GENERAL ELECTRIC CO. v. MORGAN-GARDNER ELECTRIC CO., 168 F. 52

BAKER, Circuit Judge (after stating the facts as above). In General Electric Co. v. Garrett Coal Co., 146 Fed. 66, 76 C. C. A. 528, the claims here in suit were held valid and infringed by the device used by the Garrett Coal Company and manufactured by appellee. Some additional prior patents, without explanation or discussion by experts, have been put into the present record. Our examination of them leads us to conclude that the best possible exhibition of the prior art was made in the Garrett Coal Company record, which constitutes the substantial part of the record in this case.

On the issues of patentable novelty- and infringement, we deem it unnecessary to do more than express our concurrence in the views of the Circuit Court of Appeals' for the Third Circuit. In a supplemental bill herein, filed after the final decree was entered in the Garrett Coal Co. Case, appellant alleged that appellee “defended that suit on behalf of the Garrett Coal Company, paid the expenses thereof, and was in fact the real defendant therein; the Garrett Coal Company being simply the nominal defendant.” Appellee denied the charge.

While the proofs show that appellee paid an attorney who appeared for the Garrett Coal Company and defended the.suit, and that, at the conclusion of the litigation, appellee paid a part or possibly all of the court costs, there is np-proof that the attorney was not under the exclusive direction and control of the Garrett Coal Company, or that appellee had any standing except as an interested and sympathetic nonparticipant. The question that has been most strenuously contested here has to do with the scope of the original application.

The invention, so far as it is covered by the claims in suit, consists in the means and method of changing from series to multiple by shunting one of the motors, while protecting the other by resistance in series with it, and then breaking the circuit of the shunted motor and arranging it in parallel with the other. The claims in suit were not filed with the- original application. They were submitted later by the applicants through their attorney.

As these claims were not supported by a new verification, appellee insists that the Patent Office had no warrant in law to allow them, because “the invention’ claimed is substantially different from-any indicated, suggested, or described in the original application.” The-applications were substantially alike. Excerpts, quoted in the statement, include the portions of the application for the method patent on-which the respective arguments of the parties are based. The drawings in the original applications (copied in 146 Fed., at page 68, and in 76 C. C.

A., at page 530) indicate that, in changing from series to-multiple, when one motor is shunted, the other is protected by resistance in series with it. In describing the step by step changes the applicants said: “At the fourth step the two combinations shown in Figs. 5 and 6 are produced.” And these figures point to the characteristic feature of the claims in suit. Referring to the circuits at different stages, applicants make it clear that in Fig. 22 one motor is shunted and the other is protected from the full current by means of an external resistance.

In the concluding paragraph they said: “The object of reinstating the resistance” (during the steps shown in Figs. 5 and 6) is to have the resistance “taire the place for a short period of the short-circuited (shunted) motor and preserve the other motor from being injured by a sudden excess of current.” Against these statements, relied on by appellant, appellee lays stress. on the applicants’ declaration, “We accomplish this (change from series to multiple by our step by step method) without the use of external means such as a circuit breaker or resistance to interrupt or substantially reduce the current while the change is Deing made.” • In the face of the-disclosures in the drawings, in the specific account of the successive steps to be taken, in the detailed description of the course of the circuits, and in the stated reason for using resistance - while shunting the one motor, appellee insists that in the above quotation the applicants asserted that they accomplished their new result without the use of resistance.

If a period is to be placed after “resistance,” appellee could as well claim that the applicants expressly disclaimed the use of a “circuit breaker.” To us it seems that the applicants, instead of stultifying themselves by saying at one place that they did not use resistance and in another that they did and why they did, were broadly distinguishing their method from those of the prior art.

One of the earlier methods was to employ enough resistance “so that there should be no current passing while the change was being made.” Applicants said in effect that in their method they do not employ resistance in order to interrupt or reduce the current while the change is being made, but do employ it only for the purpose of protecting the unshunted motor.

The original claims, as appellee points out, did not call for the use of resistance, and original claim 10 covered the change from series to multiple “without interrupting or reducing the current by external means.” Original claims 1 and 10 indicate to us that the applicants belietmd themselves entitled broadly to a monopoly of the method of changing from series to multiple by shunting one of the motors, then breaking the circuit of the shunted motor, and then arranging'it in parallel with the other motor, irrespective of whether the unshunted motor was protected by external resistance or not; and, since the drawings and specification pointed out clearly the desirability of external resistance for the unshunted motor while the change was being made, we think it was competent for the applicants through their attorney to file the narrower claims in suit without an accompanying affidavit.

Hobbs v. Beach, 180 U. S. 383, 21 Sup. Ct. 409, 45 L. Ed. 586. Appellee refers to a record of an interference between the applicants and one Eamme. The issue was with respect to the subject-matter of the applicants’ original claim 1. Appellee cites the testimony given by the applicants in that proceeding as indicating that the use of resistance in protecting the unshunted motor was no part of their invention. Original claim 1 by its terms was not restricted to the use of external resistance for the protection of the unshunted motor while the other was in shunt. The testimony was directed to the issue.

The applicants did not testify (and we are not referred to any question that was propounded to them on the subject) that their verified original application was untrue. Passing the question of competency, we find nothing ir their testimony that conflicts with our construction of their application The decree is reversed, with the direction to enter a decree in appel lant’s favor for an injunction and an accounting.