Leeds Catlin Company v. Victor Talking Machine Company

• Decision Date: 19 April 1909
• Docket Number: No. 80,80
• Citation: 53 L.Ed. 805,29 S.Ct. 495,213 U.S. 301
• Parties: LEEDS & CATLIN COMPANY, Petitioner, v. VICTOR TALKING MACHINE COMPANY and United States Gramophone Company
• Court: U.S. Supreme Court

213 U.S. 301

29 S.Ct. 495

53 L.Ed. 805

LEEDS & CATLIN COMPANY, Petitioner,

v VICTOR TALKING MACHINE COMPANY and United States Gramophone Company.

No. 80.

Argued January 15, 18, 1909.

Decided April 19, 1909.

This case is here on certiorari to an interlocutory decree of injunction restraining the petitioner, Leeds & Catlin Company, from manufacturing, using, or selling sound-reproducing apparatus or devices embodied in claim No. 35 of letters patent No. 534,543, issued to Emil Berliner, bearing date 19th of February, 1895, and also from manufacturing, using, or selling or in any way disposing of apparatus or devices which embody the method specified in claim No. 5 of the same patent. These claims will be given hereafter.

The bill is in the usual form and alleges the issuing of the patent and the existence of the necessary conditions thereof under the laws of the United States. It also alleges the transfer of title to the plaintiffs in the suit and the infringement of claims 5, 32, and 35 by the defendant, petitioner herein.

Petitioner answered, denying some of the allegations of the bill, and, of others, denying that it had knowledge or information sufficient to form a belief. Explicitly denied infringement, and alleged anticipation of the invention described in the patent by a great number of patents and publications in this country and other countries, an enumeration of which was made. And hence it is alleged that, in view of the state of the art, Berliner was not the first inventor or discoverer of any material or substantial part of the alleged improvement and invention described or claimed.

The answer further alleged that said letters patent did not describe or specify or claim any subject-matter patentable under the statutes of the United States, and are and always have been null and void. Abandonment is alleged and a two-years' use of the invention in this country before the application for the patent, that the invention and improvement were known and used by others, and were in public use and on sale in this country by divers persons, a list of whose names is given.

It is alleged that before the invention was patented in the United States the same was patented, or caused to be patented, by Emil Berliner, in foreign countries, and that by reason whereof, under § 4887 of the Revised Statutes of the United States (U. S. Comp. Stat. 1901, p. 3382), the letters patent in suit were limited to expire at the same time with said foreign patents and each of them. The numbers and dates of the foreign patents are given,—two in Great Britain, three in France, three in Germany, and one in Canada. They will be specifically referred to hereafter. And it is alleged that, in consequence thereof, the said letters patent of the United States have long since expired, and plaintiff is not entitled to any relief by injunction or other relief in equity, that a court of equity has no jurisdiction of the suit, and that plaintiff has an adequate remedy at law. A replication was filed to the answer.

Upon the bill and certain supporting affidavits an order to show cause against a preliminary injunction was issued, which, coming on to be heard upon such affidavits, and other affidavits and exhibits, a preliminary injunction was granted. 146 Fed. 534. It was affirmed by the circuit court of appeals. 79 C. C. A. 536, 148 Fed. 1022.

Mr. Justice McKenna delivered the opinion of the court:

Mr. Louis, Hicks for petitioner.

[Argument of Counsel from pages 304-308 intentionally omitted] Mr. Horace Pettit for respondents.

Statement by Mr. Justice McKenna:

[Argument of Counsel from pages 308-310 intentionally omitted] The motion for preliminary injunction was made upon affidavits. Those of respondent (complainant in the circuit court) described the invention and the machine made in accordance therewith, averred the practical identity of petitioner's machine therewith, and set forth the record in the case of Victor Talking Mach. Co. v. American Graphophone Co., instituted in the circuit court for the southern district of New York. The affidavits averred that the suit was pending and awaiting decision when this suit was brought, and was subsequently decided; that by the decision, claims 5 and 35 of the patent in suit were held walid and infringed by the talking machine of the defendants, and that an injunction was ordered. 140 Fed. 860. And it was stated that the circuit court of appeals, though not concurring with the circuit court in all of its reasoning, affirmed the decree. [76 C. C. A. 180, 145 Fed. 350.]

The affidavits of petitioner (the defendant in the courts below) set forth the defenses which were made in the case just referred to, a summary of the proofs introduced to sustain the defense, and submitted new matter. The affidavits also contained a description of the patent in suit and what was considered to be its basic invention; averred its identity with certain foreign patents which were not in evidence in the other suit. The affidavits also undertook to meet and refute the charge of infringement. The affidavits were very long and circumstantial, and had attached to them copies of the foreign and domestic patents relied on, translations of foreign laws, copies of publications, and certain testimoney. Such parts of these exhibits as we deem relevant will be referred to hereafter.

Upon this body of proof, formidable even in its quantity, and having no other elucidation than the arguments of counsel and some mechanical exhibits, presenting grave questions of fact, we are asked by petitioner to go beyond the action of the lower courts, and not only reverse them as to a preliminary injunction, but decide the case. If we should yield to this invocation and attempt a final decision, it would be difficult to say whether it would be more unjust to petitioner or to respondent.

The circuit court felt a like embarrassment, as well be observed from its opinion. The court did not pass on the defense of infringement, and said that, except as to one patent, the petitioner had failed to introduce any new matter which would have led the courts in the other case, if such matter had been before them, to have reached a different conclusion. And, speaking of the patents referred to, the circuit judge said: 'But even if I am mistaken in this view, and if the expiration of the Suess Canadian patent is a complete defense, or if a decision of the questions raised as to the character and scope of the various patents now introduced for the first time should be postponed until final hearing, yet I am constrained to grant the injunction in order to permit an appeal and a determination of the questions at the earliest possible moment.'

And the lower courts also reserved to the merits the consideration of the defense that claims 5 and 35 were invalid because they were the functions of machines, resting those defenses, so far as the preliminary injunction was concerned, upon the adjudication in the prior suit. We shall do the same, remarking, however, that the contention, if it has any strength as to claim 5, seems to us untenable as to claim 35. We think the latter is a valid combination, consisting of the elements, (1) a traveling tablet having a sound record formed thereon; (2) a reproducing stylus, shaped for engagement with the record, and free to be vibrated and propelled by it. It is, therefore, a true mechanical device, producing by the co-operation of its constituents the result specified and in the manner specified.

In passing on the other foreign patents the circuit court considered that the prior adjudications fortified the presumption of the validity of the patent in suit, and established its scope and that the new matter introduced by petitioner did not repel the presumption or limit the extent of the patent. That the lower courts properly regarded the prior adjudications as a ground of preliminary injunction is established by the cases cited in Walker on Patents, §§ 665 et seq. See also Robinson on Patents, §§ 117 et seq. And in that aspect the question must be considered, and, so considering it, we may pass the defenses of anticipation, whether complete or partial, and the defense of infringement. These are, we have already said, questions of fact which we are not inclined to pass upon unaided by the judgments of the lower courts, made after a hearing on the merits.

The patent in suit and the patents which, it is contended, anticipate it or limit its extent or duration, are for methods or devices whereby sound undualtions trace or inscribe themselves upon a solid material, and are by suitable devices made to reproduce themselves and the sounds which made them. One of the questions in the case is, as we have seen, the relation of the patent in suit to the prior art. It is contended by the respondent that Berliner (he was the patentee of the patent in suit), improved the prior art, not only in the methods of recording and reproducing sounds, but in the devices by which the methods are accomplished.

In the old method the sound record was produced by vertical vibrations, either indenting a pliable material, by and in accordance with the sound waves along a helical or spiral line, as in Edison patents, or by like vibrations engraving a suitable material, by and in accordance with the sound waves, as in the Bell and Tainter patent. By both of these methods there was produced a record consisting of a groove of varying depth, that is, containing elevations and depressions corresponding to the sound waves which produced them. In the Berliner patents the vibrations are made to inscribe a laterally undulating line in the general direction of a spiral. The line, therefore, is of even depth, the inequalities or sinuosities produced by the sound waves being upon its sides. By this method there is pro- duced a sound record tablet, consisting of a flat disc of hard, resisting material, having in its surface inscribed a spiral groove of...