Radio Corporation of America v. Andrea, 155.

• Decision Date: 12 November 1935
• Docket Number: No. 155.,155.
• Citation: 79 F.2d 626
• Parties: RADIO CORPORATION OF AMERICA et al. v. ANDREA et al.
• Court: U.S. Court of Appeals — Second Circuit

79 F.2d 626 (1935)

RADIO CORPORATION OF AMERICA et al. v. ANDREA et al.

No. 155.

Circuit Court of Appeals, Second Circuit.

November 12, 1935.

Darby & Darby, of New York City (Samuel E. Darby, Jr., of New York City, of counsel), for appellants.

Sheffield & Betts, of New York City (Thomas G. Haight, of Jersey City, N. J., and Abel E. Blackmar, Jr., of New York City, of counsel), for appellees.

Before MANTON and SWAN, Circuit Judges.

SWAN, Circuit Judge.

The patents in suit relate to electrical circuits extensively used in radio receiving sets. They cover the audion "oscillator" and the superheterodyne or "feedback" circuit. Validity of the patents has been authoritatively adjudicated. Radio Corporation v. Radio Laboratories, 293 U. S. 1, 55 S. Ct. 928, 79 L. Ed. 163. The defendants raise no question as to validity, nor as to the plaintiffs' title. Neither do they dispute that the apparatus which they make and sell would infringe the claims in suit if it were used by the purchaser within the jurisdiction of the United States. Their apparatus is sold solely for export, and their contention is that, when it is sold, the patented combination is incomplete and is not intended to be completed except outside the country. Hence they deny that there is proof of any direct infringement, and they claim to escape contributory infringement under the well-established doctrine set forth in Bullock Electric & Mfg. Co. v. Westinghouse Electric & Mfg. Co., 129 F. 105 (C. C. A.).

The case was heard upon bill, answer, and supporting and opposing affidavits. The uncontroverted facts with respect to sales by the defendants are as follows: The defendants manufacture at the plant of the corporate defendant radio receivers, exclusive of the vacuum tubes required therefor. The tubes are purchased by the defendants in the open market. To operate the receiver, it is necessary to insert the vacuum tubes into the sockets provided for them and to connect the receiver by means of a wire and plug provided for that purpose to a source of electrical power, such as the electric lighting system in the user's home. When so operated, it is conceded that the invention of each of the patents in suit is present, but, when the receiver is sold, it is of course not connected to a source of electrical power, nor are the vacuum tubes inserted in their sockets. The tubes are separately packaged and placed within the same carton as the receiver. Although the sales are completed within this country, the receivers are to be used only outside United States territory.

The claims held to have been infringed are claims 24, 25, 26, 27, and 28 of patent No. 1,507,016 and claims 15, 17, 18, 19, 20, and 21 of patent No. 1,507,017. Two of the claims are for the method of generating or producing alternating currents by "causing current to flow" in one of two coupled circuits, and it is apparent that these claims cannot be infringed until the receiver is operatively connected to a source of electrical current. The defendants contend that all the claims expressly or by necessary implication include the current source as an element of the claimed combination. But it will suffice for present purpose to consider only claim 25 of the first patent and claim 19 of the second. These at least, the plaintiffs argue, are infringed when a receiver wired for the superheterodyne circuit and with the vacuum tubes packaged in the same carton are sold in this country.

Claim 25 of patent 1,507,016 reads as follows:

"25. Means for producing sustained electrical oscillations comprising an oscillatory circuit having two electrodes in an exhausted receptacle and a second circuit coupled thereto having a conducting body interposed between said electrodes."

It is assumed for present purposes that this claim does not include as an element of the claimed combination the electric current source. The combination does require, however, a particular relationship to be established between the oscillatory circuit and the second (superheterodyne) circuit, and it is apparent that such relationship cannot be attained until there is a physical connection between the terminals of the circuits and the electrodes of the vacuum tube; that is, until the tubes are inserted in the sockets of the receiver. The defendants have sold the elements capable of forming the patented combination but have not made or sold the combination itself unless the elements are physically connected in an operable relationship.

The same argument applies even more literally to the words of claim 19 of patent 1,507,017, which reads:

"19. In an electrical system, an evacuated vessel, hot and cold grid and plate electrodes therefor, a circuit connecting each of said cold electrodes with said hot electrode, said circuits being associated to react upon one another."

Hence it follows that sales of the disassembled elements of the patented combination are not a direct infringement, although the claims be construed, as the plaintiffs urge, not to call for a source of electrical power. K. W. Ignition Co. v. Temco Electric Motor Co., 283 F. 873 (C. C. A. 6)...