De Forest v. Meissner, 1638-1642.

• Decision Date: 05 May 1924
• Docket Number: 1638-1642.
• Citation: 298 F. 1006
• Parties: DE FOREST v. MEISSNER et al., and four other cases.
• Court: U.S. Court of Appeals — District of Columbia Circuit

298 F. 1006

DE FOREST v. MEISSNER et al., and four other cases.

Nos. 1638-1642.

United States Court of Appeals, District of Columbia.

May 5, 1924

Submitted March 13, 1924.

Charles M. Thomas, Francis D. Thomas, and Melville Church all of Washington, D.C., and S. E. Darby and S. E. Darby Jr., both of New York City, for De Forest.

Alexander D. Lunt and H. E. Dunham, both of Schenectady, N.Y., for Langmuir.

Octavius Knight, of New York City, for Meissner.

William H. Davis, Thomas Ewing, and Willis H. Taylor, Jr., all of New York City, for Armstrong.

Before SMYTH, Chief Justice, and ROBB and VAN ORSDEL, Associate justices.

VAN ORSDEL, Associate Justice.

This interference comes here on appeal by the parties Langmuir, De Forest, and Meissner, from the decision of the Commissioner of Patents awarding priority to Armstrong; also appeals by De Forest against Meissner and Langmuir jointly, and against Langmuir, individually, for the invention set forth in the following counts:

'1. Means for producing sustained electrical oscillations comprising an oscillatory circuit having two electrodes in an exhausted receptacle and a second circuit coupled thereto having a conducting body interposed between said electrodes.'

'2. Means for producing sustained electrical oscillations comprising an oscillatory circuit having two electrodes, a second circuit coupled thereto having a conducting body interposed between said electrodes, and means for varying the frequency of the produced oscillations.'

'3. The method of producing electrical alternating currents which consists in causing current to flow in one of two coupled circuits and varying the flow of current in the first circuit by impressing the potential induced in the second circuit upon a conducting body interposed between two electrodes in the first circuit.' The invention set forth in each of the applications is concisely described in the opinion of the Commissioner as follows:

'All the counts of all the issues involve the setting up of small current variations in one circuit, creating thereby corresponding variations in a second circuit, and feeding back these second circuit variations inductively into the first circuit to add their effect to the initial variations, which latter, thus reinforced, create and form greater variations in the second circuit, and these are, in turn, also inductively fed back to the first circuit to still further amplify the variations in such first circuit and these still further amplify those in the second circuit, and so on. The energy of the variations of each circuit reacts upon and increases that in the other circuit until a maximum sustained alternating current is finally produced, whose frequency can be controlled by varying the electric constants of the associated circuits.'

The whole case, as here presented, turns upon the question of priority to be determined solely as a question of fact. The Commissioner of Patents, affirming a decision by the Board of Examiners in Chief, awarded priority to the party Armstrong. It may be stated at the outset that the voluminous record in this case is exceptionally free from contradiction or attempted impeachment of witnesses. Indeed, the whole record may be accepted as embracing a true statement of the facts involved in each case.

Especially are we impressed by the party Armstrong and his witnesses. We have no doubt but what he produced the invention at the time alleged, and did all the things attributed to him by the testimony, as set forth in this record. His earliest claim to a conception of this invention is October, 1912, followed by a witnessed sketch on January 31, 1913. This date antedates any time claimed by or available to either the party Meissner or Langmuir. These parties, therefore, are eliminated from further consideration.

This narrows the case to De Forest and Armstrong. It is clearly shown that De Forest was developing the idea involved in this invention in the early part of 1912, and it is claimed that the work culminated in a complete disclosure of the invention in August of that year. If this claim is sustained, De Forest must prevail.

Coming, therefore, to De Forest's case, the Examiner of Interferences found that in the experiment of August 6, 1912, the repeating circuit used as an amplifier of telephonic currents was modified by a connection between the plate filament circuit and the grid filament circuit. This resulted in the production of 'a beautiful clear tone.' 'This,' the witnesses have testified, 'was due to the audion generating oscillations or alternating current due to the feed-back action and was understood by them at the time of the experiment. This, it is believed, establishes the fact that De Forest had a conception of the invention at that time, August 6, 1912, and that it was disclosed to others. ' The Board of Examiners in Chief, after reviewing the testimony, held that they were 'not fully satisfied that De Forest really had a conception of his invention in August, 1912.'

The Assistant Commissioner, reviewing the De Forest case, and the experiments made in August, 1912, held that:

'It must be conceded this circuit diagram of August 6, 1912, shows such an arrangement that, if the constants were proper, sustained alternating currents of oscillations would be produced. It is believed, further, the making of the diagram and the production of the 'beautiful clear tone' by the apparatus connected up according to such diagram have been fairly proved by the evidence, and that, therefore, such apparatus embodied the issue of this interference. The authenticity of the notebooks and diagrams and the proofs as to their dates, as well as the production of the beautiful clear tone at the time alleged, have not been seriously controverted. Clearly the production of the tone was accidental, but this is not of moment. Did De Forest understand what was done, that the tone was due to the feed-back coupling relation, and could he reproduce the tone at will? De Forest states that he understood what was taking place, and both Logwood and Van Etten corroborate him; but he has introduced no record to support this oral testimony given many years afterwards.'

He then holds that the failure of De Forest to proceed after August 6, 1912, with the feed-back circuit until after Armstrong had reduced to practice, entitled Armstrong to priority.

It will be observed that the Assistant Commissioner in effect holds that what De Forest did in August, 1912, amounted to a reduction to practice, but that after reducing the invention to practice he abandoned it. In patent law, abandonment after reduction to practice is a proposition somewhat difficult of demonstration. At best, however, abandonment under such circumstances is a matter of proof and not of assumption. We think De Forest's record will neither sustain the charge of abandonment nor lack of diligence. The Assistant Commissioner attempts to support his conclusion on the theory that, while De Forest unquestionably made this important discovery, he did not recognize how the effect was obtained,...