Victor Talking Mach. Co. v. Starr Piano Co.

• Decision Date: 14 January 1920
• Docket Number: 130.
• Citation: 263 F. 82
• Parties: VICTOR TALKING MACH. CO. v. STARR PIANO CO.
• Court: U.S. Court of Appeals — Second Circuit

263 F. 82

VICTOR TALKING MACH. CO. v. STARR PIANO CO.

No. 130.

United States Court of Appeals, Second Circuit.

January 14, 1920

Wm Houston Kenyon, Richard Eyre, and Edgar F. Baumgartner, all of New York City, for appellant.

Drury W. Cooper, Parker W. Page, and Thomas J. Byrne, all of New York City, for appellee.

Before WARD, HOUGH, and MANTON, Circuit Judges.

MANTON Circuit Judge.

On August 11, 1908, letters patent No. 896,059 were issued to Eldridge R. Johnson for a record for talking machines. These letters patent have been assigned to the appellant. The appellee is charged with infringement of this patent. Claims 2, 3, and 8 are claimed to be infringed in this litigation and read as follows:

'2. A disk sound record, having a cut laterally undulatory groove of substantially constant depth, the walls of said groove diverging from the bottom of the same to the surface of the record.

'3. The method of producing sound records, consisting in cutting, as distinguished from marking or tracing, upon a tablet of suitable material, by means of the lateral vibrations of a suitable stylus, a record groove of appreciable and substantially uniform depth, having lateral undulations corresponding to the sound waves.'

'8. A disk sound record, comprising a spirally disposed laterally undulatory groove of substantially constant depth, in which the record groove was formed by cutting out and removing the material in forming the record groove, substantially as described.'

The validity of the patent was questioned in Victor Talking Machine Co. v. American Graphophone Co. (C.C.) 189 F. 359. There Judge Ray, sitting in the District Court, decided that the patent was for a record for talking machines and method of making the same, and said to consist of a lateral undulatory record of constant depth, in which the groove is formed by cutting out and removing the material of the disk by a cutting tool, instead of being displaced by a needle point tool, and in which the side walls of the groove are clearly defined and smooth surfaces, and in preferred form diverge from the bottom to the surface of the record. He held that the Jones patent, No. 688,739, did not anticipate the patent in suit. The record on this motion, and in opposition thereto, indicated that an appeal was taken from this decision, and an affirmance was had by consent. It is stated that a compromise was reached, and this determined the result in the Circuit Court of Appeals. In the later case of American Graphophone Co. v. Emerson Phonograph Co. (D.C.) 255 F. 574, Judge Mayer, in considering the Jones patent, No. 688,739, held that the Jones patent and method for producing sound records was not anticipated by the Johnson prior use, and was valid, but not generic. When the application was presented in the court below, the same judge who decided the Emerson Case presided. We think that the opinion in the Emerson Case indicates a comprehensive study of the patents of records for talking machines or sound-recording records. In the Emerson Case, the court said:

'Judge Ray, in his opinion, drew a very close line of distinction between the Jones patent and the Johnson patent, holding the view that they were both valid. The case on this point was so debatable that there well might be doubt as to the result in the Circuit Court of Appeals, if that controversy were reviewed by that court on the merits. The question here, however, is whether the testimony of Johnson, and those who corroborate him in various respects, establish under familiar principles that prior use which will defeat the Jones patent.'

Without commenting upon the correctness of the view taken by the court there, it is apparent that the District Judge was not in accord with the conclusions reached by the court in Victor Talking Machine Co. v. American Graphophone Co. (C.C.) 189 F. 359. In the court below, the same District Judge again expressed his doubt in the following language:

'Ordinarily the court would accept the decision of Victor Co. v. American Graphophone Co. (C.C.) 189 F. 359, as the starting point, and would hesitate long before it failed to follow the conclusion, not only of the same court, but of so experienced and able a judge of patent causes. Yet I have not been able to escape the doubt expressed in Emerson Phon. Co. v. American Graphophone Co. (D.C.) 255 F. 574.'

Apparently because of the doubt of the correctness of the previous ruling as there expressed, the District Judge denied the application for a preliminary injunction, but did, however, facilitate the early final hearing, and granted to the plaintiff the privilege of an early trial. At the same time he pointed out that the appellee was financially fully responsible. Discontented with this result, the appellant seeks relief by this appeal. The fundamental error assigned and urged upon us is that the court erred in failing to accept and follow the considered judgment of the District Court at the final hearing in the prior case as to the validity of the patent in suit, because 'of a personal doubt as to the soundness of that judgment. ' We recognize and again approve the now settled doctrine that, where a patent has been held valid in a prior adjudication, an injunction pending the trial of the action will be granted. We recently announced the same conclusion in Imperial Machine & Foundry Corp. v. Blakeslee & Co., 262 F. 419, . . . C.C.A. . . ., decided December 11, 1919. There is an exception to this rule, as where new matter of substantive defense is presented, and where such new matter is convincing to the court that a different conclusion may be reached than was reached in the earlier case, if the new matter were presented to the court. If there be doubt as to the outcome of the case, the rule is not so positive as to require the granting of a temporary injunction. Mast, Foos & Co. v. Stover Co., 177 U.S. 485, 20 Sup.Ct. 708, 44 L.Ed. 856; Thomson-Houston Co. v. Ohio Brass Co., 80 F. 712, 26 C.C.A. 107. The right of the court, of not adhering blindly to...