126 U.S. 1 (1888), Dolbear v. American Bell Tel. Co.

Citation:126 U.S. 1, 8 S.Ct. 778, 31 L.Ed. 863
Party Name:DOLBEAR et al. v. AMERICAN BELL TEL. Co. [1] MOLECULAR TEL. CO. et al. v. SAME. [2] AMERICAN BELL TEL. Co. et al. v. MOLECULAR TEL. Co. et al. [3] CLAY COMMERCIAL TEL. CO. et al. v. AMERICAN BELL TEL. Co. et al. PEOPLE'S TEL. Co. et al. v. SAME. [4] OVERLAND TEL. CO. et al. v. SAME.
Case Date:March 19, 1888
Court:United States Supreme Court

Page 1

126 U.S. 1 (1888)

8 S.Ct. 778, 31 L.Ed. 863

DOLBEAR et al.








MOLECULAR TEL. Co. et al. 3




PEOPLE'S TEL. Co. et al.






United States Supreme Court.

March 19, 1888

Appeal from the Circuit Court of the United States for the District of Massachusetts.

Appeal from the Circuit Court of the United States for the Eastern District of Pennsylvania.

Appeals from the Circuit Court of the United States for the Southern District of New York.

These cases were all bills for infringement of letters patent No. 174,465 of March 7, 1876, to Alexander Graham Bell, for 'improvements in telegraphy,' and of letters patent No. 186,787, of January 30, 1877, to the same, for 'improvements in electric telephony.' The decree in each and every case, except that of the Molecular Telephone Company, was in favor of the Bell telephone patents, and in that case the decision (32 F. 214) was adverse only upon the fifth claim of the patent of 1877. The appeal of the American Bell Telephone Company was from that part of the decree. The remaining appeals, five in number, were all taken by the several defendants.


[8 S.Ct. 780] Causten Browne and J. E. Maynadier, for Dolbear et al.

G. P. Lowrey, Wheeler H. Peckham , and H. D. Donnelly , for Molecular Tel. Co. et al.

W. W. Kerr , for Clay Commercial Tel. Co. et al.

Lysander Hill, Don M. Dickinson , and T. S. E. Dixon , for People's Tel. Co. et al.

E. N. Dickerson, J. J. Storrow , and Chauncey Smith , for American Bell Tel. Co. et al .



The important question which meets us at the outset in each of these cases is as to the scope of the fifth claim of the patent of March 7, 1876, which is as follows: 'The method of and apparatus for transmitting vocal or other sounds telegraphically, as herein described, by causing electrical undulations, similar in form to the vibrations of the air accompanying the said vocal or other sounds, substantially as set forth.' It is contended that this embraces the art of transferring to or impressing upon a current of electricity the vibrations of air produced by the human voice in articulate speech, in a way that the speech will be carried to and received by a listener at a distance on the line of the current. Articulate speech is not mentioned by name in the patent. The invention, as described, 'consists in the employment of a vibratory or undulatory current of electricity, in contradistinction to a merely intermittent or pulsatory current, and of a method of and apparatus for producing electrical undulations upon the line wire.' A 'pulsatory current' is described as one 'caused by sudden or instantaneous changes of intensity;' and an 'electrical undulation,' as the result of 'gradual changes of intensity exactly analogous to the changes in the density of air occasioned by simple pendulous vibrations.' Among the uses to which this art may be put is said to be the 'telegraphic transmission of noises or sounds of any kind;' and it is also said that the undulatory current, when created in

Page 532

the way pointed out, will produce through the receiver at the receiving end of the line 'a similar sound to that uttered into' the transmitter at the transmitting end. One of the means of imparting the necessary vibrations, through the transmitter, to produce the undulations, may be the human voice. Articu [8 S.Ct. 781] late speech is certainly included in this description, for it is an 'uttered' 'sound,' produced by the 'human voice.' It is contended, however, that 'vocal sounds' and 'articulate speech' are not convertible terms, either in acoustics or in telegraphy. It is unnecessary to determine whether this is so or not. Articulate speech necessarily implies a sound produced by the human voice; and as the patent on its face is for the art of changing the intensity of a continuous current of electricity by the undulations of the air caused by sonorous vibrations, and speech can only be communicated by such vibrations, the transmission of speech in this way must be included in the art. The question is not whether 'vocal sounds' and 'articulate speech' are used synonymously as scientific terms, but whether the sound of articulate speech is one of the 'vocal or other sounds' referred to in this claim of the patent. We have no hesitation in saying that it is, and that, if the patent can be sustained to the full extent of what is now contended for, it gives to Bell, and those who claim under him, the exclusive use of his art for that purpose until the expiration of the statutory term of his patented rights.

In this art--or, what is the same thing under the patent law, this process, this way, of transmitting speech--electricity, one of the forces of nature, is employed; but electricity, left to itself, will not do what is wanted. The art consists in controlling the force as to make it accomplish the purpose. It had long been believed that, if the vibrations of air caused by the voice in speaking could be reproduced at a distance by means of electricity, the speech itself would be reproduced and understood. How to do it was the question. Bell discovered that it could be done by gradually changing the intensity of a continuous electric current, so as to make it correspond exactly to the changes in the density of the air caused by the sound of the voice. This was his art. He then

Page 533

devised a way in which these changes of intensity could be made, and speech actually transmitted. Thus his art was put in a condition for practical use. In doing this, both discovery and invention, in the popular sense of those terms, were involved: discovery in finding the art, and invention in devising the means of making it useful. For such discoveries and such inventions the law has given the discoverer and inventor the right to a patent, as discoverer, for the useful art, process, method of doing a thing, he has found; and, as inventor, for the means he has devised to make his discovery one of actual value. Other inventors may compete with him for the ways of giving effect to the discovery, but the new art he has found will belong to him, and those claiming under him, during the life of his patent. If another discovers a different art or method of doing the same thing, reduces it to practical use, and gets a patent for his discovery, the new discovery will be the property of the new discoverer; and thereafter the two will be permitted to operate each in his own way, without interference by the other. The only question between them will be whether the second discovery is in fact different from the first. The patent for the art does not necessarily involve a patent for the particular means employed for using it. Indeed, the mention of any means, in the specification or descriptive portion of the patent, is only necessary to show that the art can be used; for it is only useful arts--arts which may be used to advantage--that can be made the subject of a patent. The language of the statue is that 'any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter' may obtain a patent therefor. Rev. St. § 4886. Thus, an art--a process--which is useful, is as much the subject of a patent as a machine, manufacture, or composition of matter. of this there can be no doubt, and it is abundantly supported by authority. Corning v. Burden, 15 How. 252, 267; Cochrane v. Deener, 94 U.S. 780, 787, 788; Tilghman v. Proctor, 102 U.S. 707, 722, 724, 725; Fermentation Co. v. Maus, 122 U.S. 413, 427, 428, 7 S.Ct. 1304. What Bell claims is the art of creating changes of intensity

Page 534

in a continuous current of electricity, exactly corresponding [8 S.Ct. 782] to the changes of density in the air caused by the vibrations which accompany vocal or other sounds, and of using that electrical condition, thus created, for sending and receiving articulate speech telegraphically. For that, among other things, his patent of 1876 was, in our opinion, issued; and the point to be decided is whether, as such a patent, it can be sustained.

In O'Reilly v. Morse, 15 How. 62, it was decided that a claim in broad terms (page 86) for the use of the motive power of the electric or galvanic current called 'electro-magnetism, however developed, for making or printing intelligible characters, letters, or signs, at any distances,' although 'a new application of that power' first made by Morse, was void, because (page 120) it was a claim 'for a patent for an effect produced by the use of electro-magnetism, distinct from the process or machinery necessary to produce it;' but a claim (page 85) for 'making use of the motive power of magnetism, when developed by the action of such current or currents, substantially as set forth in the foregoing description, * * * as means of operating or giving motion to machinery, which may be used to imprint signals upon paper or other suitable material, or to produce sounds in any desired manner, for the purpose of telegraphic communication at any distances,' was sustained. The effect of that decision was, therefore, that the use of magnetism as a motive power, without regard to the particular process with which it was connected in the patent, could not be claimed, but that its use in that connection could.

In the present case the claim is not for the use of a current of electricity in its natural state as it comes from the battery, but for putting a continuous current, in a closed circuit, into a certain specified...

To continue reading