Radio Corporation of America v. Collins Radio Co., 1117.

• Decision Date: 04 March 1936
• Docket Number: No. 1117.,1117.
• Citation: 13 F. Supp. 976
• Parties: RADIO CORPORATION OF AMERICA et al. v. COLLINS RADIO CO.
• Court: U.S. District Court — District of Delaware

13 F. Supp. 976

RADIO CORPORATION OF AMERICA et al. v. COLLINS RADIO CO.

No. 1117.

District Court, D. Delaware.

March 4, 1936.

Thomas G. Haight, of Jersey City, N. J., Stephen H. Philbin (of Fish, Richardson & Neave), of New York City, Abel E. Blackmar, Jr. (of Sheffield & Betts), of New York City, and William G. Mahaffy, of Wilmington, Del., for plaintiffs.

George I. Haight and M. K. Hobbs, both of Chicago, Ill., John B. Brady, of Washington, D. C., and Ayres J. Stockly (of Hastings, Stockly & Duffy), of Wilmington, Del., for defendant.

NIELDS, District Judge.

This is a motion for a preliminary injunction in a patent infringement suit against Collins Radio Company. In their bill of complaint plaintiffs charge defendant with infringement of two patents by manufacturing and selling radio transmitters and receivers. The two patents were granted to Lee De Forest on September 2, 1924, and are held by plaintiffs as his assignees. Grounds of opposition to the motion are invalidity, estoppel, and laches.

The De Forest patents relate to a vacuum tube and its associated circuits so arranged as to feed back a portion of the energy in the plate circuit to the grid circuit to progressively build up the electric currents in the circuits. Patent No. 1,507,017 covers broadly the feed-back circuit and patent No. 1,507,016 covers that circuit when so arranged and adjusted as to generate continuous electrical oscillations.

Defendant was incorporated in 1933. Its principal business is the manufacture and sale of radio transmitting apparatus at Cedar Rapids, Iowa. It has also sold radio receivers. It designates the transmitting device 4A transmitter and the radio receiver RME-9D. Defendant asserts it has sold only 46 receivers "as a matter of accommodation to customers and without profit" and that before the bringing of this suit "defendant had discontinued the purchase and sale of receivers and has since sold none and has no plan or intent of offering for sale radio receivers." Assuming that defendant has discontinued the sale of receiving apparatus, injunctive relief with respect thereto may still be appropriate. Defendant has made and sold devices and apparatus embodying and employing the respective inventions of the De Forest patents in suit and is continuing so to do. This is fully shown by the affidavits on file. Respecting infringement, defendant's position is that it does not infringe because the De Forest claims are anticipated.

Both De Forest patents have been held valid and infringed in prior litigation carried to the Supreme Court of the United States. It is well settled that a motion for a preliminary injunction against infringement of such patents should be granted without other proof, unless new evidence is produced by defendant of such weight that it would probably have led to a different conclusion if it had been introduced in the prior litigation. Walker on Patents (6th Ed.), § 705, states this rule as follows: "It is an uncontrovertible rule of equity jurisprudence that where there has been a prior adjudication sustaining a patent and an infringement thereof in the same or another circuit, where the validity of the patent has been contested on full proofs, the District Court should, upon a motion for a preliminary injunction, sustain the patent, grant an injunction and leave the question of its validity to be determined upon the final hearing."

The Third Circuit Court of Appeals affirmed the granting of a preliminary injunction because a patent had been previously sustained: "But we think it should be regarded as a finality until sufficient reason for departing from it shall have been made to plainly appear, and that the appellee should not, upon a motion to dissolve a preliminary injunction, be deprived of the advantage it holds as the owner of a patent adjudged by a court of appeals to be valid, upon anything less than thoroughly convincing additional proofs." Adams v. Tannage Patent Co. (C.C.A.) 81 F. 178, 179.

Prior Litigation.

For years the De Forest patents have been in the courts. They have been sustained against repeated claims of prior invention and anticipation. In 1934 the validity of both patents was finally established by the Supreme Court of the United States. That court, speaking through Mr. Justice Cardozo said:

"After all that has been written about the DeForest patents in these many years of litigation, there is no need to fill the pages of our reports with an analysis of the opposing arguments as if we were a court of first instance trying the controversy anew. For present purposes it is enough to bring out into sharp relief a few considerations of dominating significance. Patent No. 1,507,017 is for an invention known as a `feed-back circuit' and patent No. 1,507,016 for an invention known as the audion `oscillator.' The two, however, are closely associated, for the oscillator can be produced only by use of the feedback circuit, though the feed-back circuit can be used without producing an oscillator. As far back as 1908, DeForest had received a patent for a form of vacuum tube to which he gave the name of `audion.' The Fleming vacuum tube in use up to that time had in it a metallic filament, which was electrically heated to incandescence through an input circuit, and a cold metallic plate to which electrons were transmitted from the filament, passing from the plate to another or output circuit. DeForest's `audion' changed the Fleming tube by interposing a special wire known as the `grid' between the filament and the plate, thereby increasing its capacity as a detector of waves of radio or inaudible frequency and serving better to transform them into waves of audible frequency. * * *

"DeForest with his assistant Van Etten had been working during the summer of 1912 along two lines of thought. One was the use of the audion as a telephone repeater to amplify weak telephone currents and thus facilitate the transmission of long distance messages. The other was its development as a generator of alternating currents for any and all uses, some perhaps indefinite, that were capable of being served by oscillations thus produced. On August 6, 1912, a diagram showing a feedback hook-up of the input and output circuits is recorded in Van Etten's note book with a note that by the use of the coupling `a beautiful clear tone' had been developed, which means that oscillations had been produced and that the oscillations were sustained. There is also a note that the pitch, i. e., the frequency, was varied by altering the plate voltage, which means, or was understood, we are told, by DeForest to mean, that by other simple adjustments the frequency of the oscillations could be varied at will. * * * He DeForest maintains, with the backing of other witnesses, that upon discovering the effect of the feed-back in generating sustained oscillations of the plate, he understood at once that by controlling the inductance or capacity in the oscillating circuit he could also control the frequency. This, he says in substance, must have been obvious upon reflection to any competent electrician, though there would be need of a certain amount of adjustment and experiment in substituting the correct inductance or capacity, a process, it is argued, that would be well within the ability of any one skillful in the art. Beyond this he insists that having discovered the generative virtue of the feed-back, he was not confined in his invention to the uses then developed, but...