American Graphophone Co. v. Leeds

• Decision Date: 18 June 1898
• Citation: 87 F. 873
• Parties: AMERICAN GRAPHOPHONE CO. v. LEEDS et al.
• Court: U.S. District Court — Southern District of New York

87 F. 873

AMERICAN GRAPHOPHONE CO. v. LEEDS et al.

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

June 18, 1898

Philip Mauro, for complainant.

William Houston Kenyon and A. Parker Smith, for defendants.

SHIPMAN Circuit Judge.

This bill in equity relates to the alleged infringement of claims 19, 20, 21, 22, 23, 24, 37, and 38 of letters patent No 341,214, dated May 4, 1886, issued to Chichester A. Bell and Sumner Taintor for an improvement in recording and reproducing speech and other sounds; in other words, for the instrument now known as the 'Graphophone.' These claims are as follows:

'(19) The combination, with a reproducing style, of a mounting therefor, which leaves said style free to move laterally and thereby adjust itself automatically to a sound record substantially as described. (20) The reproducer loosely mounted on a suitable support, so that the reproducing style is capable of a lateral movement, and may, in consequence thereof, adjust itself automatically on the record, substantially as described. (21) The reproducer mounted on a universal joint, and held against the record by yielding pressure, substantially as described. (22) The combination, with a grooved tablet or other body having a sound record formed therein, of a reproducer having a rubbing style loosely mounted, so that it is free to move laterally, and thus adjust itself to the groove, substantially as described. (23) The combination, with the tablet or other body having the sound record formed therein as an irregular groove with sloping walls, of a reproducer having a style for rubbing over said record, and mounted on a universal joint, substantially as described. (24) The combination, with a sound record formed in wax or a wax-like material, of a reproducer having a rubbing style for receiving sonorous vibrations from said record, substantially as described. ' '(37) The reproducer mounted on a hinged arm, and provided with a sound conveyer extending lengthwise of said arm, substantially as described. (38) The reproducer mounted on a hinged arm, and provided with a sound conveyer extending lengthwise of said arm, and connected at the hinge with an exterior sound conveyer, substantially as described.'

Prior to the patent in suit there had appeared the French patent to Charles Cros, No. 124,213, dated May 1, 1878; an article in Le Rappel, dated December 14, 1877, in regard to the Cros device; an article in the Journal Cosmos, in December, 1878, describing the phonograph of the Abbe Carbonel; and articles in 1879 describing Lambrigot's phonograph; and there had also appeared Edison's phonograph, described to some extent in his United States letters patent dated February 19, 1878.

The French devices were complicated, and, outside of experimental and scientific investigation, were of no value as practical instruments. From the Edison phonograph much was anticipated. It closed radical defects, and it ceased in 1880 to have a position as an article of ordinary use. The record was made by indentation upon a surface of yielding material, such as paper saturated or coated with something like paraffin, and a sheet of metal foil, or tin foil, over the underlying sheet. The tin foil received an impression from a rigid diaphragm having an indenting point secured to its center. The great difficulty arose from the pliable character of the material upon which the record was attempted to be made. As stated by Mr. Taintor, the indenting point bent the tin foil down and around the point of contact, and distorted the indentations. The record was perishable, and easily obliterated, and was easily injured when removed from the machine, and after a short trial the tin-foil indenting process fell into disuse. The experiments of the patentees of the patent in suit commenced in 1881, and resulted in the abandonment of any process of indentation, or of embossing, upon a pliable material, and in the substitution therefor of the cutting or the engraving the record in the form of a groove with sloping walls in a waxy substance, without fiber, and slightly cohesive, in which a clean cut could be made. It was found necessary that the material should be cut or engraved at the point of the blade, and that it should be capable of being readily removed in chips or shavings. The rigid reproducer was also abandoned, and a loosely mounted reproducer was substituted in its place, so loosely mounted that, resting against the recording material by gravity, it was guided by the record, and followed all the elevations and depressions in the groove. The material of the record and the reproducer are each necessary parts of the invention. Either part without the other would be ineffectual but in combination both tend to make an operative and successful instrument. Judge Grosscup, who did not think that the reproducer by itself was patentable, attributed great value to its combination with the waxy record. He said in the Amet Case:

'The substance upon which the record is cut, and the reproducer thus loosely mounted, by which it is enabled to follow the undulations of the groove, together constitute an effective portion of the mechanism. Either, without the other, would be useless for the purpose of a graphophone or phonograph.

Together they bring about a successful result. They therefore constitute a patentable combination.' 74 F. 789.

This peculiarity of the dual invention of the material for an engraved record and the reproducer, and the fact that the latter was brought into being to make the former of practical value, is of much importance in the proper construction of the quoted claims of the patent, if it should be held that the reproducer alone, though novel, is not patentable. The defenses are numerous, and extend to the details of the specification.

The first position...