American Bell Telephone Co. v. Globe Telephone Co.

• Decision Date: 19 July 1887
• Citation: 31 F. 729
• Parties: AMERICAN BELL TELEPHONE CO. v. GLOBE TELEPHONE CO. and others.
• Court: U.S. District Court — Southern District of New York

31 F. 729

AMERICAN BELL TELEPHONE CO. v. GLOBE TELEPHONE CO. and others.

United States Circuit Court, S.D. New York.

July 19, 1887

E. N Dickerson and J. J. Storrow, for complainant.

D Humphries and S. R. Beckwith, for defendants.

WALLACE J.

The complainant has filed this bill to restrain infringement of the patent granted by the United States to Alexander Graham Bell, dated March 7, 1876, No. 174,465, for improvements in telegraphy. Infringement is also alleged of the United States patent to Bell, No. 186,787, dated January 30, 1877, for improvements in electric telephony; but the proofs have not been addressed to the question of the infringement of this patent, and it is practically out of the case. The fifth claim of the first patent has been judicially construed in two cases by the circuit court for the district of Massachusetts, and in both of these cases it was substantially held that Bell was the discoverer of the new art of transmitting speech by electricity, and that the claim should receive the broadest interpretation to secure to the inventor, not the abstract right of sending sounds by telegraph without regard to means, but all means and processes described which are essential to the application of the principle. American Bell Telephone Co. v Dolbear, 15 F. 448; Same v. Spencer, 8 Fed.Rep. 509. This court, in American Bell Telephone Co. v. Molecular Telephone Co., followed the construction thus placed upon the claim. 23 Blatchf. 253, 32 F. 214.

The proofs for the complainant show that the apparatus, which it is alleged has been used and offered for sale by the defendants, embodies the means and process for transmitting speech by electricity which are the subject of the fifth claim of the patent to Bell; and no evidence has been introduced by the defendant to controvert this fact.

The defendants answer separately. The answer of the Globe Telephone Company and of the defendant Rogers consists merely of general and specific denials of the averments of the bill. The answer of the defendant Meucci alleges that he was the first and prior inventor of the telephone; that in 1871, by a series of improvements and experiments in telephony, he had perfected a perfect speaking telegraph, which comprised all the electrical principles since known in the art of telegraphy; that he has never made, used, or sold any telephones or speaking telegraphs for any purpose whatever, except that for more than 24 years he has had, during most of the time, at his residence at Staten Island, a speaking telephone for domestic use; that prior to 1876 he endeavored to introduce the invention of said telephones into public use, but, by reason of his poverty, was unable to do so; and to that end did cause the same to be published in the newspaper the Eco d'Italia, and did endeavor to secure the assistance of others by making known to them his said invention. The answer of the defendant Beckwith consists of a general denial of the averments of the bill, and sets up the priority of the invention of Meucci.

Inasmuch as none of the defendants set up, by way of defense, any prior patents, publications, or instances of prior invention or public use, except the prior invention of Meucci, and their proofs consist only of evidence of Meucci's invention, and evidence to show that they have never used, manufactured, or sold electric speaking telephones, or procured or assisted others to do so, it is unnecessary, and would be extraneous to the real questions in the case, to consider the point, made in the brief of the counsel for one of the defendants, that the fifth claim of Bell's patent of 1876 is not entitled to the broad construction which has heretofore been given to it by the courts. The only questions really involved are whether the acts of the defendants are an infringement of the exclusive rights of the complainant to manufacture, use, and sell the electric speaking telephone, and whether the proofs establish the defense that Meucci was the prior and original inventor of that apparatus.

The bill was filed November 10, 1885. At that time the Globe Company had been incorporated about two years and a half. It was a New York corporation. Its certificate of incorporation recites that the objects for which the company is to be formed are to 'manufacture, sell, license, and lease telegraphic, telephonic, and electric instruments, and supplies therefor of every description, and to acquire, by purchase or license or otherwise, and dispose of by sale, license, or otherwise, patents, patent-rights, and inventions relation thereto, and incidental to the manufacture of said instruments and supplies. ' In August, 1885, the defendant Beckwith became the general manager of that company. At that time he was interested in an invention patented in England known as the 'Bassano-Slater telephone,' and had agreed with the owners to procure a patent for the invention in this country, and had the right to use and introduce the invention here. That company was the owner of patents which had been issued to Shaw and to Hadden for inventions in telephonic instruments.

When Beckwith became manager, the company entered into a written agreement with him by which it promised to use the Bassano-Slater invention in its business, unless by subsequent agreement the parties should agree to substitute other inventions. Beckwith was to have a large share of the profits of the company. It was also agreed between Beckwith and the company that the latter would secure, 'for purposes of defense, the so-called Antonio Meucci claims evidenced by caveat filed in the United States patent-office. ' From the time Beckwith became manager until this suit was brought the company seems to have been mainly engaged in advertising its pretensions as a competitor of the American Bell Telephone Company in trying to procure money, and in endeavoring to enlist others to become purchasers or licensees of its rights in telephone inventions. It had a capital stock of nominally $100,000,000, and but very little real capital. Its officers soon became aware that its patents were worthless, unless the Bell patent could be invalidated. It had not manufactured any telephone instruments, nor did it have any for sale, but it had in its office certain instruments, the history of which is stated by Mr. Brown, one of its directors. He testifies as follows: 'At a board meeting I raised the question, 'have we got any instruments of any king?' and it was stated by Mr. Beckwith that we had the Bassano-Slater instruments. The Shaw and Hadden were both infringements upon the Bell, and could not be used. It was then suggested by Mr. Beckwith that we could use the Bassano-Slater instruments; that we could use them in connection with the Meucci instruments, and it would make a first-class instrument. Then I think the question came up before the board in reference to having made a set of instruments for a sample set, to have in the office to show what they were, as we had nothing. I think I stated at that time that as long as I had been a member of the company I had not seen anything that looked like an instrument to show anybody. At that meeting there was an order issued by the board authorizing Mr. Beckwith to have made a set of sample instruments, such as he deemed proper and sufficient for testing, for samples, to have in the office to be exhibited. ' These instruments were put up in the office of the company in the Mills Building, on Broad street, New York city, by Beckwith, and connected with the office of Mr. Hadden, the electrician of the company across the street. They were used for several weeks to communicate with Mr. Hadden, and for the purpose of illustrating to others what telephones the company proposed to introduce to compete with the American Bell Telephone Company.

During all this time the officers of the company were unwilling to commit it to any acts of open infringement of the Bell patents, fearing that the Bell Company might obtain an injunction, and thus embarrass their operations. But they were holding themselves out to the public as the owner of patents which would protect the purchasers or licensees against the claims of the Bell Company, and as prepared to furnish to purchasers or licensees telephone instruments made in accordance with such patents. In September, 1885, the company issued a circular, in which it recited the history of the first Bell patent, and the discovery of the prior invention of Meucci. The circular stated that the company was able to fully substantiate the fact that Meucci was the first inventor, and that, besides...