International Carrier-Call & Tel. Corp. v. Radio Corp.

• Decision Date: 03 May 1944
• Docket Number: No. 253.,253.
• Citation: 142 F.2d 493
• Parties: INTERNATIONAL CARRIER-CALL & TELEVISION CORPORATION v. RADIO CORPORATION OF AMERICA et al.
• Court: U.S. Court of Appeals — Second Circuit

142 F.2d 493 (1944)

INTERNATIONAL CARRIER-CALL & TELEVISION CORPORATION v. RADIO CORPORATION OF AMERICA et al.

No. 253.

Circuit Court of Appeals, Second Circuit.

May 3, 1944.

L. Stewart Gatter, of New York City (Edmund M. Squire, of New York City, of counsel), for appellant.

Stephen H. Philbin and John B. Cuningham, both of New York City, for appellees.

Before L. HAND, SWAN, and AUGUSTUS N. HAND, Circuit Judges.

SWAN, Circuit Judge.

This is an appeal by the plaintiff from a judgment of dismissal. The plaintiff, a New York corporation is the grantee of patent No. 2,114,718 issued April 19, 1938 upon an application filed by Sol J. Levy, the assignor, on May 23, 1936, for "two-way intercommunicating loud speaker system for power circuits." The defendants are Radio Corporation of America and its subsidiary RCA Manufacturing Company, each a Delaware corporation. Count one of the complaint charges infringement of the patent and count two unfair competition. After trial to the court the complaint was dismissed.

Although the only substantial questions raised by the appeal relate to the cause of action for patent infringement, it will be convenient to dispose first of the contention that the court erred in dismissing the count for unfair competition. At the opening of the trial plaintiff's counsel moved to defer the taking of evidence on the second count. When this was denied, he suggested withdrawal of the second cause of action without prejudice. This was also denied. Counsel then consented to a dismissal with prejudice, and the court so ordered. At the end of the trial the court again interrogated plaintiff's counsel to make sure that he understood that the dismissal was to be with prejudice. Having consented to a final dismissal of the unfair competition count, it is utterly fatuous to suppose that this part of the judgment can be reversed on appeal. Pacific R. R. v. Ketchum, 101 U.S. 289, 295, 25 L.Ed. 932; Marks v. Leo Feist, Inc., 2 Cir., 8 F.2d 460, 462.

In dismissing the cause of action for patent infringement, the district judge wrote an opinion and made findings of fact and law. He held claims 2 and 4 of the patent, the only claims in suit, to be invalid because (1) Levy was not the inventor of the device they described, and (2) such device did not constitute a patentable invention over the prior art. Since the claims were held invalid, the court did not pass upon the question of infringement.

The claims in suit are substantially the same and it will suffice to quote claim 4:

"4. A unitary transmitting and receiving carrier frequency communication apparatus for use on electric power line circuits and other metallic transmission media comprising in combination common means for both transmission and reception, said means including a carrier frequency oscillator, means including amplifying means and a translating device for modulating said carrier frequency oscillator, means including switching means for connecting for transmission purposes the output of said oscillator to said metallic transmission media, and for connecting for reception purposes the metallic transmission media to the input of said modulating means and for switching said amplifying means and translating device into the output of said modulating means, whereby the modulated carrier frequencies received from said metallic transmission media are demodulated and reproduced in said translating device."

The apparatus depicted is a set of portable units like ordinary inter-office communication sets, but designed to "plug in" to any electric light or power circuit and use the latter for both power and transmission. Sets in use at this time required separate connecting wires between the units for transmission, e. g., the DeWald "Electro-Call" of the Glaser patent No. 2,087,027. The appellant's brief states that Levy's invention consisted in "the introduction into this Glaser combination of the radio or carrier frequency element (by means of the oscillator) and making the latter do double duty as an oscillator-detector" (by reversing the switch), and using "the line coupling means for both power and signals." We shall accept this statement of the alleged invention and proceed to a consideration of the district court's findings that Levy, the claimed inventor, "did not design" the so-called "Levy device" and that this "was really devised" by Bagno, Posner and Sadowsky.

By a letter dated January 14, 1936 (exhibit 1) Levy and his attorney Mr. Gatter made an agreement "Re Portable Inter-communicating Microphone Loud Speaker Amplifying for Power Circuit House and Office Connections." Mr. Gatter was to arrange financing and take care of legal work and preliminary expenses and Mr. Levy was "to arrange to have work done, give patents and help when required"; and they were to "go fifty-fifty on deal". Mr. Levy, whose testimony impressed the trial judge as showing only a superficial knowledge of electricity, went to Sadowsky, a radio engineer, exhibited to him a circular of the DeWald Electro-Call apparatus and asked whether he could build a device that would perform as the Electro-Call did without any wires connecting the two units. Sadowsky then...