Armstrong v. Motorola, Inc.

• Decision Date: 14 May 1964
• Docket Number: No. 54 C 19.,54 C 19.
• Citation: 141 USPQ 862,230 F. Supp. 337
• Parties: Esther Marion ARMSTRONG, Executrix, Plaintiff, v. MOTOROLA, INC., Defendant.
• Court: U.S. District Court — Northern District of Illinois

230 F. Supp. 337

141 USPQ 862

Esther Marion ARMSTRONG, Executrix, Plaintiff, v. MOTOROLA, INC., Defendant.

No. 54 C 19.

United States District Court N. D. Illinois, E. D.

May 14, 1964.

Dana M. Raymond, Brumbaugh, Free, Graves & Donohue, New York City, George N. Hibben, Davis, Lindsey, Hibben & Noyes, Chicago, Ill., for plaintiff.

Mueller & Aichele, Foorman L. Mueller, George Aichele, Chicago, Ill., of counsel, for defendant.

ROBSON, District Judge.

FINDINGS OF FACT

I. NATURE OF ACTION AND PLEADINGS

1. This is an action under the patent laws of the United States for infringement of the following three patents:

a. Patent No. 1,941,066 (hereinafter called the '066 patent), issued December 26, 1933, to Edwin H. Armstrong on an application filed July 30, 1930. Plaintiff relies on claims 8, 9 and 10.

b. Patent No. 1,941,069 (hereinafter called the '069 patent), issued December 26, 1933, to Edwin H. Armstrong on an application filed January 24, 1933. Plaintiff relies on claims 1 and 2.

c. Reissue Patent No. 21,660 (hereinafter called the Reissue patent) issued December 17, 1940, to Edwin H. Armstrong on a reissue application filed October 21, 1940. This is a reissue of original Patent No. 2,215,284, issued September 17, 1940, on an application filed February 19, 1940. Plaintiff relies on claims 1, 2, 4 and 6.

Patents '066 and '069 had expired on December 26, 1950, and the Reissue expired September 17, 1957.

2. The complaint, filed on January 6, 1954, charges Motorola, Inc., with infringing, during the six years preceding the filing of the complaint and until their expiration, Letters Patent Nos. 1,941,066, 1,941,069 and Reissue 21,660. The complaint also charges infringement of United States Letters Patent Nos. 1,941,068 and 2,098,698. Plaintiff dropped her charge of infringement of such patents, and at the trial the Court on January 3, 1962, granted a motion to dismiss with respect to U. S. patents Nos. 1,941,068 and 2,098,698 (Trial Record 5101-2).

3. The answer, filed on January 6, 1956, raises the defenses of noninfringement, license, invalidity of the patents in suit and laches.

II. THE PARTIES

4. Plaintiff is Esther Marion Armstrong, the widow and Executrix of the Last Will of Edwin Howard Armstrong, the original plaintiff in this action. Major Armstrong died on February 1, 1954. He was the sole owner of the three patents in suit. After a ruling on a contested motion, Esther Marion Armstrong was substituted as plaintiff by orders of this Court dated March 28, 1955, and April 12, 1955.

5. Defendant is Motorola, Inc. (prior to 1947 being known as Galvin Manufacturing Corporation and herein referred to as Motorola), an Illinois corporation organized in 1928, having a place of business in the City of Chicago, within the Northern District of Illinois, Eastern Division.

III. RADIO APPARATUS INVOLVED IN THIS ACTION

6. Plaintiff charges infringement of the three patents in suit by virtue of the manufacture and sale by Motorola of the following radio apparatus:

a. The frequency modulation broadcast receiver included in chassis HS87 for Motorola AM-FM radios, referred to herein as "HS87" (Plaintiff's Exhibit 25);

b. The frequency modulation broadcast receiver included in chassis HS89 for Motorola AM-FM radios, referred to herein as "HS89" (Plaintiff's Exhibit 26);

c. The frequency modulation sound receiver included in chassis TS-5 or TS-7 for Motorola home television broadcast receiving sets, referred to herein as "TS-5" (Plaintiff's Exhibit 27);

d. The frequency modulation sound receiver included in chassis TS-4D for Motorola home television broadcast receiving sets, referred to herein as "TS-4" (Plaintiff's Exhibits 28, 29):

e. The two-way FM communication equipment operating on frequencies between 25 and 50 megacycles, referred to herein as "25-50 Mc" (Plaintiff's Exhibit 30);

f. The two-way FM communication equipment operating on frequencies between 152 and 162 megacycles, referred to herein as "152-162 Mc" (Plaintiff's Exhibit 31); and

g. All other FM broadcast receivers, television sound receivers and FM communication equipment which are materially similar to the foregoing apparatus in structural and operating characteristics and which were manufactured and sold by Motorola within six years of the filing of the complaint herein and before the expiration of the patents in suit.

Major Armstrong gave Motorola notice of infringement by letters dated December 15 and 20, 1948 (Plaintiff's Exhibits 12 and 13; Trial Record 3731-2).

IV. PROCEEDINGS BEFORE TRIAL

7. Motorola's motion for a separate trial on its defense of laches and estoppel was denied by order of this Court on December 14, 1959.

8. On January 20, 1961, Dean George R. Town was appointed, by order of this Court and with the consent of the parties, to act as an impartial technical expert for the Court.

9. On April 19, 1961, Motorola filed a motion for summary judgment as to plaintiff's charges of infringement under patents numbers 1,941,069 and the Reissue patent with respect to FM broadcast receivers and television sound receivers and with respect to the validity of claims 4 and 6 of the Reissue patent. Defendant's motion for summary judgment was denied by this Court in a memorandum opinion dated June 14, 1961.

10. The action came on for trial before Judge Robson on October 30, 1961, and proceeded from day to day until January 5, 1962. During the trial, seven witnesses were called by plaintiff and eight witnesses were called by defendant. Dean George R. Town was called as a witness by the Court and testified in response to questions by the Court and each of the parties.

V. ARMSTRONG PATENT NO. 1,941,069

A. The Discovery

11. Major Armstrong informed the radio engineering profession how the audible effects of noise in radio telephony could be reduced by employing a particular kind of frequency modulation and by operating over a bandwidth substantially wider than was theretofore employed in conventional radio signaling (Trial Record 5152-3; 4366).

12. The teaching of Major Armstrong concerning the wide band FM system was contrary to earlier practice and theory, both as to the results obtained and the method whereby such results were obtained (Trial Record 5153, 2691-2; 4101-4; 810-3).

13. The emergence of the wide band FM system was a development which profoundly influenced the radio art (Trial Record 5153, 4427-9; Court Exhibit 1, pp. 40-45¹).

14. The basic characteristics of the wide band FM system are as follows:

a. That the swing of the carrier at the transmitter in accordance with the intelligence to be transmitted shall be substantially greater than the range of audible frequencies for the system;

b. That the receiver in all of its radio and intermediate frequency stages shall have a pass band sufficiently wide to receive and amplify the wide swinging carrier throughout the full extent of its excursions;

c. That the receiver shall be substantially nonresponsive to amplitude variations caused by the disturbances; and

d. That the receiver shall have a selective system which provides for full audible response to the wide swings of the carrier and provides for substantially less audible response to the narrow swings of the carrier at audible rates which are caused by the disturbances.

(Plaintiff's Exhibits 24, 40, 90, 91, 92; Trial Record 5153, 5422; Court Exhibit 1, pp. 40-45).

15. Major Armstrong's teaching was based in part on his observation that in a frequency modulation receiver, tube noise and other spectrum-like disturbances may manifest themselves as frequency variations in the received signaling wave and that such frequency variations will, in the presence of a strong carrier, be limited in extent in so far as they are capable of producing an audible response from the receiver (Trial Record 143, 200-6, 3278, 4093-4101; '069 patent, p. 3, lines 116-121; Plaintiff's Exhibit 24, pp. 705-709; Plaintiff's Exhibit 40, pp. 4-5).

16. Major Armstrong taught that tube noise and spectrum-like disturbances would also manifest themselves as amplitude variations on the carrier, and that the effect of such amplitude variations, when of less strength than the carrier, could be effectively suppressed or eliminated in the receiver (Plaintiff's Exhibit 24, pp. 703-6; '069 patent, p. 3, lines 38-46).

17. In radio communication by amplitude modulation, the bandwidth for the transmitter and the receiver depends upon the range of audible frequencies to be reproduced in the receiver. In the normal practice with amplitude modulation, the bandwidth is substantially equal to twice the range of audible frequencies to be reproduced (Trial Record 4105-8, 5158; Plaintiff's Exhibit 32E, p. 69).

18. In the wide band FM system, the bandwidth for the transmitter and the receiver is not twice the range of audible frequencies to be reproduced. The bandwidth depends on the range of excursion of the wide swinging carrier and is several times the bandwidth required for amplitude modulation (Plaintiff's Exhibit 24, pp. 709-16; Trial Record 4090-7, 5422; Plaintiff's Exhibit 127).

19. The receiver in the wide band FM system is made substantially nonresponsive to amplitude variations of the received wave caused by tube noise and other disturbances when such noise and disturbances occur in the receiver at levels of strength which are lower than the received carrier. Such nonresponsiveness is brought about by limiting and balancing (Trial Record 1278-85; Plaintiff's Exhibit 24, pp. 702-6; '069 patent).

20. Armstrong published a formula for the improvement with respect to the suppression of noise which could be obtained with the wide band FM system as compared with amplitude modulation when operating at the same carrier frequency and power and transmitting and receiving the same signal. His formula is that the improvement in terms of voltage ratio for noise in the two systems is equal to about 1.7 times the deviation of the wide band carrier (½ peak-to-peak...