Marconi Wireless Telegraph Co. of America v. De Forest Radio Telephone & Telegraph Co.

• Decision Date: 18 May 1917
• Docket Number: 206.
• Citation: 243 F. 560
• Parties: MARCONI WIRELESS TELEGRAPH CO. OF AMERICA v. DE FOREST RADIO TELEPHONE & TELEGRAPH CO.
• Court: U.S. Court of Appeals — Second Circuit

243 F. 560

MARCONI WIRELESS TELEGRAPH CO. OF AMERICA v. DE FOREST RADIO TELEPHONE & TELEGRAPH CO.

No. 206.

United States Court of Appeals, Second Circuit.

May 18, 1917

Frederick P. Fish, of New York City (Philip Farnsworth, Harrison F Lyman, and George F. Scull, all of New York City, on the brief), for appellant.

J Edgar Bull, of New York City (L. F. H. Betts and Ramsay Hoguet, both of New York City, on the brief), for appellee.

For opinion below, see 236 F. 942.

The plaintiff (hereinafter called Marconi) brought this action against defendant (hereinafter called De Forest) alleging infringement of claims 1 and 37 of patent dated November 7 1905, issued on application of John Ambrose Fleming, filed April 19, 1905 (No. 803,684). The claims in suit are as follows:

Action was brought, not only against the present appellant, but Dr Lee De Forest individually. The bill as to him was dismissed, and no appeal taken thereto. Defendant answered, and set up a counterclaim (practically a separate action), alleging that Marconi had infringed and was infringing certain claims (not necessary to specify) of the following patents belonging to defendants, viz. Nos. 867,876, 867,877, 867,878, and 979,275, which four issues resulted from division of a single application filed February 2, 1905. The counterclaim alleged, further, infringement of patents Nos. 824,637 and 836,070. Of these, 836,070 is a division of an application thought to cover both inventions and filed January 18, 1906. Defendant also counterclaimed upon patent 841,386, application filed August 27, 1906. Thus the counterclaim was tried on the foregoing seven patents, of which the first four antedate Fleming. The counterclaim, however, also set up two other patents, Nos. 841,387 and 879,532, both of date, not only later than Fleming, but later than any of the other and above enumerated patents. As to these plaintiff permitted defendant to take a decree at or shortly before trial.

The lower court (Mayer, J.) held that De Forest had infringed both the claims in suit of the Fleming patent, and that Marconi had not infringed any of the claims of the patents set up in the counterclaim and not confessed. All of defendant's patents had been issued on applications of Dr. Lee De Forest, and will hereinafter be referred to collectively as the De Forest patents. From a decree granting injunction on the Fleming patent, and dismissing the counterclaim, De Forest took this appeal.

Before COX, ROGERS, and HOUGH, Circuit Judges.

HOUGH Circuit Judge (after stating the facts as above).

The subject-matter of this action is a 'detector.' That word will be used in this decision as signifying any device, or piece of apparatus, which, when energized, actuated, or acted upon by or by means of the so-called Hertzian waves, enables man, through the senses of hearing or sight, to understand signals based upon the intentionally regulated emission or propagation of the waves aforesaid. The patent of the bill is said to cover and protect a detector, hereinafter called the 'Fleming valve.' Defendant uses a detector which it calls the 'audion.' Plaintiff asserts that, while the audion may be for some practical purposes an improvement on the Fleming valve, it is nevertheless an infringement, and it has given evidence of faith in its own theory by admitting infringement of the two patents (hereinabove specified) which essentially describe one form of audion-- known herein as the 'three-electrode' apparatus.

Defendant, not content with this admission, insists: (a) That the Fleming valve was not patentable, considering the state of the art at date of application; (b) that the valve and the audion utilize and depend for efficacy upon wholly different operations of nature; and (under its counterclaim) (c) that the De Forest patents still in suit cover devices in principle identical from the earliest to the latest, which patents Marconi has infringed by using a device named by the defendant the 'two-electrode' audion.

It is said that Dr. De Forest disclosed by his earlier patents, and before Fleming filed his application, a theory which, reduced to practice, resulted in the perfected audion of the confessed patents, wherefore the device of every one of the De Forest patents is (by defendant's witnesses) called an audion, although that word was not coined until shortly before applications for the confessed patents were filed. To paraphrase an argument, it is said that Marconi cannot logically confess judgment under two patents, and yet deny infringement of the earliest De Forest inventions, because they all constitute a connected, logical, coherent development of a single inventive thought or application of a scientific theory.

These contentions have opened the door (without objection, or very little) to a mass of opinion evidence, which in our judgment is of no legal value. Much of this record arises out of the mystery still notoriously enveloping the wave movements of the imponderable ether; that is, out of the nature of phenomena by which none of our five senses are directly affected. It consists of opinions or theories concerning such phenomena-- opinions necessarily subject to revision, perhaps in a few months. The principal producer of such evidence (if it can be so called), Mr. Pickard, for the defendants, admitted repeatedly that the views he advanced on the witness stand he had not entertained a little time earlier, though he had apparently given his abandoned theories more publicity than normally attaches to testimony in a patent cause. He would probably be the last to assert that his present opinions are final, even for himself. To call such theorizing evidence is a misuse of the word; for the patent law can deal little in such matters. Neither a process of nature nor the discovery thereof is patentable. Manmade statutes permit to be protected and monopolized only some perceptible means or certain method of harnessing or utilizing forces, however mysterious, uncertain, or perhaps incomprehensible. The only question in this case is whether some known operations of nature were, by proved, tangible, and visible implements, harnessed and made useful; if so, he who first did it may be protected in what he did in accordance with statute laws.

Why a given device works, or the theory of its functioning is a fascinating inquiry; but, unless that 'why' can be proved within the very modest limits of legal evidence, opinion evidence becomes the rampant speculation of this transcript. It is usually impossible for trial courts to limit opinion evidence (for fear of losing something of value), but efforts in that direction are much needed in the interest of celerity and clarity. Counsel introducing experts who use the witness chair as a rostrum confer no benefit on their clients.

The Fleming valve as a detector confessedly, and the actual commercial 'audion' (as we are convinced) consist essentially in the utilization by visible and tangible means of what has long been known as the 'Edison effect,' which means the fact that, when there is introduced into the ordinary incandescent electric lamp bulb an electrode other than the incandescent filament (such unheated electrode being connected with the positive terminal of the lamp), a current flows from the incandescent electrode to the cold one, in such wise that variation in the electromotive force, producing incandescence, will be reflected or reproduced in the circuit connected with the cold electrode, such variations being capable of measurement by a galvanometer. Edison, Patent No. 307,031.

Utilization of the Edison effect does not mean that the use of Edison's apparatus or any modification thereof as a detector was easy or simple. The admitted fact that years passed, and detectors of various kinds from the coherer to the crystal acquired vogue, before any one thought of using Edison's curiosity of electricity for the discovery or translation of Hertzian waves, is proof enough on this point. Fleming was the first to disclose an apparatus for this purpose. His specification declares that he 'rectifies' the alternating current transmitted from the antenna. Defendant's witnesses declare that rectification means converting 'the received alternating current into direct currents,' and they spend much time in attacking Fleming's theory of the operation of his own device.

But the law is not concerned with why the process called rectification takes place, or how it is accomplished, further than to observe that variations in group frequencies of an alternating current passing through an incandescent lamp filament produce in a manner analogous to the observed Edison effect a direct pulsating or intermittent current in the cold electrode circuit, and that these pulsations or...