
    CLAUDE NEON LIGHTS, Inc., v. E. MACHLETT & SON et al. 
    
    District Court, E. D. New York.
    March 12, 1929.
    No. 2465.
    See, also, 31 F.(2d) 988, 991.
    William Bohleber, of New York City (Edwin J. Prindle and Thomas Ewing, both! of New York City, of counsel), for plaintiff.
    Pennie, Davis, Marvin & Edmonds, of New York City (William H. Davis and Dean S. Edmonds, both of New York City, of counsel), for defendants.
    
      
      Opinion withdrawn. See 32 F.(2d) —,
    
   CAMPBELL, District Judge.

This is a motion for a supplementary injunction, after decree on mandate, on a button-caesium electrode tube, made by Rainbow Light, Inc., one of the defendants in this suit.

Patent No. 1,125,476 was held valid and infringed, as to claim 1, by the Circuit Court of Appeals of this circuit in this action. 27 F.(2d) 702.

A careful consideration of the affidavits, arguments, and briefs submitted on this motion convinces me that it cannot be held that any and every combination that reduces depletion of neon gas by the spluttered film is an equivalent, but the Circuit Court of Appeals of this circuit said, in speaking of the button-esesium electrode: “The argument that the button-eajsium or cmsium-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. Maehlett’s testimony is a refutation of this claim. The cassium plays a part which is equivalent to additional surface area of the electrodes. It is equivalent to additional electrodes. The button electrode is always and only used with caesium. Without the caesium the button electrode would destroy itself before complete formation of the-neon tube. Maehlett admits that the cesium has an effect on the cathode drop. The appellee has not proven that the button electrode with caesium is equivalent to an electrode of the same area without caesium. It does not establish the inventor’s rule to be erroneous.”

This would seem to be determinative of the question at issue, but the defendant says that the language quoted is dicta and not an adjudication that the button-caesium electrode type is an infringement.

It is true thsat this court and the Circuit Court of Appeals did not consider the button-caesium electrode type on the question of infringement, but it did consider it on the question of validity, and the finding of the Circuit Court of Appeals that caesium plays a part which is equivalent to additional surface area of the electrodes, and is equivalent to additional electrodes, was not dicta but a finding of a fact necessary to be found to sustain validity.

The button-esesium electrode type was introduced for the purpose of disproving the Claude rule, and therefore the implication was that the tube differed from the tube of the patent only in the substitution of effisium for electrode area.

If that be so, then the only question involved in determining infringement is the equivalency of cassium with electrode area.

That question was determined by the Circuit Court of Appeals adversely to the defendants, because if the cassium was not the equivalent of electrode area, then the Claude rule would have been established to be erroneous, and the patent would not have been held to be valid, as the iron button electrode itself had an area of but .7 square decimeters per ampere, instead of at least 1.5 square decimeters per ampere, as did the electrode in the patent.

The Circuit Court of Appeals, in order to establish that the Claude rule was not erroneous and sustain the patent, found that CEesium was the equivalent of electrode area, and such finding is binding on the defendants on the question of infringement now at issue, even although the question then at issue, as to which it was so found, was that of validity and, not of infringement. Vapor Car Heating Co. v. Gold Car Heating & Lighting Co. (C. C. A.) 7 F.(2d) 284, at 287 ; 34 Corpus Juris, p. 743.

The decree herein finally determined the validity of the patent and is res adjudieata as between the parties hereto, and that is true although it may be called interlocutory. Hart Steel Co. v. Railroad Supply Co., 244 U. S. 294, 37 S. Ct. 506, 61 L. Ed. 1148; Carson Inv. Co. v. Anaconda Copper Mining Co. (C. C. A.) 26 F.(2d) 651.

Defendants cite the draft report of' the special master in the suit by Electrical Products Corporation. v. Neale, Inc., et al., Southern District of California, No. K 13 H, In Equity, February 6, 1929, as sustaining its contention; but with that contention I cannot agree, as the decree in the instant suit was not res adjudieata in the said suit in the Southern District of California, and the special master in that suit was free to approach the question of infringement without any finding of equivalency to bind him, as we have in this suit.

Defendant raises an issue on this motion as to the neon in the button-caesium type tube being previously purified neon, first, because it contends that the electrodes are not deprived of their occluded gases, and, second, that the neon is mixed with the caesium vapor.

The process of the manufacture of the button-caesium electrode type of tube, whieh I observed at the defendant’s factory on the trial of the action, convinces me that the electrodes in that type of tube are deprived, of their occluded gases, and that in that respect the defendants use previously purified neon as the same was defined by the Circuit Court of Appeals.

The mixing of caesium vapor with the neon in the button-esesium type of tube of the defendant is not in conflict with the teaching of the patent in suit, or claim 1 thereof, as the patentee Claude, in his French patent No. 424,190, referred to by him in the patent in suit as Ms patent of March 7, 1910, says that gases given off during or after treatment may also be removed by proper reagents introduced into tbe tube to take up the impurities.

The issues -of law and fact as to infringement have been thoroughly briefed by counsel, and I have carefully considered the same, but there is nothing to be gained by a discussion of the question of equivalency of csesium to electrode area, as tMs court feels constrained by the finding of the Circuit Court of Appeals, as I construe it only from the opinion as printed, that csesium as used by the defendant in the button-esesium mirror type is the equivalent of electrode area in the patent in suit, even' if such finding was on the question of validity and not of infringement, and therefore refrain from such discussion.

The motion is granted.  