Piano Motors Corp. v. Motor Player Corp.

• Decision Date: 01 August 1922
• Docket Number: 2882.
• Citation: 282 F. 435
• Parties: PIANO MOTORS CORPORATION et al. v. MOTOR PLAYER CORPORATION.
• Court: U.S. Court of Appeals — Third Circuit

282 F. 435

PIANO MOTORS CORPORATION et al. v. MOTOR PLAYER CORPORATION.

No. 2882.

United States Court of Appeals, Third Circuit.

August 1, 1922

L.F.H Betts, John W. Peters, and Edward W. Vaill, all of New York City, and Elmer G. Van Name, of Camden, N.J., for appellants.

Charles Neave, of New York City, Joseph P. Tumulty, of Washington D.C., J. Bonsall Taylor, of Philadelphia, Pa., Justin W Macklin, of Cleveland, Ohio, and E. Hayward Fairbanks, of Philadelphia, Pa., for appellee.

Before BUFFINGTON, WOOLLEY, and DAVIS, Circuit Judges.

WOOLLEY Circuit Judge.

This action was brought by the Motor Player Corporation against Piano Motors Corporation and George W. Garman for infringement of Letters Patent No. 1,320,224. The patent was acquired by the Motor Player Corporation through mesne assignments from Garman, the patentee and co-defendant.

The invention of the patent is a motor driven suction producing apparatus for a player piano, adapted to take the place of somewhat similar foot-operated devices commonly used in such instruments. Its purpose is to create a vacuum necessary to actuate the various hammers, expression devices and automatics of the piano mechanism. It is a self-contained unit in which a motor driven fan of several blades is operated. It contains two chambers, one above the other. In the upper chamber the suction producing fan is positioned and in the lower chamber the motor, or power plant, is seated.

In order that an electric motor and fan of the size permitted may produce the requisite suction, it is necessary that they operate at a very high speed. The speed of the fan is from 8,000 to 12,000 revolutions per minute. Normally the noise of a motor and fan running at such speed precludes their use in musical instruments. Garman's problem, therefore, was to preserve the high speed of the motor and fan and eliminate their noise. Noise of this kind comes from two sources-- metallic vibrations and pneumatic pulsations. Garman got rid of metallic vibrations by making the device in two shells-- a container within which is a casing, the latter housing the mechanism, the walls of the two being spaced apart and kept from contact by muffling or cushioning materials. He dispelled pneumatic pulsations by causing the air to travel through muffled channels before coming out into the open. The result is the elimination of noise to such a degree that it does not disturb the pitch of musical notes.

The trade-name given the device is 'Electora.'

The defendants manufactured and sold a suction producing apparatus which the plaintiff contended, and the trial court found, is a mere reversal of the parts of the Garman device, the motor being moved from the lower to the upper chamber and the fan from the upper to the lower chamber, with the container and casing similarly spaced and cushioned.

The defendants gave their device the trade name of 'Motora.'

As the controversy is between the assignee and assignor of the patent, the court gave the patent a construction which brought the defendants' device within its claims, and, finding infringement, entered an interlocutory decree for an injunction and an accounting. The defendants appealed.

In reviewing this case it may first be noted that because of the relation of the parties as assignee and assignor there is involved no question of validity of the patent. It may next be noted that while the assignor of a patent can not question its validity he can litigate its scope and ask for a construction which relieves him from infringement. Smith v. Ridgely, 103 F. 875, 876, 43 C.C.A. 365. In doing this there inevitably arises a question of the breadth of the claims, and a question of the principle by which courts will be controlled in determining the same. The defendants admit that--

'As between assignor and assignee of a patent the courts will give a liberal rather than a narrow construction to the patent assigned.'

Keeping in mind the transaction of assignment, courts will not, unnecessarily, construe the patent so narrowly as to make it worthless, Leader Plow Co. v. Bridgewater Plow Co., 237 F. 376, 150 C.C.A.

390; nor will they permit an inventor, who has assigned the patent for his invention, to introduce evidence for the ostensible purpose of so narrowing its scope as to avoid infringement, but which in fact attacks its validity for want of novelty, Alvin Mfg. Co. v. Scharling (C.C.) 100 F. 87.

While these general principles are applicable here, they are not the only guide to a proper construction, because there is in this case an unusual circumstance which bears directly on the scope of the claims. The circumstance is this:

In 1918 Willard A. Warren and George W. Garman (the latter the patentee of the patent in suit) made and put on the market under the trade-name of 'Rotora' a small number of suction producing devices similar in most mechanical features to the device of the patent and differing mainly in the arrangement of sound-deadening means. Later in that year they filed a joint application for a patent. Consideration of the application was...