Thursday, April 16, 2015

Antecedents to the CRISPR interference saga: Edison vs. Sawyer and Man

The MIT Tech Rev, in a post on CRISPR, wrote

Interferences have helped to decide control over some of the most lucrative inventions ever, including the telephone, the sewing machine, and television. In 1885, a competitor managed to strip Thomas Edison of a patent on a lightbulb with a paper filament, although by that time Edison had invented a better one.




This file contains records relating to the case of Sawyer and Man v. Edison, which involved conflicting claims over the incandescent lamp. The Patent Office had declared an interference in September 1880 between Edison's application for a patent on an electric lamp with a filament composed of carbonized paper and an application filed by William E. Sawyer (d. 1883) and Albon Man (1826-1905) in January 1880. After a hearing, the Examiner of Interferences awarded priority of invention to Sawyer and Man in January 1882. A second hearing, ordered by the Commissioner of Patents, returned the same decision in June 1883. The Board of Examiners-in-Chief overturned that ruling on appeal on July 28, 1883, awarding priority to Edison. That decision was appealed to the Commissioner of Patents and reversed on October 8, 1883. After additional legal wrangling, U.S. Patent 317,676 was finally granted to Sawyer and Man in May 1885. Edison claimed that the outcome was immaterial because he no longer used filaments of carbonized paper, and the broader claims of Sawyer and Man, which would have covered all carbonized fibrous filaments, failed to withstand a long court battle over Edison's carbon-filament lamp patent (U.S. Patent 223,898).


**Separately, from LBE,  Edison as a Patent Troll, or Where is California Going in Stem Cell Research?


Although not widely discussed, the application for Edison's famous US Patent No. 223,898, granted January 27, 1880, was involved in an interference with competing inventors Sawyer and
Man and Edison lost on the contested point.
Following up, the successors to Sawyer and Man challenged Edison's patent. The basic claim of Edison read: An electric lamp for giving light by incandescence, consisting of a filament of carbon of high resistance, made as described, and secured to metallic wires, as set forth. The trial court noted that Edison "was the first to make a carbon of materials and by a process which was especially designed to impart high specific resistance to it; the first to make a carbon in the special form for the special purpose of imparting to it high total resistance; and the first to combine such a burner with the necessary adjuncts of lamp construction to prevent its disintegration and give it sufficiently long life." The trial court also noted, somewhat
cryptically, "There are many adjudicated cases in which it appears that the inventor builded better than he knew; where a patent has been sustained for an invention the full significance of which was not appreciated by the inventor when it was made. In the case of the Bell telephone patent there was great room for doubt whether the speaking telephone had been thought of by Mr. Bell when he filed his application for a patent, but the court said: 'It describes apparatus which was an articulating telephone, whether Bell knew it or not.'" Edison's patent survived. A problem with the court's analysis is that the distinctly long life of Edison's filaments arose from the use of
bamboo, which was not disclosed in Edison's patent.
In a case that went all the way to the Supreme Court, the relevant patent of Sawyer and Man, asserted against the interests of Edison, did not survive. The first claim of U.S. Patent No.
317,076 (related to patent 205,144 ) read: An incandescing conductor for an electric lamp, of carbonized fibrous or textile material and of an arch or horseshoe shape, substantially as
hereinbefore set forth. The Supreme Court noted: "It is admitted that the lamp described in the Sawyer and Man patent is no longer in use, and was never a commercial success; that it does not
embody the principle of high resistance with a small illuminating surface." Getting to the broadness of the Sawyer/Man claim, the Supreme Court stated: "But if woods generally were not adapted to the purpose, and yet the patentee had discovered a wood ossessing 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 court further noted that Sawyer/Man "made a broad claim for every fibrous or textile material, when in fact an examination of over six thousand 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 court noted that Edison "found suitable for his purpose only about three species of bamboo." After discussing the amount of work Edison did with bamboo, the court asked: The question
really is whether the imperfectly successful experiments of Sawyer and Man, with carbonized paper and wood carbon, conceding all that is claimed for them, authorize them to put under
tribute the results of the brilliant discoveries made by others."The court brought up the "infringement if later, anticipation if earlier" argument: "if the patent were infringed by the use of any such material, it would be anticipated by proof of the prior use of any such material."
Although the Supreme Court did not address the issue, there were allegations by Edison at trial that Sawyer/Man had amended their application to conform to Edison's work: "no such invention
was set forth in the original application, but was introduced for the first time more than four years after it was filed, and after the same material had been used by Edison, and claimed by
him in an application for a patent." The trial court agreed, saying "after Edison's inventions on this subject had been published to the world, there was an entire change of base on the part of Sawyer and Man, and that the application was amended to give it an entirely different direction and purpose from what it had in its original form .... [Testimony] shows that the idea of claiming carbons made from fibrous and textile materials was an after-thought, and was no part of the purpose of the original application."
Of the issue of inventorship, text within the court cases manifests diffidence as to whether Edison was, or was, not the inventor of the light bulb.

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