Leeds & Catlin Co. v. Victor Talking Mach. Co.

• Decision Date: 02 May 1907
• Docket Number: 282.
• Citation: 154 F. 58
• Parties: LEEDS & CATLIN CO. v. VICTOR TALKING MACH. CO. et al.
• Court: U.S. Court of Appeals — Second Circuit

154 F. 58

LEEDS & CATLIN CO. v. VICTOR TALKING MACH. CO. et al.

No. 282.

United States Court of Appeals, Second Circuit.

May 2, 1907

Louis Hicks, for plaintiff in error.

Horace Pettitt, for defendants in error.

Before WALLACE and COXE, Circuit Judges, and HOUGH, District Judge.

HOUGH District Judge.

Defendants in error, having brought suit against the plaintiff in error alleging infringement of the Berliner Gramaphone patent (No 534,543), procured an injunction restraining the manufacture use, or sale of sound reproducing apparatus or devices embodying the subject-matter specified in claims 5 and 35 of said patent, and also the use or employment in any way of the method set forth in claim 5 thereof (reported (C.C.) 146 F 534, affirmed by this court 148 F. 1022). The claims protected by such adjudications are 'a sound reproducing apparatus consisting of (1) a traveling tablet having a sound record formed thereon and (2) a reproducing stylus shaped for engagement with said record and free to be vibrated and propelled by the same, substantially as described' (No 35), and the 'method of reproducing sounds from a record of the same,' consisting in '(1) vibrating a stylus, and (2) propelling the same along the record by and in accordance with the said record substantially as described ' (No. 5); the 'record' being identical with the 'traveling tablet' above mentioned. In other words, the invention under consideration is the Victor Talking Machine, and the feature thereof here important is that its reproduction of sound depends upon the record groove cut in the traveling tablet (or disk record) compelling the movement of the stylus across the face of the record by the horizontal revolution of the record itself. The reproducer of which the stylus is an integral part is covered by claims of the Berliner patent, not now in question; but of the combination protected by claims 5 and 35 thereof the stylus alone (or rather the machine of which it forms a part) is itself patented, while the traveling tablet, sound record or disk record, is an unpatented article.

The Leeds & Catlin Company is a manufacturer of disk records, and, since the decision of this court above referred to, asserts that it has become a dealer in another talking machine known as the 'feed-device machine,' which for the purposes of this cause may be regarded as not infringing any of the rights of the Victor Company under the Berliner patent. The Leeds & Catlin disk records are equally suitable for the feed-device machine, and for that of the defendant in error.

Plaintiff in error was found to have sold disk records forming an essential part of the sound reproducing apparatus and devices covered by the above-mentioned claims of the Berliner patent, and was fined for such violation of injunction. This writ of error is to review the order imposing said fine.

On ample evidence, the court below found that most of the sales of Leeds & Catlin records were knowingly made by the plaintiff in error to enable the owners of Victor Talking Machines to reproduce such musical pieces as they wished by the combination of the Leeds & Catlin record with said machines; that the Leeds & Catlin Company made no effort to restrict the use to which their records might be put until after motion to punish for contempt had been made; that the only effort at such restriction ever made was to insert upon the face of the records a notice to the effect that such record was intended and sold for use with the 'feed-device machine'; that the records sold by plaintiff in error were far more frequently bought to increase the repertoire of the purchaser's Victor machine than to replace worn-out or broken records. In our opinion it is also established by the evidence that the 'feed-device machine,' above referred to, was not at or before the time of beginning this proceeding a practically or commercially known reproducer of musical or spoken sound, whereas the Victor machine, embodying the claims of the Berliner patent here under consideration, was at such times widely known and generally used, and that the plaintiff in error knew, and sold its records with the knowledge, that if its output was to be used at all by the public it would be used with the Victor machine, and in the combination protected by the claims of the Berliner patent above referred to. Upon these facts it is clear that the Leeds & Catlin Company have made and sold a single element of the claims of the Berliner patent, with the intent that it should be united to the other element and complete the combination; and this is infringement (Heaton Peninsular, etc., Co. v. Eureka Specialty Co., 77 F. 297, 25 C.C.A. 267, 35 L.R.A. 728) adopted by this Court (Cortelyou v. Lowe, 111 F. 1005, 49 C.C.A. 671).

The facts above recited are scarcely controverted, nor is it denied that the above inference should ordinarily be drawn; but plaintiff in error seeks to avoid that result by asserting that the records under consideration are but temporary, perishable, and unpatented parts of the patented combination; and therefore under Morgan Envelope Co. v. Albany Paper Co., 152 U.S. 425, 14 Sup.Ct. 627, 38 L.Ed. 500, free to be manufactured and sold by any one. This contention is not supported by the evidence. Disk records are fragile (i.e., brittle and easily broken), but they are not perishable (i.e., subject to decay by their inherent qualities, or consumed by few uses or a single one). Neither are they temporary, i.e. not intended to endure; on the contrary, we find them capable of remaining useful for an indefinite period, and believe that they usually last as long as does the vogue of the sounds they record. A rifle bullet, lost by a single discharge, is a perishable and temporary part of the combination of rifle and ammunition, and probably a cartridge shell, though capable of reloading and use several time, may also be so regarded; but the missile of a toy gun, picked up and used again and again in its original form, is in no proper sense of the words either 'perishable' or 'temporary,' though it may by repeated use wear out sooner than does the gun with which it is repeatedly combined.

Again it is urged inasmuch as disk records are unpatented articles of commerce, which may be used upon the feed-device machine or lawfully exported to foreign countries, that no infringement can be alleged against the maker and seller thereof, because his product may be or is in fact used by...