De Forest Radio Tel. & Tel. Co. v. Westinghouse E. & Mfg. Co.

• Decision Date: 30 June 1924
• Docket Number: No. 3125.,3125.
• Citation: 13 F.2d 1014
• Parties: DE FOREST RADIO TELEPHONE & TELEGRAPH CO. v. WESTINGHOUSE ELECTRIC & MFG. CO.
• Court: U.S. District Court — Western District of Pennsylvania

13 F.2d 1014 (1924)

DE FOREST RADIO TELEPHONE & TELEGRAPH CO. v. WESTINGHOUSE ELECTRIC & MFG. CO.

No. 3125.

District Court, E. D. Pennsylvania.

June term, 1924.

Samuel E. Darby, Jr., of New York City, Thomas G. Haight, of Jersey City, N. J., and Francis B. Bracken, of Philadelphia, Pa., for plaintiff.

Thomas Ewing, Drury W. Cooper, and H. Frank Wiegand, all of New York City, and Howson & Howson, of Philadelphia, Pa., for defendant.

THOMPSON, District Judge.

This is a suit in equity brought by the plaintiff as assignee of patents Nos. 1,507,016 and 1,507,017, both granted September 2, 1924, to Lee De Forest, against the defendant as assignee of patent No. 1,113,149, granted October 6, 1914, to Edwin H. Armstrong. The bill alleges that the plaintiff's patents and the defendant's patent are interfering patents within the meaning of section 4918, R. S. (Comp. St. § 9463), in that the invention of the Armstrong patent No. 1,113,149 and the inventions of the De Forest patents Nos. 1,507,016 and 1,507,017 are the same, or substantially the same in part at least, and that the Armstrong patent claims subject-matter claimed in the De Forest patents. The bill prays that the court declare an interference, and that the interfering claims of the Armstrong patent be declared void.

The plaintiff sets up in its bill of particulars that the subject-matter in whole or in part of both of the plaintiff's patents is directed to the so-called "feed-back" or "regenerative" circuit arrangement or arrangements employed with a three-electrode vacuum tube or audion, whereby current variations in one circuit create corresponding variations in a second circuit which are fed back to the first circuit to still further amplify the variations in such first circuit, and these still further amplify those in the second circuit; and, as to De Forest patent No. 1,507,016, the bill of particulars adds the important clause "until a sustained alternating current is finally produced."

The subject-matter of De Forest patent No. 1,507,017 is thus claimed to be the so-called "feed-back circuit," with the further development in De Forest patent No. 1,507,016 of the so-called "oscillating audion," while the interfering claims of the Armstrong patent include both the feed-back circuit and the oscillating audion under the same application and letters patent.

The interfering claims of De Forest patent No. 1,507,016 and the Armstrong patent are alleged to be: De Forest claims 24, 25, 26, 27, and 28, and Armstrong claims 1, 2, 3, 5, 8, 9, 12, 14, 15, 16, 17 and 18. The interfering claims of De Forest patent No. 1,507,017 and the Armstrong patent are alleged to be: De Forest claims 15, 17, 18, 19, 20, and 21, and Armstrong claims 1, 2, 3, 5, 8, 9, 12, 14, 15, 16, 17, and 18.

It is not denied in the defendant's answer that the patents are interfering patents as alleged.

It would be futile for one not skilled in the art to attempt a technical statement of the subject-matter of these inventions beyond what is set out in the patents. It may be noted, however, that their subject-matter is not a physical structure, but is a circuit arrangement employed with the physical structure known as the audion or three-electrode vacuum tube invented by De Forest, and for which he was, on February 18, 1908, granted patent No. 879,532.

Armstrong says in his specification, and it is true also of the De Forest patents, the "improved arrangement corresponds with the ordinary arrangement of circuits in connection with an audion detector to the extent that it comprises two interlinked circuits; a tuned receiving circuit in which the audion grid is included and which will be hereinafter referred to as the `tuned grid circuit,' and a circuit including a battery or other source of direct current and the `wing' of the audion, and which will be hereinafter referred to as the `wing circuit.' As is usual, the two circuits are interlinked by connecting the hot filament of the audion to the point of junction of the tuned grid circuit and the wing circuit."

In the specification of De Forest patent No. 1,507,017 the feed-back circuit is thus described: "The current variations in the grid filament circuit produce corresponding variations in the plate filament circuit which are fed back to the grid filament circuit to add their effects to the initial variations, which latter thus reinforced, create and form greater variations in the plate filament circuit which are, in turn, fed back to the grid filament circuit to still further amplify the variations in that circuit and so on."

When sufficient energy is fed back from the plate filament circuit or output circuit to the grid filament or input circuit, the system or arrangement becomes itself a generator of continuous oscillations or alternating current or "oscillating audion," and De Forest continues in his specification: "The energy of the variations of each circuit reacts upon and increases that of the other circuit until a maximum sustained alternating current is finally produced whose frequency can be controlled by varying the electrical constants of the associated circuits. In other words, the amplifying action incident to the feeding back of energy from the one circuit to the other increases until oscillations are produced which, once set up, are self-perpetuating, analogous to the `whistling' or surging action observed when a telephone receiver and miscrophone transmitter, connected together in the same or coupled circuits, are so placed as to react one on the other mechanically and electrically."

There is no dispute about the accuracy of these terse descriptions of the action of the system or arrangement of the invention of the feed-back circuit and the development of the oscillating audion, and it follows that it is impossible to obtain the oscillating condition, that is maximum feed-back, without passing through the less than maximum or nonoscillating condition.

It is unnecessary here to set out in extenso the claims which the plaintiff asserts and the defendant does not deny and, in effect, has conceded, throughout the trial, are in interference.

The Armstrong patent in suit was construed by Judge Mayer of the Southern District of New York in Armstrong v. De Forest Radio Telephone & Telegraph Co. (D. C.) 279 F. 445, where Armstrong brought suit against the present plaintiff for infringement of the Armstrong patent here in suit, and by Judge Manton speaking for the Circuit Court of Appeals for the Second circuit affirming Judge Mayer's decree in favor of Armstrong (280 F. 584).

The invention disclosed by the three patents here in suit was also the subject of Justice Van Orsdel's opinion in the Court of Appeals for the District of Columbia in De Forest v. Meissner, 54 App. D. C. 391, 298 F. 1008.

In the New York cases, it was distinctly recognized that, while the claims of the Armstrong patent are for an instrumentality for amplifying received sound waves by means of the feed-back circuit arrangement, the patentee is entitled to the rights of invention in any further use to which the instrumentality may be put, including its use as an oscillating audion. Under the authority of those decisions, the claims of each of the two De Forest patents here in controversy, it must be concluded, are covered by the subject-matter of the Armstrong patent.

In the New York suit, the question of priority of invention as between Armstrong and De Forest was directly in issue. That fact was found in favor of Armstrong. The same question of priority of invention arose before the Court of Appeals of the District of Columbia in De Forest v. Meissner et al., supra. This was an interference proceeding arising in the Patent Office, in which the applications for the Armstrong patent and for De Forest patent No. 1,507,016, together with the applications of two other parties, Meissner and Langmuir, were involved. The controversy was carried through the several tribunals of the Patent Office with varying decisions, and, upon appeal from the commissioner of patents awarding priority of invention of the subject-matter of the interference to Armstrong, the Court of Appeals of the District of Columbia, in an opinion by Associate Justice Van Orsdel, reversed the prior decisions of the Patent Office, and awarded priority to De Forest.

There was also pending an interference proceeding in which De Forest, Meissner, and Langmuir were parties, in which, upon appeal, the Court of Appeals of the District of Columbia in the same opinion above cited awarded priority to De Forest over Meissner and Langmuir for his patent No. 1,507,017. The record upon the suit in the Second circuit and that upon the interference proceedings was offered in evidence in the instant case. That upon the three-party interference was objected to upon the ground that Armstrong was not a party to that proceeding. As the question here is priority of invention, I think it is immaterial whether that record is admitted in evidence or not, because the invention of the feed-back circuit under the authority of the New York case carries with it the invention of the oscillating audion, and, on the other hand, the oscillating audion involves the invention of the feed-back circuit. The instrumentality was what was invented.

The effect of the conflicting decrees of the District Court for the Southern District of New York, affirmed by the Circuit Court of Appeals of the Second Circuit, and of the Court of Appeals of the District of Columbia upon the present controversy, is squarely raised.

The defendant contends that the question of priority of invention, having been decided in its favor in the New York case, is res adjudicata. The plaintiff meets this contention by replying that there has been no final decree entered in that case, the decree being merely interlocutory, and therefore the res adjudicata rule does not apply. It appears to be conclusively settled that the doctrine of res adjudicata...