Radio Corporation v. Radio Engineering Laboratories

• Decision Date: 29 August 1933
• Docket Number: No. 440.,440.
• Citation: 66 F.2d 768
• Parties: RADIO CORPORATION OF AMERICA et al. v. RADIO ENGINEERING LABORATORIES, Inc.
• Court: U.S. Court of Appeals — Second Circuit

66 F.2d 768 (1933)

RADIO CORPORATION OF AMERICA et al. v. RADIO ENGINEERING LABORATORIES, Inc.

No. 440.

Circuit Court of Appeals, Second Circuit.

August 29, 1933.

Pennie, Davis, Marvin & Edmonds, of New York City (William H. Davis, George E. Faithfull, and Chas. W. Riley, all of New York City, of counsel), for defendant-appellant.

Thomas G. Haight, of Jersey City, N. J., and Samuel E. Darby, Jr., and James J. Cosgrove, both of New York City, for plaintiffs-appellees.

Sheffield & Betts, of New York City, for Radio Corporation of America and American Telephone & Telegraph Co.

Darby & Darby, of New York City, for De Forest Radio Co.

Before MANTON, SWAN, and CHASE, Circuit Judges.

CHASE, Circuit Judge.

These patents are based on an outstanding improvement in radio signaling systems which brought about exceedingly important advances in the art. Much litigation has resulted. Armstrong was granted patent No. 1,113,149 on October 6, 1914, for a wireless receiving system which disclosed the system used by the defendant and admitted to infringe the plaintiff's patents provided those patents are valid. What effect, if any, may be given the disclosure of Armstrong is of vital concern here.

In a suit brought in this circuit on Armstrong's patent it was held on March 13, 1922, that his patent was valid and infringed. He was held to have completed the invention as early as January 31, 1913, and before De Forest, who claimed the invention as of August 6, 1912. See Armstrong et al. v. De Forest Radio Telephone & Telegraph Co. (C. C. A.) 280 F. 584. However, as early as 1918 litigation by way of interference proceedings in the Patent Office involved the Armstrong patent. In such a proceeding in which Armstrong, De Forest, Langmuir, and Meissner were parties, all claiming priority, the issue was carried to the Court of Appeals for the District of Columbia and De Forest prevailed in May, 1924. See De Forest v. Meissner, 54 App. D. C. 391, 298 F. 1006. The decision was based upon finding as a fact, contrary to the decision of the Commissioner of Patents who had awarded priority to Armstrong, that De Forest had discovered the principle and obtained the result in August, 1912, and was the first inventor. Thereafter, in recognition of his right as the first inventor thus established, the patents in suit were granted to De Forest by virtue of the mandate of the court.

Following the granting of these patents, a suit was brought by the assignee of the patentee in the District Court for the Eastern District of Pennsylvania against the assignee of the Armstrong patent to have an interference declared between the rival patents under section 4918, R. S. (35 USCA § 66), and to have interfering claims of the Armstrong patent held void. The result was a decree in 1924 in favor of the plaintiff which voided all of Armstrong's claims. See De Forest Radio Telephone & Telegraph Co. v. Westinghouse Electric & Mfg. Co. (D. C.) 13 F.(2d) 1014. A suit was brought in the District Court for the District of Delaware by Meissner and his assignee, the United States, against other parties to the Patent Office interference, already mentioned, their assignees, and one licensee, under section 4915, R. S. (35 USCA § 63), to compel the issuance to Meissner of a patent for the invention. De Forest again prevailed on the facts and the bill was dismissed in 1927. A suit by Langmuir and the General Electric Company against De Forest and others in the same District Court was brought under section 4915, R. S., to secure the patent for Langmuir, and again De Forest was victorious and the bill was dismissed. Appeals from these decrees were taken and heard in the Circuit Court of Appeals for the Third Circuit, where both were affirmed in one opinion. See Westinghouse Electric & Mfg. Co. v. De Forest Radio T. & T. Co. (C. C. A.) 21 F.(2d) 918. The Supreme Court granted a petition for a writ of certiorari and after hearing affirmed the decree of the Circuit Court of Appeals for the Third Circuit in a per curiam opinion reading: "Affirmed on the authority of Morgan v. Daniels, 153 U. S. 120, 14 S. Ct. 772, 38 L. Ed. 657; Victor Talking Machine Co. v. Brunswick-Balke-Collender Co., 273 U. S. 670, 47 S. Ct. 474, 71 L. Ed. 832." 278 U. S. 562, 49 S. Ct. 34, 73 L. Ed. 507.

The plaintiff insists that the decree of the Supreme Court bars this defendant from contesting the validity of the patents in suit on the ground that they were anticipated by Armstrong except by introducing new evidence so potent that the trier can be confident that had such new evidence been in the record before the Supreme Court it would have changed the result.

Were this action between the same parties that would be so under Morgan v. Daniels, supra. But it does not necessarily follow when a third party is sued for infringement of the patents awarded to De Forest. Compare Gold v. Newton (C. C. A.) 254 F. 824. If the doctrine of Morgan v. Daniels extends as far as the plaintiff here claims, it means that the express provision in section 4918, R. S. (35 USCA § 66), that "no such judgment or adjudication shall affect the right of any person except the parties to the suit and those deriving title under them subsequent to the rendition of such judgment," and the provision in section 4914, R. S. (35 USCA § 62), relating to appeals from decisions of the Commissioner of Patents that "no opinion or decision of the court in any such case shall preclude any person interested from the right to contest the validity of such patent in any court wherein the same may be called in question," have been so limited that a third party sued as an infringer is bound to the same extent that a party would be under Morgan v. Daniels, supra. That this cannot be so seems assured both on principle and because in Morgan v. Daniels the effect of the decision was expressly confined to the parties to the litigation. Moreover, in Butler v. Shaw (C. C.) 21 F. 321, 327, it was pointed out that in accordance with section 4918, R. S., "in the case of a similar bill between parties interested in interfering patents, the judgment cannot affect the right of any person except the parties to the suit, and those subsequently deriving title under them." Butler v. Shaw was cited in Morgan v. Daniels but without comment on this phase of it, so it cannot be said that this statement was approved. There is, however, this to be said for it: It follows the language of the statute. It gives a stranger who is sued on a patent the same right to contest which he would have had there been no interference, and puts a patentee, whether he has been forced to establish his right to a patent as against a claimant or not, under the same necessity for proving his patent valid when he claims some third party has infringed that he would be under if his right to the patent had not been questioned. Were we to adopt the rule which the plaintiff is here seeking to establish, litigation under section 4918, R. S., would result in giving to the successful party a judgment in the nature of one in rem and, if the contest in interference has been thorough, would from a practical standpoint establish the validity of the patent as against every claimed infringer. Certainly such a rule would be so far reaching and so contrary to the general principle that decrees in personam only bind parties and their privies that we should not press the decision in Morgan v. Daniels so far without some clear intimation from the Supreme Court that such was its effect. The express limitation in Morgan v. Daniels that the fact decided in the Patent Office (and of course this includes the Court of Appeals for the District of Columbia, which is an appellate tribunal of the Patent Office, Butterworth v. United States, 112 U. S. 50, 5 S. Ct. 25, 28 L. Ed. 656; Postum Cereal Co. v. Calif. Fig Nut Co., 272 U. S. 693, 47 S. Ct. 284, 71 L. Ed. 478) as to priority of invention between parties there contesting is "controlling upon that question of fact in any subsequent suit between the same parties, unless the contrary is established by testimony which in character and amount carries thorough conviction," requires that we preserve the limitation as stated until and unless we are advised by the Supreme Court itself that such is no longer the law. Compare, Rousso v. First Nat. Bank (C. C. A.) 37 F.(2d) 281.

Accordingly, we are of the opinion that a defendant who is sued for infringement may contest the validity of a patent unrestricted as a matter of law by the fact that the patentee has in interference proceedings been awarded priority of invention provided the one so defending was neither a party to the proceedings in interference nor claims patent rights derived from one who was defeated in such proceedings.

It was shown that Armstrong was paying the expense of the defense in this suit. He, apparently, is a volunteer actuated by a desire to determine whether De Forest could prove, in accordance with the rules of law applicable in a suit against a third party he claimed has infringed his patents, that he (De Forest) was the first inventor. That being so, this defendant stands no differently so far as Morgan v. Daniels is concerned than it would were it financing its defense without the aid of Armstrong. He is not a party to this suit, and though he could not defend a claim for infringement by contesting the validity of these patents on the ground that he was the first inventor for he was a party to the interference proceedings, the defendant may do so and that none the less because he has seen fit to relieve it of the financial burden.

The additional ground upon which the Supreme Court affirmed the decree in Westinghouse Electric & Mfg. Co. v. De Forest Tel. & Tel. Co., supra, was on the authority of Victor Talking Machine Co. v. Brunswick-Balke-Collender Co., 273 U. S. 670, 47 S. Ct. 474, 71 L. Ed. 832, which was decided (1) on the authority of Morgan v. Daniels, supra, and (2) on that of...