Victor Talking Mach Co. v. Thomas A. Edison, Inc.

• Decision Date: 11 January 1916
• Docket Number: 115.
• Citation: 229 F. 999
• Parties: VICTOR TALKING MACH. CO. v. THOMAS A. EDISON, Inc.
• Court: U.S. Court of Appeals — Second Circuit

229 F. 999

VICTOR TALKING MACH. CO. v. THOMAS A. EDISON, Inc.

No. 115.

United States Court of Appeals, Second Circuit.

January 11, 1916

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

The following is the opinion of Learned Hand, District Judge:

Patent 785,362 being withdrawn, I have only to consider patents 814,786 and 1,060,550. The plaintiff urges that the 'reorganized' machine infringes claims 16, 23, and 37 of patent 814,786 and claims 39 and 42 of patent 1,060,550. Claim 23 of patent 814,786, if considered verbally, is clearly not applicable. The 'bent pivoted tube' is especially designed not 'to carry the sound box in substantial alignment with the tapering portion of said arm ' Therefore claim 23 may be disregarded at once, because where so many claims are put into a patent, each element in a given claim must be supposed to be especially necessary to the combination. In such a patent there is little room for latitude of interpretation. In claim 16 the term, 'sound tube,' used in the claim should be confined to the movable section, 29, which is called a 'sound tube' on page 2, lines 49, 50, 64, 70, and 93, and which is used in that sense in a number of the claims. The defendant has no 'sound tube,' because it has no such element as Johnson's disclosure; the whole organization of its machine being quite different and being derived from another part of the art-- that is, from the solid horn art.

If however, that part of the solid horn which comes above the record be deemed the 'sound tube,' so that the defendant infringes, then the claim in my judgment presents no patentable novelty over the prior art. I shall assume for the moment, and until I take up claim 37 that the Clark patent, 756,348, and the Lake patent, 1902, British, 785 show a sound tube with an end piece, to which the sound box is rigidly attached, but which itself moves freely upon two axes, vertical and horizontal. The proof of that I shall give later. If so, it was not patentable to give to the sound box that double motion when annexed to a solid horn. Johnson's own patent, 785,363, which was in the office at the same time as the patent in suit, would have been a good reference otherwise upon this very point. Moreover, Johnson's patent, 634,944, shows the horn bent through 90 degrees to meet the sound box with a solid connection. Surely it was not invention to make the straight tube of Clark and Lake into a bent tube like Johnson, 634,944, or to vary the bend into a semicircle, as the defendant has done. In the patent in suit the joint between the sound tube and the semicircular part may well be patentable, but the defendant does not use it, or anything like it. The bend in its tube is a twist in the solid metal, which puts the sound box in the same vertical plane with the horn, when the tube is in a straight line with the horn, but which has no functional significance. At least, I am not willing to attribute invention to that particular feature, and that is the only feature which is new. Therefore I think that claim 16 must be limited to the disclosure as shown, where there is a separated horn of which one part is a sound tube in the sense mentioned in the patent.

Claim 37 contains an element described as 'a hollow sound conducting arm movable in a plane parallel with' the record support. The phrase 'sound conducting arm,' or 'tube,' is used in the patent interchangeably with 'sound tube' to mean the element, 29, distinct from the horn proper (page 2, lines 27, 41), but it may be (page 1, line 18) that this use is not throughout as consistent as in the case of the 'sound tube.' However that may be as mere matter of terminology, the element must be limited to the organization disclosed, or it is invalid, because, if the element include the whole of a solid horn, as it must to cover the defendant's device, it is invalid under Clark, supra, and Lake, supra. Here there is a hollow sound conducting arm in the sense of a horn which moves parallel with the record. The sound box has a vertical movement about the horizontal pivot, i, which permits the box to move from or to the record independently of the horn, sufficiently to remove the stylus. However, the plaintiff urges that, as the Clark and Lake patents are clearly for a feed machine, the sound box cannot, therefore, move freely laterally across the record, as the defendant's does and as the plaintiff's does. That in all feed machines there must be some play, which permits a slight amount of accommodation to the grooves of the record, all agree. The whole phonograph art shows this; but it is urged with some plausibility that such slight accommodation as this should not be confounded with a deliberate adaptation for tracking through the guidance of the record alone. Hence it is insisted that patents like Von Madaler, 1899, British, 23,497, and the MacDonald patents, are not applicable, and that there must be understood in the patent in suit a machine made like the original Berliner machine, where the stylus drifts freely in a lateral plane.

The organization of Clark's machine leaves no doubt in my mind that a lateral movement was contemplated about the vertical pivot, j, within the sleeve, m. Figures 5 and 9 show how this was to be done; the pin, j, being that on the upper end of which the guide arm, D, was fastened. The disclosure (page 1, lines 45-70)...