Maibohm v. RCA Victor Co.

• Decision Date: 06 April 1937
• Docket Number: No. 4140.,4140.
• Citation: 89 F.2d 317
• Parties: MAIBOHM v. RCA VICTOR CO.
• Court: U.S. Court of Appeals — Fourth Circuit

89 F.2d 317 (1937)

MAIBOHM v. RCA VICTOR CO.

No. 4140.

Circuit Court of Appeals, Fourth Circuit.

April 6, 1937.

Clarence B. Des Jardins, of Washington, D. C. (Halbert P. Brown, of Washington, D. C., on the brief), for appellant.

George L. Wilkinson, of Chicago, Ill. (John W. Michael, of Milwaukee, Wis., Howard W. Hodgkins, of Chicago, Ill., and Edwin F. Samuels and Thomas W. Y. Clark, both of Baltimore, Md., on the brief), for appellee.

Before PARKER, NORTHCOTT, and SOPER, Circuit Judges.

NORTHCOTT, Circuit Judge.

This is a suit in equity brought by Harry C. Maibohm, the appellant, and Henry G. Bartsch, as joint plaintiffs, in the District Court of the United States for the District of Maryland, in February, 1935, against the RCA Victor Company, a Maryland Corporation, the appellee, here referred to as the defendant. The object of the suit was to recover damages for the infringement of Maibohm patent No. 1,930,980 issued by the Patent Office of the United States on October 17, 1933, and to enjoin the defendant from further infringement.

In their bill of complaint the appellant and his joint plaintiff alleged that the patent in suit, which was for a combined electric switch and variable resistance device, used in radio construction, was jointly owned by the plaintiffs and charged that the defendant was guilty of the infringement of said patent. The defendant in its answer alleged the invalidity of the patent for four reasons:

First. Because of the publication of the patent device more than two years prior to the filing of the application for the patent.

Second. Because the patent device was in public use and on sale more than two years prior to the filing of the application for the patent.

Third and Fourth. Because the patent disclosed no new invention, but merely the exercise of mechanical skill in view of prior art and that the claims of the patent in issue were anticipated by prior patents.

By stipulation the issue was reduced to the question of validity of the patent, and the defendant did not deny that the accused device infringed the claims of the patent in suit.

Depositions were taken, a hearing was held at which witnesses were examined in person and on February 26, 1936, an oral opinion was delivered by the trial judge, holding in favor of the defendant's contention as to prior publication. On the sixth day of March, 1936, a final decree was entered dismissing the bill of complaint for want of equity. From that decree, this appeal is prosecuted.

On April 29, 1936, a stipulation was filed to the effect that the plaintiff, Bartsch, had assigned his interest in the patent to the other plaintiff, Maibohm, and an order was entered substituting Maibohm, here referred to as the plaintiff, as the sole party plaintiff in the cause.

In his opinion the judge below passed only on the first defense, holding that the fact of publication of the patent device more than two years prior to the application for the patent, was clearly and conclusively established by proof, but went on to say with regard to the second defense:

"Conceding that the burden is upon the defendant to establish such prior use and sale beyond a reasonble doubt, this we believe has in fact been done by the testimony of the plaintiff Harry C. Maibohm himself, even if the great mass of evidence contained in the depositions be totally cast aside and not considered."

Because of his conclusions as to the first and second defenses the judge did not consider the third and fourth defenses in his opinion.

The sole question presented on this appeal is the validity of the Maibohm patent.

In his opinion the trial judge succinctly described the patent and claims of the plaintiffs as follows:

"Briefly stated, the patent is for the combination of a standard form of variable resistance or rheostat used as a volume control in radio receiving sets, with a known form of snap switch, for making and breaking the power circuit of such sets. That is to say, both the variable resistor and the snap switch are admittedly old in the art, but it is the combination of the two for which invention is claimed.

"When the radio art was in its early stages, batteries were used to operate radio receivers, and the slow make and break switches, well known in the art, were adequate; but when inventions in radio tubes made possible the use of high-voltage house alternating electric current for operating radio receiving sets, this high voltage rendered the slow make and break switches inadequate, because the resulting spark not only corroded the switches, but created a fire hazard.

"While there are eight claims in the patent, plaintiffs rely upon only four of these claims, namely, Nos. 5, 6, 7, and 8, and adopt No. 6, which is as follows, as being the more typical, and as adequately embracing the entire invention:

"`A mono-control variable electrical resistor and switch unit comprising: an electrical resistance element, a frame including means for mounting the unit and for supporting said resistance element, a rotatable shaft journaled in said frame, an arm associated with said resistance element and rotatable by said shaft to adjustably vary the electrical resistance of said unit, an instantaneously acting snap switch carried by said frame and having an actuating arm eccentrically disposed with respect to the axis of said shaft and terminating in an open fork, and a trip finger carried by said shaft and freely engageable and disengageable with said fork by rotation of said shaft to nonrestrainingly trip said switch to open-circuit or closed-circuit positions irrespective of the rate at which said shaft be rotated.'

"Summarizing this claim, we find that the snap switch is mounted on the frame of the variable resistor, and the shaft of the latter, by which the resistance is adjusted by the operator through the means of an outside controller knob, has attached thereto an arm carrying a pin or trip finger, and the operating arm or tumbler of the snap switch has a fork in it. The parts are so arranged that when the radio receiver is to be used, the first movement of the controller knob snaps on the switch, and further movement of the knob cuts out resistance so as to increase the volume. Reversely, when the receiver set is in use and it is desired to discontinue its use, movement of the controller knob cuts in the resistance and snaps the switch to `off' position."

Maibohm filed his application for the patent in suit on October 30, 1929. The prior publication which, the defendant claimed invalidated the patent, appeared in the August, 1927, issue of "Radio News" a New York radio journal. This article, the material for which was furnished the journal by the Simplex Radio Company, of which company the plaintiff, Maibohm, was president, purported to describe in detail the receiver including the invention and was illustrated by cuts and diagram. The judge below found that from the information given in this article any one skilled in the art could, without further instructions, make the device or in the language of the Supreme Court in Seymour v. Osborne, 11 Wall. 516, 555, 20 L.Ed. 33, "make, construct, and practice the invention to the same practical extent as they would be enabled to do if the information was derived from a prior patent."

It is an established rule that in order for a prior publication, within the meaning of section 4886, Rev.Stat. (35 U. S.C.A. § 31), to invalidate a patent it must describe the invention so that any person skilled in the art can practice it without further instruction. O. K. Jelks & Son v. Tom Huston Peanut Company (C.C.A.) 52 F.(2d) 4.

That such a publication, as full and complete as this one was, constitutes a prior publication that, if made more than two years prior to the application for the patent, would invalidate the patent under which the plaintiff claims, seems clear. Walker on Patents (5th Ed.) p. 70; Robinson on Patents, vol. 1, p. 446; Seymour v. Osborne, supra; Eames v. Andrews, 122 U.S. 40, 7 S.Ct. 1073, 30 L.Ed. 1064; Downton v. Yeager Milling Company, 108 U.S. 466, 3 S.Ct. 10, 27 L.Ed. 789. See, also, Young Radiator Co. v. Modine Mfg. Co. (C.C.A.) 55 F.(2d) 545; Fleischman Yeast Co. v. Federal Yeast Corporation (D.C.) 8 F.(2d) 186; Atlantic Giant-Powder Company v. Parker, Fed.Cas. No. 625, 16 Blatchf. 281; Western Electric Company v. Millheim Electric Tel. Company (C.C.) 88 F. 505, affirmed (C.C.A.) 95 F. 152; Westinghouse Electric & Mfg. Company v. Saranac Lake Electric Light Company (C.C.) 108 F. 221; American Graphophone Company v. Leeds & Catlin Company (C.C.A.) 170 F. 327; General Electric Company v. Continental Fibre Company (C.C.A.) 256 F. 660; Hanifen v. E. H. Godshalk Company (C.C.A.) 84 F. 649; Badische Anilin & Soda Fabrik v. Kalle & Company (C.C.A.) 104 F. 802; Loew Filter Company v. German-American Filter Company (C.C.A.) 164 F. 855.

It is significant that, while the July, 1927, issue...