Tesla Patents Upheld in Stanley Instrument Case

An opinion was handed down September 9th by the Circuit Court of Appeals for the first circuit in the case of the Westinghouse Electric and Manufacturing Company, complainant and appellant, against the Stanley Instrument Company, defendant and appellee, known as the "Stanley instrument case," the case having been appealed from the United States Circuit Court for the District of Massachusetts. The Court of Appeals reversed the decree of the lower court, which was in favor of the defendant. The opening and closing paragraphs of the opinion of the court, written by Judge Putnam, are of interest, and are here given: There is so much judicial literature bearing on this case that only a brief preliminary statement is required. The bill alleges an infringement of the two claims of letters patent for an invention, No. 511,559, issued to Nikola Tesla on December 26, 1893, on an application filed on December 8, 1888, and of the first claim of No. 511,560, issued to Tesla on the same December 26th, on an application filed on the same December 8th. No. 511,559 is captioned "Electrical Transmission of Power," and opens with the statement that Tesla had invented "certain new and useful improvements in electrical transmission of power." No. 511,560 is captioned "Systems of Electrical Power Transmission," and opens with the claim that Tesla had invented "certain new and useful improvements in systems of electrical power transmission." The claims of No. 511,559 are as follows:

"1. The method of operating motors having independent energizing circuits, as herein set forth which consists in passing alternating currents through both of the said circuits and retarding the phases of the current in one circuit to a greater or less extent than in the other.

"2. The method of operating motors having independent energizing circuits, as herein set forth, which consists in directing an alternating current from a single source through both circuits of the motor and varying or modifying the relative resistance or self-induction of the motor circuits and thereby producing in the currents differences of phase, as set forth."

The claim of 511,560 in issue is as follows:

"1. The combination with a source of alternating currents, and a circuit from the same, of a motor having independent energizing circuits connected with the said circuit, and means for rendering the magnetic effects due to said energizing circuits of different phase and an armature within the influence of said energizing circuits."

The bill was dismissed by the Circuit Court by an opinion passed down on March 11, 1903, 129 Fed. Rep., 140. The only reason for dismissal given was that the 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. The opinion refers to one of the Circuit Court of Appeals for the second circuit, Westinghouse Company vs. Catskill Company, 121 Fed. Rep., 831, passed down on February 25, 1902, wherein it was held that the proofs were insufficient to establish invention by Tesla prior to April 22d, as rendering unnecessary an extended statement by himself. Thereupon, the complainant appealed to us.

The patents in suit relate to the conversion of alternating currents of electricity into a continuous current. The latest condition of the prior art is shown by patents issued to Tesla under date of May 1888, referred to over and over again in the official literature on this topic. These describe a system "of electrical power transmission in which the motor contains two or more independent energizing circuits through which were caused to pass alternating currents," "conveyed directly from the generators to the corresponding motor coils by independent lines or circuits." The improvement of the patents in suit dispenses with one of the lines, or circuits.

It is not necessary for us to discuss whether what Tesla applied his inventive ability to was a "great engineering problem," as described by plaintiff; but it was a problem practically unsolved in the then state of the art, and of such a character that its solution was certainly a useful one. Therefore, the invention, according to settled rules, is to be protected to its fullest extent unless something of a positive character, either in the patent itself or elsewhere, prevents. It is true that Tesla's specification indicates strongly that he probably had not in mind the application of his invention to any motors except his own. Possibly he valued no other two-phased alternating-current motors, or he conceived that there were no others; so that naturally the practical application which he had in mind was limited accordingly. Nevertheless, he is entitled to the advantage of the well-settled rule by virtue of which an inventor who has patented his invention, is entitled to all the uses to which it may be applied, of the class to which he himself practically applied it. Therefore, we do not perceive how, on any rule relating to the fundamental nature of inventive conceptions, or to the construction and effect to be given to the specifications and claims in patents for invention, it can be held that the respondent can escape, for any reason we are now discussing, the charge of infringement.

Our observations so far have been more particularly with reference to the phraseology of the only claim of patent No. 511,560 in issue. The claims of patent No. 511,559, so far as the topic we are discussing is concerned, are as broad as the single claim of patent No. 511,560. It is true they contain the words "as herein set forth," which are not found in the other patent; but these words connect directly with the words "independent energizing circuits," and they do not necessarily relate, either grammatically or by any reasonable demands of the rules of construction, to any particular description of motors. Therefore, within the rules stated in Reece Button-Hole Company vs. Globe Button-Hole Company, ubi supra, by virtue of which all expressions in specifications or claims are to be held to sustain the actual invention so far as they can reasonably be so construed, this one does not stand in the way of our giving, so far as the topic we are discussing is concerned, as broad a construction to patent No. 511,559 as to the claim of patent No. 511,560 in issue.

The difficulty which presses itself upon us on the question of infringement, grows out of the fact that the amount of power used by the respondent is approximately what is described by it as negligible; that 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 the respondent with infringing. We might then well apply the proposition of the 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. In that respect, it falls within the limited class referred to or described by us in Davey Company vs. Isaac Prouty & Co., 107 Fed. Rep. 505, 509, 510, 571. The adaptation of the torsional spring which laid the basis of Western Electric Company vs. Larue, 130 U. S. 601, was a marked instance of this class of cases. The ingenuity of Tesla was displayed in the conception of an adaptation to a particular use; and any adaptation which did not involve that conception could hardly infringe. Therefore, as it may well be that, if the counting mechanism was of a kind not operated by the "metallic rotating body" we should not be compelled to find infringement, we hesitate in view of the minute amount of energy exerted. But Blathy did not merely reproduce the academic experiments which must have preceded Tesla. While Tesla uses the word power, he makes no maximum nor minimum; and it is entirely conceivable that, for certain fine work, or work of a peculiar character, the minimum may be of the utmost value. Therefore, we are unable to make any distinction on this account.

Probably we ought to refer to what is spoken of by the parties as Reilley and Deprez. We apprehend that Deprez is disclosed by what is known as "Deprez French Patent of 1870" and that Baily is represented by the article in the Philosophical Magazine of October, 1870. These are each relied on by the respondent. Baily was seeking simply a revolving disk, and not looking beyond that. He did not attempt to transmit that electrical power which, as we have shown, was the soul of Tesla's invention, and which we have also shown is involved in the infringing device, although, perhaps, to a minimum. It is apparent, also, that Baily did not concern himself about alternating currents as such; and it is not at all clear that he proposed to make use of them at all. Deprez, on the other hand, made commutators necessary elements in his device, which essentially distinguishes him from both the complainant and respondent, and lays him out of the case without the necessity of further discussion.

Possibly, relating to some other infringers than those at bar, we might be compelled to determine more positively than we have the construction of some of the claims which are put in issue here, pertaining to the two patents in suits. For the present case, however, any further investigation or discussion relating to them would be purely academic and of no practical importance. The infringement by the respondent relates entirely to the method by derivation, or self-induction, which for present purposes, are the same; and, so far as that is concerned, it can make no possible difference as to practical results whether the injunction and accounting relate to all the claims in issue or only to one or two of them. Therefore, in view of the construction which we are now inclined to give the claims, as already stated, we hold that the relief granted should relate to all.

We wish to call attention to the fact that, at various points, the respondent has referred to the affidavits filed in connection with the motion to the October 1, 1904 Circuit Court to reopen the case, as though they were adverse to the complainant, and, especially, as though contradicting, in one important particular, the testimony of Mr. Page. On the other hand, at some points, the complainant has undertaken to strengthen its case by reference to the same affidavits. We reject all these, and open the record only so far as it is properly before us. To do otherwise would be to enter on a field which has not been explored by the parties according to proper rules of procedure.

The decree of the Circuit Court is reversed; the case is remanded to that court, with instructions to enter a. decree in favor of the complainant for an injunction and an accounting, and to take such further proceedings as may be required not inconsistent with this opinion; and the appellant recovers the costs of this appeal.