American Communications Co. v. Pierce, 4757.

• Decision Date: 15 January 1954
• Docket Number: No. 4757.,4757.
• Citation: 208 F.2d 763
• Parties: AMERICAN COMMUNICATIONS CO., Inc. v. PIERCE.
• Court: U.S. Court of Appeals — First Circuit

208 F.2d 763 (1953)

AMERICAN COMMUNICATIONS CO., Inc. v. PIERCE.

No. 4757.

United States Court of Appeals, First Circuit.

December 18, 1953.

Rehearing Denied January 15, 1954.

Paul Kolisch, New York City, Robert L. Thompson and Dike, Thompson & Sanborn, Boston, Mass., on the brief for appellant.

Robert H. Rines, Boston, Mass., David Rines and Rines & Rines, Boston, Mass., on the brief, for appellee.

Before MAGRUDER, Chief Judge, and WOODBURY and HARTIGAN, Circuit Judges.

HARTIGAN, Circuit Judge.

This is an appeal from an order of the United States District Court for the District of Massachusetts docketed April 23, 1953, granting plaintiff's motion for partial summary judgment. In his complaint plaintiff alleged infringement of seven patents¹ owned by him, but both parties moved for partial summary judgment under the provisions of Rule 56, F.R.C.P., 28 U.S.C.A. only on claims 51, 52, 54, 55, 56 and 61 to 68 inclusive of the basic patent No. 2,133,642. The district court heard the matter on affidavits, exhibits and documents submitted by both parties. It held that said claims were valid and infringed and granted the plaintiff's motion and denied the defendant's motion.

The application for the basic patent No. 2,133,642 was filed in the Patent Office on February 25, 1924 but because of a subsequent suit² brought against two subsidiaries of one of plaintiff's licensees, a Patent Office Interference³ with one Miller who claimed the same invention as the plaintiff, and divisional rulings by the Patent Office, the basic patent No. 2,133,642 was not issued until October 18, 1938.

Defendant, American Communications Company, Inc., a Massachusetts corporation, first leased in November, 1949 from Federal Telephone & Radio Corporation certain radio transmitting and receiving equipment. The defendant's use of this equipment in the conduct of its business is alleged to infringe patent No. 2,133,642. Federal Telephone & Radio Corporation, named as a defendant, is a Delaware corporation doing business in New Jersey and is the manufacturer and lessor of the accused radio equipment. It has not been served in Massachusetts and has declined to appear voluntarily in this action.

Patent No. 2,133,642, titled "Electrical System", relates to electrical systems in which a vacuum or radio tube circuit is caused to oscillate. The oscillations produced thereby result in alternating currents of electricity which, when the electrical circuit is designed for transmitting purposes, flow in and out of an antenna thereby producing "carrier" waves. It is important that the frequency of the oscillations of the electrical circuit remains substantially constant. This is particularly true when the oscillating circuit is used for radio broadcasting which the district court found to be the primary importance of the patent in suit. A constant transmitting frequency results in the clearer reception of the carrier waves by a receiver "tuned" to that particular transmitting frequency. Also by decreasing the danger of interference from unstable frequency transmitters, a constant transmitting frequency permits the assignment of a greater number of broadcasting stations. The plaintiff in patent No. 2,133,642 claims a method whereby the frequency of oscillating circuits is rendered constant to an extent unobtainable in the prior art. He asserts that when a two-electrode crystal, with the piezo-electrical properties of executing mechanical vibrations under vibratory electrical stimulus and conversely of developing electrical potentials as a result of its mechanical vibrations, was inserted into a non-oscillating single vacuum tube circuit in place of the prior art "tunable" coils and condensers, the piezo-electric crystal both produced and sustained the frequency of the oscillations of the circuit at a substantially constant rate, widely independent of the electrical constants of the system.

The defendant in the lower court relied on the defenses of invalidity, non-infringement, double patenting and laches. In holding for the plaintiff the court found no merit in these defenses. In its oral argument before us the defendant stated its willingness to accept the lower court's statement of facts and contended that in view of such facts there is a clear case of double patenting in this action. In that portion of its opinion dealing with the question of double patenting the district court stated: "The original Pierce patent application Serial No. 695,094 was filed on February 25, 1924. It included not only general claims for the use of a piezo-electric crystal to control the frequency of an oscillating system but also (claims 53, 54 and 57) specific claims for the combination of a radio transmitter and receiver in which such crystals could be used. The Patent Office, holding that more than one invention was described in the application, ordered a division. In compliance with this order Pierce, on January 18, 1928, filed several divisional applications. On one of these, Ser. No. 247,469, patent No. 1,789,496 was issued on January 20, 1931. * * *" This divisional patent covered combined transmitting and receiving systems and expired on January 20, 1948, almost two years before the defendant first leased the accused radio equipment from Federal Telephone & Radio Corporation.

In plaintiff's expired patent No. 1,789,496 three claims are specified.⁴ Neither claim 1 nor claim 3 reveal the plaintiff's distinctive contribution to the art of frequency stabilization. The plaintiff states in his brief that the prior art piezo-electric-crystal-controlled oscillators shown in the Cady patent No. 1,472,583 may be used as an element in the combined transmitting and receiving system specified in claim 1. Claim 3 is even broader, covering any kind of prior art electro-mechanical vibrator. Claim 2, however, sets forth the plaintiff's distinctive contribution to the art of frequency stabilization in combined transmitting and receiving systems. By specifying the use of a two-electrode electro-mechanical vibrator in a single vacuum tube circuit, which circuit oscillates at a frequency widely independent of the other elements in the circuit and only upon the insertion of the vibrator, the plaintiff claimed a significant improvement over the prior art frequency-controlled oscillating circuits.

The defendant asserts, and we do not understand the plaintiff to deny, that claim 2 of expired patent No. 1,789,496 reads upon the accused structures. The circuit diagrams of the defendant's accused receivers shown in the "Instruction Books for Radio Equipments FT-149-30AZ and FT-145-10A", simplified in plaintiff's exhibit XVIII-B, are, for the purposes of frequency stabilization, substantially the same as the receiver circuit diagrams of Figs. 1 and 3 of patent No. 1,789,496. The three-electrode vacuum tube marked V65 in plaintiff's exhibit XVIII-B corresponds to the three-electrode vacuum tubes 124 of Figs. 1 and 3 of patent No. 1,789,496. The piezo-electric crystal Y1 of exhibit XVIII-B corresponds to crystal 2 of Figs. 1 and 3 of patent No. 1,789,496. The condenser C27 in exhibit XVIII-B is merely a conventional output path for the oscillations generated by the circuit and does not affect the operation of the oscillator circuit itself. Condenser C66 and inductance L65 of exhibit XVIII-B represent a parallel tuned resonant circuit in the output circuit of the oscillator and correspond to the inductance coil 40 of Fig. 3 of patent No. 1,789,496. Although there is no condenser shown parallel to the inductance coil 40 of Fig. 3, nevertheless, as is well-known in the art, inherent capacitance is present across the inductance coil 40. The source of electrical energy designated B+ in exhibit XVIII-B produces upon the plate of vacuum tube V65 a positive voltage potential and corresponds to the battery 32 of Figs. 1 and 3. The telephone receiver 42 and the bypass condenser 44 in the plate circuit of Figs. 1 and 3, as the plaintiff states in patent No. 1,789,496 are optional and may be replaced by an inductance, or by the primary winding of a transformer, or by the input terminals of an amplifier, or may be wholly short-circuited. The condenser C69 in the grid-cathode circuit of exhibit XVIII-B is not, as plaintiff's expert Professor Bowles states, essential to the generation of oscillations in the oscillator circuit. The only significant diagrammatic variation in these circuits seems to be in the position of the piezoelectric crystal in the receiver of Fig. 1 of patent No. 1,789,496. The crystal is there placed in the plate-cathode or output circuit, whereas in the other circuit diagrams the crystal is positioned in the grid-cathode or input circuit. However, plaintiff states in his patent No. 1,789,496, p. 1, lines 85-94 inclusive:

"The electromechanical vibrator, shown as a piezo-electric body 2, is differently disposed in the different diagrams, so as to illustrate a few of the many different ways in which the vibrator may be employed. It is to be understood, however, that the vibrator disposition, in a particular diagram, is not specific to that diagram, but that the vibrator may be similarly disposed in the other diagrams. * * *"

Also by a similar comparison of the transmitting circuits of radio equipments FT-149-30AZ and FT-145-10A, simplified in plaintiff's exhibits XIX-B and XX-B respectively, with the transmitting circuit of Fig. 1 of patent No. 1,789,496, it will be seen that the circuits are, in all material aspects, substantially identical.

Plaintiff contends, however, that claims 51, 52, 54, 55, 56 and 61 to 68 inclusive of the unexpired patent No. 2,133,642 also read upon the accused structures. He must show, therefore, that, in relation to the accused structures, patent No. 2,133,642 was granted for a distinct and separate invention from that of expired patent No. 1,789,496, for, as was stated in Miller v. Eagle Manufacturing Co., 1893, 151 U.S. 186, 198, 14 S.Ct. 310,...