Kellogg Switchboard & S. Co. v. Michigan Bell Tel. Co.

• Decision Date: 10 October 1938
• Docket Number: No. 7467.,7467.
• Citation: 99 F.2d 203
• Parties: KELLOGG SWITCHBOARD & SUPPLY CO. v. MICHIGAN BELL TELEPHONE CO. et al.
• Court: U.S. Court of Appeals — Sixth Circuit

99 F.2d 203 (1938)

KELLOGG SWITCHBOARD & SUPPLY CO. v. MICHIGAN BELL TELEPHONE CO. et al.

No. 7467.

Circuit Court of Appeals, Sixth Circuit.

October 10, 1938.

Floyd Williams, of Cincinnati, Ohio, and Curtis B. Camp, of Chicago, Ill. (Curtis B. Camp, of Chicago, Ill., and John Weld Peck and John Colville Taylor, both of Cincinnati, Ohio, on the brief), for appellant.

Merrell E. Clark, of New York City (Merrell E. Clark, William R. Ballard, and M. R. McKenney, all of New York City, and Frost & Jacobs, of Cincinnati, Ohio, on the brief), for appellees.

Before HICKS, SIMONS, and ALLEN, Circuit Judges.

SIMONS, Circuit Judge.

In the present infringement suit involving patent to Currier, No. 1,438,170, granted December 12, 1922, upon an application filed September 19, 1914, for a "Telephone System with Flickering Recall," the District Court, while intimating that if the claims in suit were valid they would have to be so narrowly construed as to avoid the infringement charged, based its decree of dismissal solely on their invalidity because of anticipation by a prior patent to Smythe, No. 758,116. The decree is challenged by the plaintiff below.

In a non-dial central office telephone system, recall mechanism is the means by which a subscriber attracts the attention of the operator at the central office before his line has been cleared upon the switchboard. Subscribers' telephone lines all terminate in small holes called "jacks" upon the vertical part of the switchboard at the central office. Each jack is marked by a "line lamp," which lighted by the raising of a calling subscriber's receiver, notifies the operator of the call. To answer it the operator inserts in the subscriber's jack an end or plug of one of the fifteen or more flexible cord circuits with which she is provided. The opposite end or plug is for making connection with the called line. Associated with these cord or link circuits are two supervisory lamps. One of these represents the operator's answering plug and the other the plug that is used in making connection with the called subscriber's line. When this is done the called subscriber's supervisory lamp lights and when he answers both supervisory lights go out, indicating that conversation is taking place. When either subscriber hangs up his receiver his supervisory lamp again lights to indicate to the operator that the conversation has ended and that she may clear the lines by removing the plugs. In the older systems when either subscriber again desired the attention of the operator he could before the plugs were removed from the jacks attract it by moving his receiver hook up and down, which indicated to the operator by a flashing of her supervisory light that he wished to make a recall. This method of signaling for a recall was not always effective. If the operator's attention was not directed to the supervisory light during the time of its flashing, or if the hook was "jiggled" to fast or merely depressed once, the recall signal might be missed.

Currier provided an automatic flickering recall signal system whereby one movement of the switch hook under the control of the subscriber was sufficient to start in operation certain instrumentalities which conveyed to the operator an intermittent signal continuing to flash until the operator answered. He provided an interrupter controlled by relays, which after the switch hook of a connected line had once been moved was placed in circuit and continued to flash the clearing lamp. While Currier was concerned chiefly with a recall system for the calling subscriber, since experience had demonstrated that in the great majority of cases the calling subscriber desires to signal for a recall, his invention is not limited to a mechanism for the calling end of the circuit, although the patent depicts it as such. The Smythe system, held below to anticipate, is depicted as a recall signaling system for the called rather than the calling subscriber, although the evidence clearly indicates that each of the systems here brought into conflict may be applied to either or both ends of the operating circuit. It is this distinction of application, however, which forms one basis for the appellant's contention that Smythe did not understand the problem to which Currier addressed himself and therefore failed to solve it, and which adds much to the difficulty of the problem now presented to the court.

Of the 77 claims of Currier but three (33, 34 and 46) are in controversy. Of these, claims 33 and 46 are printed in the margin.¹ Claim 34 is identical with 33 except that it specifies a "joint control" between the operator and calling subscriber which accomplishes the flashing recall by bringing the interrupter in circuit with the lamp.

It is necessary before making analyses of these claims in the light of Smythe to dispose of an issue of estoppel raised by the appellant. It appears that after Currier had filed his application one Clausen, an employee of Western Electric Company, a subsidiary of the American Telephone & Telegraph Company, filed four applications for patents embodying principles said to be identical with those of the Currier invention. An interference between Currier and Clausen followed. Clausen was first rejected by the examiner as being anticipated by Smythe, but after he had amended by narrowing his claims, patent No. 1,288,837 was issued to him on December 24, 1918. Upon a second interference, however, the claims granted to Clausen were given to Currier as the prior inventor. Upon appeal to the Board of Examiners in Chief and to the Commissioner of Patents, Currier's priority was sustained. It is argued from this, upon the authority of Cutler Hammer Mfg. Co. v. General Electric Co., 7 Cir., 6 F.2d 376, that since the appellees were in privity with Clausen they are now estopped from attacking the validity and novelty of the Currier patent by Clausen's pursuit of identical claims, or if not estopped, Clausen's claims and argument before the Patent Office...