in the case of chemical patents it often has not. This doctrine is now taking root in the related field of biotechnology patents, where a product produced by Genentech using recombinant DNA technology was recently found to infringe a patent covering the product, even though the recombinant version of the product was much simpler and cheaper to prepare. See also id. at 110, 9 U.S.P.Q. 2d at 1846-47 (product patent on erythropoietin covers recombinantly-produced version of the protein).

**Footnote 81 states:

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. Id. at 398; see also 4 D. Chisum, supra note 45, ยง 18.04 [4] (discussing Laser Alignment and other cases involving new or unknown equivalents). Note that in each of these cases the after-developed technology might have been eligible for improvement patent. As mentioned earlier, this does not change the infringement analysis. But it could have given the accused infringer some leverage in bargaining with the holder of the underlying patent.

**Footnote 141 states:

The transition from entrepreneur to established, cautious firm can be breathtakingly fast. An historian who studied the beginning of the electrical lighting industry in the U.S. pointed out that in ten years, Thomas Edison moved from a maverick trying to get incandescent lighting accepted as feasible to a staunch opponent of the "dangerous" innovation of alternating current. H. Passer, The Electrical Manufacturers 1875-1900, at 174 (1953). [IPBiz notes that this is an idiotic comment. Edison always was using DC. His vision was of localized power supplies distributing over a small network.]

There is much more at stake regarding allowed patent scope in these cumulative technologies than in those where inventions are discrete and stand separately. Particularly when the technology is in its early stages, the grant of a broad-gauged pioneer patent to one party may preclude other inventors from making use of their inventions without infringing the original patent. Two such examples are the Selden patent, which was used to control the development of automobiles, and Edison's successful attack on a broad patent covering light bulb filaments. n182 Thus, a broader pioneer patent may give one party legal control over a large area. Alternatively, in multicomponent products, broad patents on different components held by several inventors may lead to a situation in which no one can or will advance the technology in the absence of a license from someone else. As we shall see, these are not just theoretical possibilities; they describe the development of several important technologies.

Patents played a very important part in this industry from the beginning. In the field of incandescent lighting, Edison's early patent gave his company, later General Electric, a dominant position. But in certain other sectors, most notably arc lighting and the production of dynamos, efforts to establish dominance via a single broad patent failed. The contrast between these sectors, where entry was easy and competition for improvements was intense, and the incandescent lighting field is noteworthy for our purposes. Most importantly, the history of the early electrical industry supports the notion that broad pioneering patents can play a pivotal role in the evolution of industry structure.

No single patent better illustrates this than Edison's U.S. Patent 223,898, issued in 1880. This was "the basic patent in the early American incandescent-lamp industry," covering the use of a carbon filament as the source of light; n191 it proved to have a profound effect on the industry until it expired.

Although the Edison General Electric Company had some difficulty establishing the validity of its basic patent, once it did the industry changed drastically. In 1891, U.S. Patent No. 223,898 was held valid and infringed by a competing design. n192 General Electric officials then quickly obtained a series of injunctions that shut down a number of competitors. n193 [IPBiz notes this is the 11th year of what would be a 14 year patent.] As the aptly-named industry historian Arthur Bright stated, "For twelve years [after the issuance of the 223,898 patent] competition had been possible; it suddenly became impossible." n194 The company's market share grew from 40 to 75 percent; entry into the industry slowed from 26 new firms in 1892 to 8 in 1894, the last year of [*886] the patent's life; n195 and the steady downward trend of lamp prices slowed until the patent expired. n196

More importantly for our purposes, the validation of Edison's broad patent slowed the pace of improvements considerably.

Even as the courts were passing on the Edison lamp patent in 1891, the Edison General Electric Company . . . . [recognized that it] gradually had been slipping backward in its commercial position, particularly since 1886 . . . . Its technological contributions were becoming relatively smaller than they had been during the early [eighteen] eighties. n197

This was especially true in Great Britain, where the Edison Company's patent position was even more commanding, due to its control of a basic patent on a process for producing carbon filaments. A series of court victories over its largest competitors gave the British "Ediswan" company "a practical monopoly of incandescent-lamp production." n198 [IPBiz note: Swan's patent preceded Edison's.]

Given the lack of competition, it is perhaps not surprising that the pace of technical advance slowed. According to the historian Bright:

After the introduction of the incandescent lamp and its first rapid changes . . . . the Edison Electric Light Company did not introduce many important new developments. Edison himself turned to other problems, and the company's technical leadership in incandescent lighting was not revived until after the merger [that formed General Electric in 1896]. n199

Prior to the enforcement of the patent, Edison's competitors were quickening the pace of technical advance:

Despite the improvements in the Edison lamp, a number of its competitors had improved their lamps even more rapidly . . . . Efficiency advantages permitted many of the other American concerns to compete very successfully with the Edison lamp after 1885 . . . until the corporate reorganizations and the establishment of patent supremacy regained for the Edison lamp commercial supremacy as well. n200

The same was true overseas: "In England, filament improvement was almost entirely halted during the period of Edison patent monopoly [*887] from 1886 to 1893." n201 Bright concludes:

The lengthy and expensive patent struggle in the lamp industry from 1885 to 1894 was a serious damper on progress in lamp design, although process improvement continued. The Edison interests concentrated on eliminating competition rather than outstripping it. . . . After 1894, when it was no longer protected by a basic lamp patent, General Electric devoted more attention to lamp improvement to maintain its market superiority. n202

Thus the broad Edison patent slowed down progress in the incandescent lighting field. The lesson, however, is not that this patent should not have been granted. It is rather a cautionary lesson: broad patents do have a significant impact on the development of a technology and hence on industry structure, and this should be reflected in those doctrines that collectively determine patent scope.

******Wright Brothers***

We move now to two infamous cases regarding pioneer patents: the Selden patent in the development of automobile technology, n210 and the Wright patent's influence on the growth of aircraft technology. As we have seen, the Selden patent claimed a basic automobile configuration, one using a light-weight internal combustion engine as the power source. The Wright patent was on a broadly defined airplane stabilization and steering system. In both of these cases, the holders of the pioneer patent engaged in extensive litigation against companies that did not recognize the patent, n211 and [*889] the Wrights refused to license theirs. n212 Our question is how the presence of these patents affected the evolution of the technologies.

The Wright brothers patent is different in a number of regards. First of all, the achievement described in the patent -- an efficient stabilizing and steering -- system was in fact a major one, and it did enable a multiplicity of future flying machines. n219 Second, the Wright brothers were very interested in producing aircraft and in improving their design, and they did so actively. However, there were other important people and companies who wanted to enter the aircraft design and manufacture business. They had their own ideas about how to advance the design of aircraft, and they strongly resisted being blocked by the Wright patent. In this case, and others, it turned out to be extremely difficult to work out a license agreement that satisfied both the holder of a broad patent and an aggressive potential competitor who believed that there was a lot of his own work in his design. The early attempts by the Wright Brothers and Glenn Curtiss, who was the most prominent such potential competitor, came to naught. Litigation followed. n220

There is good reason to believe that the Wright patent significantly [*891] held back the pace of aircraft development in the United States by absorbing the energies and diverting the efforts of people like Curtiss. The aircraft case is similar to that of automobiles in that the problems caused by the initial pioneer patent were compounded as improvements and complementary patents, owned by different companies, came into existence. The situation was so serious that at the insistence of the Secretary of the Navy, during World War I, an arrangement was worked out to enable automatic cross licensing. n221 This arrangement, like the licensing of automobile patents, turned out to be a durable institution. By the end of World War I there were so many patents on different aircraft features that a company had to negotiate a large number of licenses to produce a state-of-the-art plane. n222

The Wright brothers, for example, received an important and well-deserved pioneer patent on airplane stabilization. This created problems because other inventors such as Glen Curtiss, following close on the heels of the Wrights, were blocked for a time from introducing their advances into the fledgling industry.


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