Sustaining Nikola Tesla Patent on Appeal

The United States Circuit Court of Appeals at Boston on September 9 handed down a decision in the case of Westinghouse Electric & Manufacturing Company vs. Stanley Instrument Company, reversing the judgment of the Circuit Court, which dismissed a bill brought with a view to prevent alleged infringement of patents issued to Nikola Tesla relating to conversion of alternating currents of electricity into a continuous current. The lower court dismissed the bill on the ground that complainant had failed to establish by sufficient proofs a conception of the invention by Tesla prior to April 22, 1888, the date of a certain publication in Italy known as the Ferraris publication. Complainant appealed, and the Appellate Court sustains the appeal, remanding the case to the Circuit Court with a direction to enter a decree for plaintiff for an injunction against defendant restraining the latter from infringing the patents, numbered respectively 511,559 and 511,560, and for an accounting.

Defendant had contended that the alleged invention was not addressed to the utilization of two-phased currents in a motor, but to a new way of producing the necessary two out-of-phase currents; that this specific way of producing two out-of-phase currents was old and well known in the art, and was old and well known as an equivalent of the method in a prior patent; that all the methods of producing two or more out-of-phase alternating currents set out in the Tesla patents were, in and of themselves, old and well known in the art as means and methods of producing such out-of-phase currents; and that their laws and limitations had been known and set out in a way not even approximated in accuracy or fulness in any of the Tesla patents. Respondent further maintained that Dr. Kenney had explained the fact that the invention in the patents involved merely the substitution of one means of obtaining two-phase currents for another means; and that he showed that these two means were old and well known equivalents.

The Court says in regard to the contention: "Of course all this was with the purpose of maintaining that there was no invention. in any view of the patents now in issue. It unavoidably concedes, however, that, if there were invention, it was fundamental. When under special circumstances a particular practical application of a known principle proves to be of advantage in the arts, and yet the thought of making it had not occurred to those expert therein, such application, at times, involves invention. The corollary of this proposition, which we will apply later, is that, in cases of this character, where the originator has boldly struck out into a practical application, and stated it, though only in general terms, he has, for the most part, made his conception clear, even though the mechanical details have not been expressed or thought out. Therefore Professor Main was right in testifying that, if Tesla made clear his conception in a general way, he made clear his invention, leaving the artisan skilled in electrical science to work out the practical details required in applying what was previously within the bounds of philosophical knowledge.

"With reference to the apparent lack of supporting proof on the part of complainant which has been very much pressed against it, it must be conceded, as is apparent from the general tone of the record and from the way in which the case has been developed before us, that the patent was long acquiesced in. It is also certain that an interference was declared between Ferraris and Tesla and decided in favor of the latter. The difficulty which pressed itself upon us on the question of infringement grows out of the fact that the amount of power used by respondent is very minute. Nevertheless it is power developed, as set out by Blathy's claims, by 'a metallic rotating body,' and transmitted to a 'suitable counting apparatus, operated by the same rotating body.' If the device stopped with 'a metallic rotating body' and some method other than a counting machine operated by it was used for determining the number of its revolutions, we might not be able to charge respondent with infringing. We might then well apply the proposition of respondent that a mere meter is in a different art from a motor, but as it does not stop there we must look further. The Tesla invention, in issue, as already explained by us, derives its right to recognition from the fact that it was applied to the production of power. The ingenuity of Tesla was displayed in the conception of an adaptation to a particular use."