American Graphophone Co. v. Gimbel Bros.

• Decision Date: 02 June 1916
• Docket Number: 11/176.
• Citation: 234 F. 344
• Parties: AMERICAN GRAPHOPHONE CO. v. GIMBEL BROS.
• Court: U.S. District Court — Southern District of New York

234 F. 344

AMERICAN GRAPHOPHONE CO. v. GIMBEL BROS.

No. 11/176.

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

June 2, 1916

C. A L. Massie and Ralph L. Scott, both of New York City, for plaintiff.

Charles N. Butler, of Philadelphia, Pa., for defendant.

THOMAS District Judge.

This is the usual bill in equity, charging the defendant with infringement by sale of a talking-machine known as 'The Keen-O-Phone' of seven letters patent of the United States, as follows: The Phillips patent, No. 623,925, dated September 12, 1899; the Hawthorne patent, No. 671,625, dated April 9, 1901; the Sheble patent, No. 730,169, dated June 2 1903; the Emerson patent, No. 777,615, dated December 13 1904; the Macdonald patent, No. 830,446, dated September 4 1906; the Kraemer patent, No. 899,874, dated September 29, 1908; and the Macdonald patent, No. 957,694, dated May 10, 1910. The bill charges that the alleged inventions described in the patents are capable of conjoint use, and are conjointly used by the defendant, and this allegation is not controverted. The answer denies the validity and infringement of each of the patents.

I. The Phillips Patent, No. 632,925.

The invention of this patent is described in the specification as relating-- 'to a new and useful music-cabinet designed for use in connection with a music-producing mechanism; and the objects of the invention are: First, to furnish a new and improved case or cabinet for supporting the mechanism such as is ordinarily used in music-boxes, and at the same time to furnish pockets or receptacles, for the disks or tune-sheets used in connection with such music-boxes and for sheets of music, if required; and, second, to so construct the cabinet as to give improved tone to the music of the character described,' and 'is adapted for use in connection with that class of musical instruments which are worked automatically and which use a music-disk or tune-sheet which is adapted to revolve, bringing either openings or projections in contact with the fingers or operating comb-teeth.'

The patent contains two claims, and infringement of each of them is charged. These claims are as follows:

'1. In a music-cabinet, the combination of a series of pockets or receptacles adapted to receive the music-disks when not in use, a sounding-board placed above such receptacles, a horizontal partition above the said sounding-board, a space between said horizontal partitions and said sounding-board for the reception of the operating mechanism, and a space above said horizontal partition in which latter space the music-disk is adapted to revolve.

'2. The combination of a series of pockets or receptacles adapted to receive the music-disks when not in use, a sounding-board above said pockets or receptacles, an arch E, a horizontal partition above the arch E, said arch E extending from the sounding-board to the said partition, a space between the partition and the sounding-board for the reception of the operating mechanism, a space above said horizontal partition for the reception of the disks when in operation, a door adapted to close said pockets or receptacles which receive the music-disks when not in use, and a lid adapted to close the space above the horizontal partition, all substantially as described.'

The defendant has introduced in evidence several prior patents and several prior uses showing musical constructions and pockets for holding music upon which it bases the contention: First, that the claims of the patent are simply a bringing into juxtaposition of old devices from the prior art; and, second, that when so brought together in the patent in suit, there is no co-operation or coaction between them, and no double effect is produced or double duty performed by the combined result. The test in all cases of this kind is, Does the result come from the combined effect of the several parts, or simply from the separate action of each? If the former, it is patentable; if the latter, it is not. Reckendorfer v. Faber, 92 U.S. 347, 23 L.Ed. 719; Pickering v. McCullough, 104 U.S. 318, 26 L.Ed. 749; Barnes v. Vandyck-Churchill Co., 213 F. 636, 130 C.C.A. 300; Regina Co. v. New Century Music Box Co. (C.C.) 138 F. 903; Hailes v. Van Wormer, 20 Wall. 353, 22 L.Ed. 241.

It does not appear that the claimed 'series of pockets or receptacles adapted to receive the music-disks when not in use,' which is an indispensable element of each of the claims, has any functional relation to the 'sounding-board' or 'the space between said horizontal partition and said sounding-board for the reception of the operating mechanism,' or the 'space above said horizontal partition in which latter space the music-disk is adapted to revolve.'

Furthermore, 'the series of pockets or receptacles adapted to receive the music-disks when not in use' are confessedly old, and perform no different function in the combination of the patent in suit than they did in the old devices from which they were taken, and the case is clearly the adaptation of an old device to an analogous purpose in practically the same art, with the required and self-suggested changes. If it is, it is clearly a double use, and not patentable. Brown et al. v. Piper, 91 U.S. 37, 23 L.Ed. 200; Atlantic Works v. Brady, 107 U.S. 192, 2 Sup.Ct. 225, 27 L.Ed. 438; Seiler v. Fuller & Johnson Mfg. Co., 121 F. 85, 57 C.C.A. 339; Western Electric Co. v. La Rue, 139 U.S. 601, 11 Sup.Ct. 670, 35 L.Ed. 294.

II. The Hawthorne Patent, No. 671,625.

The invention of this patent relates 'to phonographs, graphophones, and similar machines the object being to secure adjustments of the recorder, reproducer, and shaving knife relatively to the phonogram blank or the sound record cylinder. ' The purposes of the patentee are explained by his description in his specification, as follows:

'It is evident from the construction that whatever may be the diameter of the sound-record cylinder the recorder, reproducer, or shaving-knife carried by the bracket D' may be adjusted radially of said cylinder to accommodate any one of said devices to a cylinder of greater or less diameter. Thus if the machine has been in use with a phonogram or cylinder of small diameter and it is desired to use one of greater diameter or one that is commonly known as 'concert size' the recorder, reproducer, or shaving-knife may be adjusted radially outward to accommodate said device to the larger phonogram or cylinder. Of course a reverse adjustment may be used when changing from a large to a smaller phonogram or cylinder. It will also be seen that according to the construction above described the recorder, reproducer, or shaving-knife may be adjusted lengthwise of the arm B, according to the character of the record to be made or reproduced. For example, if a light engraving of the sound-record is required, a better result is obtained by placing the recorder substantially in the position shown in Fig. 1, and the reproducer should occupy the same position when it is in use. If a heavy engraving is required, such as a record of a band, it is better to place the recorder at the right-hand end of arm B, or at the back of the phonogram-blank, as in such position the limiting-weight or the weight of the diaphragm bears heavier on the recording-stylus, and hence a deeper cut will be made.

'With the heavy engraving the reproducer may be thrown to the back of the phonogram, and thus the angle best suited to a proper reproduction secured. Again, it may be found desirable to place the recorder or reproducer at the front of the cylinder for certain records. With the present form of adjustment it is possible, by moving the recorder or reproducer along the arm B, to ascertain precisely the position of the said devices or either of them, best suited to the work required.'

Only the fifth claim of this patent is in issue, and it is as follows:

'5. In a phonograph or graphophone comprising a sound-record cylinder, an arm supported on the frame of the machine, and embracing the sound-record cylinder, a recording, reproducing, or shaving device supported on said arm, and means to adjust said devices lengthwise of said arm, substantially as described.'

The substantial defense of this claim is that the patent is for a cylinder machine, and that the claim in controversy is specifically limited to a cylinder machine, and by its definite terms to a 'phonograph or graphophone comprising a sound-record cylinder,' while the defendant's machine is one having a spiral record or a flat disk, and that the patent shows and describes a circular supporting arm, B, 'curved on the arc of a circle so as to be concentric with the sound-record cylinder,' without which the machine would be inoperative, and that the claim in controversy is limited to this 'arm supported on the frame of the machine and comprising this sound record cylinder,' and that as defendant's machine has no element that corresponds either in structure, operation, or result to this arm, there is no infringement. The Hawthorne patent clearly belongs to the type shown in Edison patents, No. 465,972, No. 610,706, and No. 437,426, on which Hawthorne has placed the type of device shown in the patent to White, No. 467,530. Whether or not White in his patent, No. 467,530, specifically describes the use or purpose described by Hawthorne, I think it is reasonably clear that the White device is adapted for performing the same purpose as is performed by Hawthorne. Undoubtedly a patentee is entitled to all the uses to which a device can be put, as is the public, but there is clearly, under the authorities, no patentable novelty in a particular double use of an existing device, and the mere fact that the double use produces cheapness, or a better result, or has wider range of use than...