Victor Talking Mach. Co. v. American Graphophone Co.

• Decision Date: 28 September 1905
• Citation: 140 F. 860
• Parties: VICTOR TALKING MACH. CO. et al. v. AMERICAN GRAPHOPHONE CO.
• Court: U.S. District Court — Southern District of New York

140 F. 860

VICTOR TALKING MACH. CO. et al. v. AMERICAN GRAPHOPHONE CO.

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

September 28, 1905

Horace Pettit, for complainants.

Elisha K. Camp (Philip Mauro and C. A. L. Massie, of counsel), for defendant.

HAZEL District Judge.

The bill is in equity, and relates to the infringement of letters patent No. 534,543, issued February 19, 1895, to Emile Berliner, assignor to complainants, on application filed March 30, 1892, for improvements in a talking machine commonly known as the 'gramophone.' The apparatus to which the improvements relate is constructed to record and reproduce vocal sounds. The patent has 35 claims, of which claim 5, for the process, and 35, for construction of the recording and reproducing apparatus, alone are involved. Such claims read 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 a reproducing stylus shaped for engagement with said record and free to be vibrated and propelled by the same substantially as described.'

At the date of the invention in suit it was not new to record sound and articulated words, and reproduce the same by suitable mechanical agencies. Numerous defenses are interposed in the answer, viz., anticipation, prior use, abandonment and nonpatentability. The objection is also urged that the court is without jurisdiction, on the ground that complainants, before the suit was instituted, agreed in writing to release the defendant from the payment of damages, and to grant to it a license to use, sell, and manufacture the patented machine, provided the patent in suit was held valid by the court. Such objection, however, which is erroneously sought to be sustained upon the authority of Root v. Railroad Co., 105 U.S. 189, 26 L.Ed. 975, is without merit. The principle is unassailable that, where mere damages are sought to be recovered in an action for infringement of a patent, a court of equity will not interfere. But, where the bill alleging infringement of an unexpired patent demands damages and permanent injunction, equitable relief in a proper case will not be refused. A prior agreement, by which the interested parties mutually agree upon terms of settlement on condition that the patent in controversy is sustained by the court, cannot upon principle and authority deprive a court of its inherent power and jurisdiction. McMillin v. St. Louis & Miss. Valley Transp. Co. (C.C.) 18 F. 260; Guaranty Co. v. Green Cove Rod. Co., 139 U.S. 137, 11 Sup.Ct. 512, 35 L.Ed. 116. To the same effect, see Doyle v. Continental Ins. Co., 94 U.S. 535, 24 L.Ed. 148; Insurance Co. v. Morse, 20 Wall. 445, 22 L.Ed. 365.

It is insisted on the part of the defendant that the evidence conclusively shows that there was a public use of the invention for more than two years prior to the application for the patent; that the inventor abandoned his right to the claims in suit by a postponement of them; and that in an earlier application for a patent he described such claims in his specifications, without, however, claiming them. The complainants contend that the alleged prior public use was for the purpose of experiment, and that there was no abandonment in fact. To properly understand the defenses it is necessary to consider the state of the art, and to briefly indicate the principles of the various talking machines commonly known and mentioned in the record. The references relied upon to anticipate the involved claims are first, the Franklin Institute lecture by the patentee on May 16, 1888; second, a publication by him in the Electrical World, on November 12, 1887; and, third, the patents to Bell & Taintor, No. 341,214, dated May 4, 1886, and to W. Suess, assignor to Emile Berliner, No. 427,279, issued May 6, 1890. In the British patent to Edison, No. 1,644, dated April 24, 1878, for recording and reproducing vocal sounds, the air vibrations were recorded by a system of indentations upon a pliable or yielding material, as, for instances, a think sheet of metal or tin foil. The foil was ordinarily placed over a grooved substance, and received impressions of the voice through the instrumentality of a movable, inelastic diaphragm, having at its end an indenting point or stylus. In order to effectuate the reproduction of sound vibrations, the point of the stylus was essentially kept in constant contact with the revolving record, cylinder, or disc. This was accomplished by a mechanical device which propelled the stylus across the surface of the record. In the graphophone patent, issued to Bell & Taintor, the record was engraved or cut in waxlike or amorphous material. The form of cutting or engraving was in a spiral groove of varying depth; the side of the walls sloping toward the bottom. The stylus, which curved in a downward direction, was kept in the groove by gravity, and as the record rotated it was vibrated vertically 'in the direction of its length. ' It is shown by the evidence that the graphophone in one form, which is illustrated in the drawings attached to the patent, required mechanical means to propel the record past the reproducer diaphragm and stationary stylus. In another form, a movable stylus attached to the diaphragm was propelled by an auxiliary device across the record, so as to retain the stylus point in constant contact with the vertical undulations.

These different forms of talking machines are disclosed by the patents of prior date; the common form of style being adapted to record and reproduce vocal sounds at the instance of the user, and the other to merely reproduce sound vibrations as had previously been recorded in accordance with the process of the patentee.

In the patent to Emile Berliner, No. 564,586, issued on July 28, 1896, application filed November 7, 1887, the process of recording and reproducing sound vibrations differs essentially from the method used in the phonograph and the graphophone. The specification described a process by which the sounds were inscribed upon a layer of nonresisting material, which was afterwards copied in a nonyielding material, from which the sounds were reproduced. The specification says:

'The original record, as well as the copy of the same, is thus obtained as an undulatory line of even depth, as distinguished from the line of varying depth obtained by the ordinary phonograph and graphophone.'

It is not disputed that such mode or process was a new and meritorious invention, and that it was not merely a patent for the functional effect of the machine in connection with which it was used. The earlier specification does not claim the method nor the details of construction of the claims in controversy. Hence it is contended by the defendant, as will presently appear, that there was a surrender or waiver thereof. In the patent in suit two features of the invention are mentioned; one concerning the process or mode of recording sound upon a record tablet, the other as to the construction of the apparatus. Complainants contend, and the proofs show, that the stylus attached to the diaphragm is arranged so as to permit the same to vibrate laterally, and that, owning to lateral undulations in the walls of the record groove, a desirable swaying motion is imparted to the reproducer diaphragm. Concededly, the lateral undulations in the record automatically guide or propel the stylus and diaphragm in its course over the disc from the outer circumference toward the center, and the stylus travels in an apparently direct radial path, while at the same instant of time it is pulsated or incited by the sound waves.

The principle of operation in the Berliner machine is thought to be essentially different from that of the machine of Bell &amp Taintor. In the latter an auxiliary joint or feed screw was necessary, as already stated, to effectuate the required passage of the record over the point of the stylus, or to cause the stylus and reproducer diaphragm to travel across the surface of the record. In complainants' patent, on the other hand, it is shown...