
    CLAUDE NEON LIGHTS, Inc., v. E. MACHLETT & SON.
    Circuit Court of Appeals, Second Circuit.
    April 8, 1929.
    No. 328.
    Before MANTON, SWAN, and AUGUSTUS N. HAND, Circuit Judges.
    Dean S. Edmonds, of New York City, for the motion.
    E. J. Prindle, of New York City, opposed.
   MANTON, Circuit Judge.

When tMs suit for infringement of patent No. 1,125,476 was heard on appeal from a decree holding the patent valid, but not infringed (Claude Neon Lights, Inc., v. E. Machlett & Son [C. C. A.] 27 F.(2d) 702), we held that the lamp made by the defendant, and charged to be an infringement, was in fact established to be an infringement. The lamps there considered (Exhibits 9 and 10) had electrodes of large area containing a charge of magnesium carbonate. At the trial, and on the appeal, it was claimed that the disclosure of the Claude patent taught that the electrode area must exceed 1.5 square deemieters per ampere as the rule of relationship. It was then asserted that a practical commercial neon tube of long life could not be made, except by following this rule of relationship by employing an electrode exceeding the minimum area. The contention was advanced that the button-electrode emsium-mirror lamp, referred to as the csesium lamp, had an electrode of an area of 0.7, less than one-half of the minimum as specified in the Claude, patent.

The .csesium lamp was considered in the District Court, and by us on -appeal, for the purpose of enabling the defendant to establish. the incorrectness of the Claude rule of relationship between the electrode area and current. There we said:

“The argument that the button-esesium or csesium-mirror electrode proved that the patentee’s rules of relationship of surface area to current used plays no part in the life of the tube, is also unsound. MacMett’s testimony is a refutation of tMs claim. The csesium plays a part wMch is equivalent to additional surface area of the electrodes. It is equivalent to additional electrodes. .The button electrode is always and only used with csesium. Without tbe csesium tbe button electrode would destroy itself before complete formation of the neon tube. Machlett admits that the emsium has an effect on the cathode drop. The appellee has not proven that the button electrode with csesium is equivalent to an electrode of the same area without csesium. It does not establish the inventor’s rule to be erroneous.”

This reference in onr opinion does not justify the claim of the plaintiff that we then held that the button csesium electrode type of lamp is an infringement of tbe claim, and that the cassium plays a part which is equivalent to additional surface area of the electrodes. We considered the button eassium eleetrode type as an equivalent only in commenting upon the failure to disprove the Claude rule. The District Judge, who has been applied to for an extension of the decree of infringement, so as to include the csesium. lamp as an infringement, has apparently misunderstood what we wrote. 31 F.(2d) 989.

We therefore suggest that, since the plaintiff now claims that the eaasium lamp is an infringement, the district judge consider the merits of this controversy, and is not foreclosed by what we have written. This should proceed by supplemental bill or by independent suit for infringement as to the ea3-sium lamp.

We will deny the motion to recall the mandate, but express our views as a guide to the district judge, or master, before whom the future proceedings may come.

Motion denied. 
      
       See subsequent opinion 32 F.(2d) —.
     