Radio Corporation v. Radio Engineering Laboratories

• Decision Date: 29 August 1932
• Docket Number: No. 5580.,5580.
• Citation: 1 F. Supp. 65,14 USPQ 306
• Parties: RADIO CORPORATION OF AMERICA et al. v. RADIO ENGINEERING LABORATORIES, Inc.
• Court: U.S. District Court — Eastern District of New York

1 F. Supp. 65

14 USPQ 306

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

No. 5580.

District Court, E. D. New York.

August 29, 1932.

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

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

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

Pennie, Davis, Marvin & Edmonds, of New York City (William H. Davis and George E. Faithfull, both of New York City, of counsel), for defendant.

CAMPBELL, District Judge.

This is an action brought to secure relief by injunction and damages for the alleged infringement of patent No. 1,507,016, issued to Lee De Forest, assignor to De Forest Radio Telephone & Telegraph Company, for Radio Signaling System, dated September 2, 1924, on an application filed September 23, 1915; and of patent No. 1,507,017, issued to Lee De Forest, assignor to Radio Telephone & Telegraph Company, for Wireless Telegraph & Telephone System, dated September 2, 1924, on an application filed March 20, 1914.

The plaintiff Radio Corporation of America has rights under the patents in suit, including an exclusive license in the field in which the defendant is alleged to be infringing, and the plaintiffs American Telephone & Telegraph Company and De Forest Radio Company hold other exclusive right and title under the said patents.

The plaintiffs are corporations and have sufficient right, title, and interest in the patents in suit to enable them to maintain this suit.

The defendant is a New York corporation, doing business in the borough of Queens, city of New York, and is there engaged in the manufacture and sale of radio transmitting and receiving apparatus, charged in this suit to infringe.

Mr. Armstrong, whose patent rights in patent No. 1,113,149 were acquired by the Westinghouse Electric & Manufacturing Company, is actually defending this suit and paying the expenses thereof, and while his purpose undoubtedly is to endeavor to again try out the issue of priority of invention between him and Dr. De Forest, we must not lose sight of the fact that this is simply a suit for infringement, to be determined on the law and the facts.

The patent in suit No. 1,507,016 is for the invention known as the "oscillating audion," and the patent in suit No. 1,507,017 is for the invention known as the "feed back circuit."

The invention in issue was a tremendous improvement in radio signaling systems. It increased the sensitiveness of the audion radio receiver hundreds of times, and its fundamental value as a regenerator of radio frequency currents in radio transmission systems, and in high frequency carrier current telephony is great.

The invention of patent No. 1,507,017 in suit, known as the "feed back circuit," is a general type of circuit employed with the three-electrode vacuum tube or audion, wherein current flowing in the plate filament or "output" circuit of the audion is fed back to the grid filament or "input" circuit thereof, so that the audion acts over and over again upon the same current, amplifying it each time it passes through the tube. Such action of the audion with its feed back circuit is also referred to as regenerative action. The employment of such regenerative action beyond a predetermined extent, for example, to the maximum extent, causes the audion with its feed back circuit to become a source of continuous oscillations, the audion becoming a generator of alternating currents, which are sustained in the sense that the generation thereof continues until the circuit is altered, or the audion tube becomes inoperative.

The invention of patent No. 1,507,016 in suit is the audion with its feed back circuit and instrumentalities adjusted to produce sustained oscillations known as the "oscillating audion" or "audion oscillator."

This suit is based upon claims 24, 25, 26, 27, and 28 of patent No. 1,507,016, which are broadly defined as methods and means for producing sustained electrical oscillations, or electrical alternating currents; and claims 15, 17, 18, 19, 20, and 21 of patent No. 1,507,017, claims 15, 17, and 18 being defined as "In a radio signaling system," and claims 19, 20, and 21, as "In an electrical system."

The defendant prior to the filing of the bill herein made and sold a wireless transmitter, Exhibit 3, and a wireless receiver, Exhibit 4. The said transmitter, Exhibit 3, employs an oscillating audion producing continuous electrical oscillations in the manner disclosed and claimed in patent No. 1,507,016 in suit, by virtue of a feed back circuit arrangement disclosed in patent No. 1,507,017 in suit.

In the said transmitter the electrical coupling of the output and input circuits of the oscillating audion is of the electrostatic or condenser type, sometimes referred to as a capacity coupling, and the feed back is accomplished by a variable, tuned plate circuit, so that the plate potential is effective across the capacity coupling within the tube and energy is fed back to the grid circuit.

The said receiver, Exhibit 4, embodies the feed back or regenerative circuit of the two patents in suit, the feed back being of the tickler type, in which the coupling between the input and output circuits is effected inductively.

The receiver may be so adjusted when in use that the feed back effected is just below the amount necessary to reach the point of generation of continuous oscillations, and the apparatus may be employed to receive radio signals of the damped wave type, or it may be so adjusted that the maximum feed back is effected and the audion system becomes a source of continuous oscillations, and the apparatus may be employed to receive radio signals of the continuous wave type, which last-mentioned method of reception is known as the "beat" or "heterodyne" method.

It was admitted that defendant's apparatus contains the regenerative or feed back circuits, and that oscillations are produced thereby.

The claims of the patents in suit upon which this suit is based are infringed by defendant's transmitter and receiver, Exhibits 3 and 4, except that claim 24 of patent No. 1,507,016 in suit, calling for an inductive coupling between the circuits, is not infringed by the transmitter, Exhibit 3, but is infringed by the receiver, Exhibit 4.

Before proceeding to consider the defenses interposed by the defendant in this suit, we must consider the following prior adjudications involving the invention of the patents in suit, to determine whether and to what extent such adjudications are binding authority upon this court and the defendant in this suit:

(1) An interference proceeding in the Patent Office involving patent applications which had been filed by (a) Armstrong (whose patent rights were acquired by the Westinghouse Electric & Manufacturing Company); (b) De Forest (whose rights were owned by the De Forest Radio Company and American Telephone & Telegraph Company); (c) Langmuir (whose rights were owned by the General Electric Company); and (d) Meissner (a German inventor whose rights were taken over by the Alien Property Custodian, whose interests were represented by the government.

This interference proceeding reached the Court of Appeals for the District of Columbia, which found that De Forest was the prior inventor. De Forest v. Meissner, 54 App. D. C. 391, 298 F. 1006. As a result the two patents in suit issued to De Forest.

(2) During the pendency of the said interference controversy before the Patent Office tribunals, and before it was decided by the Court of Appeals for the District of Columbia, the Armstrong patent, No. 1,113,149 (which was not expressly involved in the interference proceedings, a supplemental application of Armstrong for the oscillating audion being directly involved in that proceeding), was the basis of an infringement suit brought by Armstrong and the Westinghouse Company against the De Forest Company, in the Southern District of New York. There was interposed in that case, among others, the defense that De Forest was the prior inventor of the subject-matter of the Armstrong patent. Judge Mayer overruled this defense and found certain claims of the Armstrong patent to be valid and to have been infringed by certain audion heterodyne receiving apparatus manufactured by the De Forest Company (Armstrong v. De Forest Radio Telephone & Telegraph Co., 279 F. 445), and was affirmed by the Circuit Court of Appeals for the Second Circuit (280 F. 584).

(3) Thereafter a number of suits were brought on the Armstrong patent, in the Southern District of New York, including Westinghouse Electric & Mfg. Co. v. Independent Wireless Tel. Co. (D. C.) 300 F. 748, and Westinghouse Electric & Mfg. Co. v. Taub, 4 F.(2d) 605, in which the apparent discrepancy between the opinions of the Court of Appeals of the District of Columbia and Circuit Court of Appeals of the Second Circuit, as to priority of invention, was considered. In each of those cases the court held that, until the Supreme Court decided the controversy, the decision of the Circuit Court of Appeals for the Second Circuit was controlling on them.

The question of priority of invention was not in issue in Westinghouse Electric & Mfg. Co. v. Royal-Eastern Electrical Supply Co., 9 F.(2d) 397, decided by this court.

(4) Meissner, one of the unsuccessful parties in the interference proceeding, filed a suit in the District Court of Delaware, under section 4915, R. S. (35 USCA § 63), to procure a decree that the Commissioner of Patents, notwithstanding the adverse decisions of the Court of Appeals for the District of Columbia, grant to him a patent for the invention. De Forest, Armstrong, and Langmuir (with their assignees) were named as defendants in the case. Armstrong and Langmuir filed answers including counterclaims, and each prayed for a decree directing the...