The Incandescent Lamp Case AUTHOR: Consing

[159 U.S. 465 (1895)] NOTES:

TOPIC: Patents Electro Light is the assignee of Sawyer and Man, i.e. the former
PONENTE: Brown, J. obtained a patent from the latter.
FACTS:
The Electric Company (Plaintiff) filed a case against McKeesport (Defendant) to recover damages for the infringement of letters
patent issued to the former for an incandescent lamp.

The defendants countered and denied the novelty and utility of the plaintiff's patent.

The specification plaintiff made in the application for its patent described in detail a class of electric lamps employing an
incandescent conductor enclosed in a transparent, hermetically sealed vessel or chamber from which oxygen is excluded, and
. . . more especially to the incandescing conductor, its substance, its form, and its combination with the other elements
composing the lamp. However, it made a broad claim for every fibrous or textile material.
ISSUE(S):
Must a patent state specifically the composition of the materials to be combined to produce the intended result? [YES]
If they are not capable of an exact description, then is the inventor not entitled to a patent? [YES, inventor not entitled]

HELD/RATIO:
A patent must state specifically the composition of the materials to be combined to produce the intended result and if they are not
capable of an exact description, then the inventor is not entitled to a patent. The two main defenses to the patent are: (1) that it is
defective upon its face in attempting to monopolize use of all fibrous and textile materials for the purpose of electric illumination; and
(2) that Sawyer and Man were not actually the first to discover that these materials were better adapted than mineral carbons for such
use.

With respect to the first defense, if the Plaintiffs had discovered in the fibrous and textile substances a quality distinguishing them from
other materials adapting them particularly to incandescent conductors, such claim might prevail. Sawyer and Man presumed they
discovered in carbonized paper the best material for an incandescent conductor. Rather than confining themselves to this material,
they made a broad claim for every fibrous or textile material. Rev. Stat. 4888 requires the application to include a written description
of the device and the manner and process of making and using it in full, clear, and concise terms.

The purpose of this requirement is to inform the public of what the patentee claims to hold a patent to. With the specification, however,
only gives the names of the substances used without stating the relative proportions, the court must declare the patent void.

If Sawyer and Man had discovered that a certain type of carbonized paper sufficed, then their claim to all carbonized paper might not
fail. However, the fact that such paper is a fibrous material does not allow them to limit other inventors to the entire domain of such
materials. The claims of this patent are too indefinite.
CASE LAW/ DOCTRINE:
If the description [of the invention] be so vague and uncertain that no one can tell, except by independent experiments, how to
construct the patented device, the patent is void.