American Graphophone Co. v. Victor Talking Mach. Co.

• Decision Date: 12 December 1910
• Docket Number: 87.
• Citation: 183 F. 580
• Parties: AMERICAN GRAPHOPHONE CO. v. VICTOR TALKING MACH. CO. et al.
• Court: U.S. Court of Appeals — Second Circuit

183 F. 580

AMERICAN GRAPHOPHONE CO. v. VICTOR TALKING MACH. CO. et al.

No. 87.

United States Court of Appeals, Second Circuit.

December 12, 1910

Ralph L. Scott (R. N. Dyer and C. A. L. Massie, of counsel), for plaintiff in error.

Stimson & Williams (Horace Pettit, of counsel), for defendants in error.

Before COXE, WARD, and NOYES, Circuit Judges.

WARD Circuit Judge.

The complainant the Victor Talking Machine Company is licensee under the Berliner patent for a talking machine called the 'gramophone.' It obtained an injunction in a suit against the defendant, the American Graphophone Company ((C.C.) 140 F. 860, affirmed 145 F. 350, 76 C.C.A. 180) which the court below has held to have been violated. Claims 5 and 35 of the patent were sustained for the process of reproducing sounds and the apparatus for doing so, being a combination of the Berliner reproducing stylus with sound records which were old.

'5. The method of reproducing sounds from a record of the same which consists in vibrating a stylus and propelling the same along the record by and in accordance with the said record substantially as described.'

'35. In a sound reproducing apparatus consisting of a traveling tablet having a sound record formed thereon and a reproducing stylus shaped for engagement with said record and free to be vibrated and propelled by the same, substantially as described.'

The Graphophone Company is the owner of United States letters patent to Jones, No. 688,739, for the production of the sound records now in universal use. It obtained an injunction in a suit against the Universal Talking Machine Company, one of the Victor Company's subsidiary companies. 151 F. 595, 81 C.C.A. 139.

June 3 1907, the Victor Company and the Graphophone Company, with a view to composing differences and of conferring mutual licenses, entered into an agreement which recites that the Victor Company has a license 'to manufacture, sell, and deal in gramophones and gramophone goods' under the Berliner patent, and the Graphophone Company is desirous of operating under the said patent, also that the Graphophone Company is owner of the Jones patent and the Victor Company is desirous of operating thereunder, and then confers by implication upon each the right to 'operate' under the patent of the other with three reservations, viz.: First that neither party shall counterfeit nor copy any record owned or controlled or first produced by the other nor deal in nor handle such copies if made by others; second, no right is conferred upon the Graphophone Company to use the word 'gramophone,' nor upon the Victor Company to use the word 'graphophone'; third, the rights conferred are nonassignable.

'13. It is further agreed, as to all patents adjudicated or to be adjudicated as valid, that the party owning or controlling such patent or patents will with due diligence actively proceed against all infringers of said patent or patents, to enjoin such infringing parties from said infringements, and for an accounting, when requested in writing to proceed against any such alleged infringers by the other party hereto.

'14. Each of the parties hereto shall, through their counsel, when requested by the other party, assist such other party in prosecuting infringements of said patents, sustained or to be sustained, after the same has been sustained, when so requested in writing, each party bearing the expense of its own counsel; it being understood that the direction and...