Decision against Steinberger patent in favor of Hewlett

Decision on Suspension-Insulator Patent

Much interest is attached to a decision rendered by Judge C. J. Lacombe, of the United States Circuit Court of Appeals, in a suit brought by the General Electric Company and Mr. Edward M. Hewlett against Mr. Louis Steinberger. The suit related to the disk-strain-insulator patent issued to Steinberger on Nov. 17, 1908, upon an application filed Jan. 20, 1908, which covered substantially the same type of insulator for which a patent application was filed by Hewlett on April 20, 1907. Having discovered its error in overlooking the prior Hewlett application, the Patent Office on Nov. 2, 1911, declared interference between Hewlett and certain claims of the Steinberger patent.

The invention in question consisted of a disk strain insulator comprising suspension members partially enveloped by a mass of insulating material and having a disk portion provided with annular collars or flanges extending in opposite directions therefrom and generally parallel with the suspension members. On April 29, 1912, the examiner of interferences, but the first assistant commissioner reversed the findings in a decision dated Aug. 6, 1912. On April 26, 1913, the Court of Appeals of the District of Columbia upheld Steinberger's priority. Subsequent proceedings were then instituted by the General Electric Company in the United States District Court for the Eastern Division of New York, before Judge Chatfield, in Brooklyn, the complainants availing themselves of a right granted in Section 4915 of the United States Revised Statutes.

Judge Chatfield rendered a decision on Oct. 9, 1913, reversing the award to Steinberger and declaring Hewlett the prior inventor. Supplementary opinions were filed on Oct. 18 and 21. The District Court held that the patentable invention lay in the use of annular insulating area-protecting purposes, under the conditions described in the drawings and specifications.

In the decision rendered by Judge Lacombe for the Unites States Circuit Court of Appeals, attention was called to the fact that upon the hearing of the interference Steinberger took testimony to show that he conceived the invention and made sketches about March or April, 1904. He did not, however, reduce his invention to practice until he filed his application in 1908. Judge Lacombe expressed the opinion that Steinberger did not display such reasonable diligence as would entitle him to priority over Hewlett, whose application was filed nine months earlier.

Steinberger further showed that in October, 1905, he wrote to Mr. Harold W. Buck disclosing an insulator and inclosing a sketch thereof. This, he alleged, embodied the invention in interference, and he contended that Buck had communicated it to Hewlett. Hewlett's attorney, being of the opinion that Steinberger's letter and sketch did not embody the invention, took no testimony on behalf of Hewlett. The examiner of interferences held that the letter and sketch were not a disclosure of the invention and awarded priority to Hewlett. On appeal the board of examiners-in-chief affirmed this decision. The next appeal was to the Commissioner of Patents, who held that there had been a disclosure to Buck and that upon the record as it stood it was to be inferred that Buck had communicated such disclosures to Hewlett. The latter then appealed to the Court of Appeals for the District of Columbia, which affirmed the Commissioner of Patents. Thereupon this suit was begun, with the result above set forth.

Judge Lacombe stated that while rain-shedding flanges were patentable at the date of the application, Steinberger's sketches, made in March or April, 1904, did not disclose the arrangement shown in his application filed on Jan. 20, 1908, and affirmed the decree of the District Court, Eastern Division of New York, giving authority to Hewlett.

A petition has been submitted to the Supreme Court of the United States, asking that the evidence be reviewed, and a motion has been filed requesting Judge Lacombe not to hand down his decree to the lower court until the Supreme Court has acted in the matter.