American Bell Tel. Co. v. National Mfg. Co.

• Decision Date: 24 June 1901
• Docket Number: 653,655.
• Citation: 109 F. 976
• Parties: AMERICAN BELL TEL. CO. v. NATIONAL TEL. MFG. CO. et al. SAME v. CENTURY TEL. CO. et al.
• Court: U.S. District Court — District of Massachusetts

109 F. 976

AMERICAN BELL TEL. CO. v. NATIONAL TEL. MFG. CO. et al.

SAME v. CENTURY TEL. CO. et al.

Nos. 653, 655.

United States Circuit Court, D. Massachusetts.

June 24, 1901

[Copyrighted Material Omitted]

Fish Richardson & Storrow, for complainant.

Edward P. Payson, for defendants National Tel. Mfg. Co. and others.

James E. Maynadier, for defendants Century Tel. Co. and others.

Robert S. Taylor, for defendants in the interest of Williams Electric Mfg. Co.

(February 27, 1901.)

BROWN District Judge.

The decree in these cases must be for the defendants.

A.

I find the Berliner patent invalid:

1. Because, at the date of the application, June 4, 1877 Berliner had not made the invention covered by the patent issued to the American Bell Telephone Company on November 17, 1891. Berliner's application says, of the instruments shown in the drawing of the patent: 'These simple instruments will reproduce any musical sound uttered in the neighborhood of one of them; but for the reproduction of special sound, such as speech, they are not adapted. ' A clear statement of the reasons is given, the statement is repeated, and it is said also of sound waves: 'Nothing of the nature of each wave and the shape of their curves is recorded. ' He states that he accomplishes this by apparatus operating to make and break the circuit. His model and drawings, as well as the text of his application, show that he intended to transmit speech by the erroneous method of interrupting the contact of electrodes and breaking the current. This document stands, in this case, as evidence on the question of invention, exactly as it was written. It is conclusive evidence that Berliner had not invented, and did not intend to apply for a patent for, a constant-contact speech transmitter. The complainant's attempt to show that statements contained in this document were inserted through the mistake of a solicitor's clerk is a failure. I am convinced that this is not true. I find, as a matter of fact, that Berliner did not, before June 4, 1877, succeed in transmitting speech, but, on the contrary, was convinced by his experiments that speech could not be transmitted by the apparatus of the patent in suit. I find also that he did not at that date intend to describe or claim the apparatus as a speech transmitter. In view of the original application, the complainant's case cannot be established without proof of successful experiments by Berliner. The invention set forth in the patent lay in experiment. In inventions of this class, the true date of conception is the date at which the experiment succeeds. The complainant concedes that Berliner did not make new apparatus, but reproduced substantially the old Reiss apparatus. Proof that the Reiss apparatus, or Berliner's apparatus, or the Morse key, is operative in the hands of experts, does not establish invention by Berliner. He is not entitled, as an inventor of apparatus, to claim whatever may be found to be within its capacity, because his sole claim to invention is based upon an alleged discovery of a new capacity in old apparatus. If he did not discover this, nothing new remains that he did discover or invent. He did not 'embody' an invention in apparatus unless he succeeded in making the old apparatus perform Bell's process upon the current. The complainant has not proved that Berliner's apparatus will transmit speech under the conditions existing at Berliner's experiments. Berliner's caveat of April 14, 1877, does not establish invention, and does not count as a reduction to practice. It proves a project. Later caveats, the application, the record in the patent office, and other evidence show the failure and abandonment of this project. Complainant's experts agree that what was stated in Berliner's caveat of April 14, 1877, would at that date have been deemed by scientific men impracticable, and that it could not have been predicted upon scientific or theoretical grounds. In the Telephone Cases, 126 U.S. 545, 8 Sup.Ct. 778, 31 L.Ed. 863, the supreme court said of an experimenter: 'It was not until after Bell's success that he found out how to use the Reiss instrument so as to make it transmit speech. Bell taught him what to do to accomplish that purpose. ' Also it was said: 'It was left for Bell to discover that the failure (of Reiss) was due not to workmanship, but to the principle which was adopted as the basis of what had to be done. ' If it was obvious to Berliner, or to persons skilled in the art, upon a reading of Bell's patent, that the Reiss apparatus could perform Bell's process, then the case fails as to invention. If what Berliner wrote in his caveat was obvious without experiment, Bell 'taught him what to do to accomplish that purpose. ' The complainant avoids the defendants' point that Berliner made no invention in using Reiss' old machine by Bell's old method by evidence that it was not known that such changes as could be effected between solid electrodes would vary the current sufficiently or in the desired proportion. This required discovery through experiment. The complainant's contention that its case can be established irrespective of experimental results is therefore untenable. To claim that Berliner made an invention because scientific men would have deemed it impracticable to practice Bell's method with solid electrodes, and because it was wholly unknown that the current could thus be made to vary in the proper proportions, and also in the same case to claim that Berliner, in writing his caveat, must, as an inventor, have perceived that his project was necessarily true, and that experimental verification was not necessary, is highly inconsistent. The complainant's case as to invention must rest upon the ground that what was stated in the caveat was not obviously and necessarily true, that experimental verification was necessary, and that Berliner did verify his project by successful experiment, resulting in discovery of facts before unknown. The proof is strong to the contrary. It is largely documentary and contemporaneous, and is not met by the inconclusive, argumentative, and wholly unsupported oral testimony of Berliner, given years after the filing of the application. The absence of any corroboration from the numerous persons who are said to have witnessed Berliner's experiments, and the failure to account for the nonproduction of witnesses, is a strong fact against the complainant.

2. Because the invention described in the patent is radically different from the invention described in the application. A comparison of the two documents leaves no doubt on this question. The application expressly disclaims speech transmission by the instrument of the patent, and claims as a speech transmitter a double-pin instrument, operating to make and break the contact of electrodes. The patent calls for constant contact of electrodes and an unbroken current; the application, for an interrupted contact and a broken current. The decision of the supreme court in the Telephone Cases shows the substantial difference between these methods of operating on the electric current. The original application, by changes purporting to be amendments, has been completely transformed into an application for a distinct invention. This transformation is of the most remarkable character, and was made after Edison's carbon constant-contact speech transmitter was invented and described in a printed publication. Such amendment is illegal, even if Berliner had made the invention before June 4, 1877. The amendments made prior to 1880 cannot support the patent, as they did not introduce constant contact of electrodes. If they did, they are illegal, as introducing a different invention. A constant-contact speech transmitter is first sufficiently described and claimed, if at all, in the rewritten specification of 1880. The invention had then been in public use for more than two years, i.e. from June, 1878. There is no legal application to support this patent.

3. Because the invention was previously patented by Berliner. Berliner, in 1880, took out a patent which covered the speech transmitter of the patent in suit, applied to its appropriate use in a 'system,' i.e. with a receiver. Claim 4 of this patent is not in terms or in fact for a combination, since the transmitter is a system part or relative part, and it does not constitute a 'combination,' in the sense in which that term is used in patent law, to put a system part into a system for which it is designed; to put a relative instrument into its intended relation, without invention in so doing. This is but application to appropriate use. The effect of claim 4 of the 1880 patent was to give a monopoly of this instrument, applied to its appropriate use, without additional invention in making this application. By granting the patent of 1880, the commissioner exhausted his power to issue a second patent, whereby the patentee could control all use of this instrument as a transmitter. Having been protected for 17 years in the use of this transmitter with one receiver, Berliner was not entitled to further protection for use with any and all receivers. I agree with the conclusion of Judge Carpenter on this point in U.S. v. American Bell Telephone Co. (C.C.) 65 F. 86.

4. Because Edison was the prior inventor. Berliner's amendments must bear date as of the date of filing. August 8 1877, is the earliest date of amendment affecting this controversy. Berliner's amended application is anticipated by Edison's application of July 20, 1877, and by the Philadelphia Press article of July 9, 1877. The burden of proof is upon the complainants to anticipate Edison. They cannot sustain it. Assuming Berliner's application to date as of June 4, 1877, he is anticipated by Edison's...