Victor Talking Mach Co. v. Talk-O-Phone Co.

• Decision Date: 26 April 1906
• Citation: 146 F. 534
• Parties: VICTOR TALKING MACH. CO. et al. v. TALK-O-PHONE CO. SAME v. LEEDS & CATLIN CO.
• Court: U.S. District Court — Southern District of New York

146 F. 534

VICTOR TALKING MACH. CO. et al. v. TALK-O-PHONE CO.

SAME v. LEEDS & CATLIN CO.

United States Circuit Court, S.D. New York.

April 26, 1906

Horace Pettit, for complainant.

Louis Hicks, for defendants.

TOWNSEND Circuit Judge.

The bills allege infringement of claims 5 and 35 of the Berliner patent, No. 534,543. The Circuit Court for the Southern District of New York, in the suit of this complainant against the American Gramophone Company (140 F. 860) after an exhaustive discussion of the issues presented, sustained said claims, and its decree was affirmed by the Circuit Court of Appeals on March 1, 1906, after elaborate argument by able counsel and upon voluminous briefs in which apparently every material defense was presented and discussed. The case on this motion is presented by some 500 pages of affidavits and briefs. 'Defendants' Exhibit Letters Patent' is a book of some 135 pages. It appears that the machines of these defendants are practically identical with those found to infringe in the former suit. These defendants, however, have set up twelve defenses, claimed either to consist of new matter not before the court on the former hearing or to relate to matters which, while in the record at the former hearing, were not considered or discussed. The court is urged to dispose of these questions at the earliest possible moment, in view of the great financial interests involved, of the advertisements and circulars issued by the respective parties relating to the patent in suit and the machines claimed to infringe, and of the serious damage involved whether a preliminary injunction be granted or denied.

The new defenses are founded, inter alia, on the contentions that the patent in suit has expired by reason of the expiration of prior Berliner German, French, and English patents, and a Berliner-Suess Canadian patent, by reason of Berliner's abandonment of his invention in view of said Berliner-Suess patent; that Berliner was anticipated by an Edison patent that in the former suit the Berliner patent was not fairly in controversy; that complainant has been guilty of laches; and that defendants do not infringe, in view of the prior art and especially of certain Berliner patents. The first and second defenses rest upon prior Berliner German patent, No. 53,622 and French patent, No. 207,090. It is claimed that the Berliner patent in suit covers improvements in details of construction upon the gramophone described and claimed in earlier patents, because his broad invention had been disclosed therein, and especially in 372,786, not before the court in the original suit, and that those details were covered by said prior foreign patents; that the inventions in suit are identical with those of the foreign patents, and that, as they expired prior to the commencement of this suit the patent in suit expired at the same time under the settled rule. Bate Refrig. Co. v. Sulzberger, 157 U.S. 1, 15 Sup.Ct. 508, 39 L.Ed. 601; Siemens v. Sellers, 123 U.S. 276, 8 Sup.Ct. 117, 31 L.Ed. 153. It is claimed that the language of the specifications of the patent in suit supports this view, where the patentee says that 'one feature of my invention has reference to the method of recording sound,' etc., and 'the other features of my invention have reference to the construction of the details of both the recorder and the reproducer of the gramophone,' and that, while he illustrated his reproducing apparatus as a whole, he does not state that it is his invention. It is claimed, further, that unless the claims in suit are limited to certain improvements in details they are anticipated by Edison and Suess.

It is argued that the patent in suit expired prior to the commencement of this suit by reason of the expiration of said prior Berliner German and French patents. The drawings of the German patent are substantially identical with Figures 6 and 7 of the patent in suit, and the specifications describe and the claims cover these constructions. The same is true (barring the claims which are immaterial) of said French patent. The German patent, being a patent of addition to prior patent No. 45,048, expired with the expiration thereof on November 7, 1902. The French patent expired July 19, 1905. The French patent and the claims of the German patent cover improvements in details of the construction of Berliner's recorder and reproducer. It is claimed by complainant that these details differ in construction and operation from those shown in the patent in suit and covered by claims not in issue; but this question can only be determined by expert testimony, and this point does not appear to be material in the determination of the issue herein. The issue here presented, assuming the details to be substantially identical, is whether the prior patenting in a foreign country of a minor part of a broad or basic invention, such as that covered by the claims in suit, so affects the whole that the expiration of the foreign patent terminates the whole of a United States patent, which includes both the minor parts and the broad main invention. The Circuit Court and the Circuit Court of Appeals in the original suit held that the claims in suit covered the broad invention.

The claims in suit are as follows:

'(5) The method of reproducing sounds from a record of the same, which

consists in vibrating a stylus and propelling the same along the record by and in accordance with the said record, substantially as described.'

'(35) In a sound-reproducing apparatus, consisting of a traveling tablet having a sound record formed thereon and reproducing stylus shaped for engagement with said record and free to be vibrated and propelled by the same, substantially as described.'

The statute provides as follows:

'Sec. 4887. No person shall be debarred from receiving a patent for his invention or discovery, nor shall any patent be declared invalid, by reason of its having been first patented or caused to be patented in a foreign country, unless the same has been introduced into public use in the United States for more than two years prior to the application. But every patent granted for an invention which has been previously patented in a foreign country shall be so limited as to expire at the same time with the foreign patent, or, if there be more than one, at the same time with the one having the shortest term, and in no case shall it be in force more than seventeen years. ' (U.S. Comp. St. 1901, p. 3382.)

The test in each case, under the statute, is whether the inventions are identical, as is said by the Supreme Court in Commercial Mfg. Co. v. Fairbanks Co., 135 U.S. 176-194, 10 Sup.Ct. 718, 724, 34 L.Ed. 88:

'A fair test of the question as to whether the American patent is anticipated by the foreign patents, or is included in them, we think would be: Were a person in this country, after the issue of the present American patent, to commence the manufacture of oleomargarine by

...