Victor Talking Mach. Co. v. Duplex Phonograph Co.

• Decision Date: 27 May 1909
• Parties: VICTOR TALKING MACH. CO. et al. v. DUPLEX PHONOGRAPH CO.
• Court: U.S. District Court — Western District of Michigan

177 F. 248

VICTOR TALKING MACH. CO. et al. v. DUPLEX PHONOGRAPH CO.

United States Circuit Court, W.D. Michigan, Southern Division.

May 27, 1909

Horace Pettit, for complainants.

Samuel Owen Edmonds and Dallas Boudeman, for defendant.

KNAPPEN District Judge.

The suit is upon patent No. 534,543, issued February 19, 1895, to Emil Berliner, complainants' assignor, for improvements in machines for recording and reproducing sound, called in the patent 'gramaphones.' Claims 5 (relating to method) and 35 (relating to apparatus for reproducing sound) are alone involved here. They 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 a reproducing stylus shaped for engagement with said record and free to be vibrated and propelled by the same substantially as described.'

The defense made here is that the patent is void, first, because of anticipation (a) by Edison, (b) by Bell & Tainter; second, because of public use more than two years prior to the application for the patent; third, because the claims in question cover, as alleged, nothing more than the functions of Berliner's apparatus; fourth, because of the expiration on February 11, 1899, of a Canadian patent applied for by Berliner in the name of Suess, who assigned the patent to him; and, fifth, because of the expiration of certain British, French, and German patents issued to Berliner.

The claims in suit have already been several times before the courts. In what is known as the 'original case,' decided in 1905 by the Circuit Court for the Southern District of New York, it was held that the Berliner patent in suit was not anticipated; that it discloses patentable invention; and that it is not invalidated by prior public use of the invention or by abandonment. Victor Talking Machine Co. v. American Graphophone Co. (C.C.) 140 F. 860. This decision of the Circuit Court was in 1906 affirmed by the Circuit Court of Appeals for the Second Circuit. 145 F. 350, 76 C.C.A. 180. In Victor Talking Machine Co. v. Talk-O-Phone Co. (C.C.) 146 F. 534, and in the case of Same Complainant v. Leeds & Catlin (C.C.) 150 F. 147, on motions for preliminary injunction, the patent was again held valid as against several defenses, some of which were then newly asserted, including the defense that the patent had expired with certain foreign patents. This decision was affirmed by the Court of Appeals. 148 F. 1022, 79 C.C.A. 536. In Leeds & Catlin Co. v. Victor Talking Machine Co., 154 F. 58, 83 C.C.A. 170, an order of the Circuit Court adjudging the complainant guilty of contempt in violating the injunction issued under the decision last referred to was affirmed by the Circuit Court of Appeals. The two decisions of the Circuit Court of Appeals last referred to were affirmed by the Supreme Court of the United States April 19, 1909 (cases Nos. 80 and 81). 213 U.S. 301, 29 Sup.Ct. 495, 53 L.Ed. 805; Id., 213 U.S. 325, 29 Sup.Ct. 503, 53 L.Ed. 816. Several other cases have been heard on motions for preliminary injunctions, based upon the decree in the original case sustaining the patent.

The defendant's contention that the patent in suit has expired by reason of the claimed expiration of the Suess Canadian patent, as well as the proposition that claim 35 is invalid, as covering merely a mechanical function, were expressly decided by the Supreme Court adversely to defendant's contention in the Leeds & Catlin Case, No. 80. A denial of the claim that the patent in suit expired with the other foreign patents results from that decision. The remaining defenses now urged have either expressly or by apparently necessary implication been rejected by the Circuit Court and the Circuit Court of Appeals in one or more of the cases above referred to. Those decisions, while not binding upon me, are entitled to high consideration. An examination of the record and briefs fails to bear out the proposition that the 'original case' was presented upon an insufficient record and without strenuous contest.

As to the defense of anticipation: As is well known, Edison was the pioneer inventor in the art of recording and reproducing sound. His records were made by vertical vibrations, producing in a pliable material indentations (as distinguished from a groove) corresponding to the sound waves which caused the vibrations. He was followed by Bell & Tainter, whose record consisted of a groove of even width, but of varying depth; the elevations and depressions at the bottom of the groove corresponding to the sound waves which produced them.

In the reproduction of sound thus recorded both Edison and Bell & Tainter used positive mechanical means for carrying the reproducing stylus across the record (or for conveying the record past the stylus), and thus keeping the stylus in engagement with the record. In Berliner's patent the sound vibrations produce a laterally undulating spiral line or groove of even depth, the inequalities caused by and representing the sound vibrations being upon the sides of the groove, the record tablet being composed of a hard, resisting material, and taking the form of a disk. In reproducing sounds, the patent in suit dispenses with mechanical means for conveying the stylus across the record, and by the mere engagement of the reproducing stylus with the record groove, the former being by the latter vibrated laterally by its undulations, is by the record groove itself guided and propelled in accordance therewith. This constitutes the 'automatic' or 'feed from the record' feature, which the claims under consideration are designed to protect.

The claimed anticipation by Edison is based upon this situation: The specifications of British patent No. 1,644, issued to Edison April 24, 1878, show a figure 34, representing a disk centered upon a horizontal shaft, the disk having on each of its opposite faces, and in apparent engagement therewith, a reproducing apparatus, the separate carrying arms of the reproducers connecting with opposite sides of a block, centered on a horizontal shaft below and at right angles with the shaft carrying the record disk. The only reference in the specifications to this figure 34 is in these words:

'Figure 34 is a perspective view showing a double phonet (reproducer), there being a spiral line of indentations on each side of the revolving disk, d, one phonet coming into action as the other finishes; in this case the spirals should be in opposite directions, so that the disk continuing to revolve in the same direction moves one phonet from the center outwards, and then the other phonet is connected and moves back towards the center; this may be used as a toy.'

It is this figure 34 and the description referred to which are relied upon as showing that Edison was familiar with the idea of propulsion of the reproducing stylus by and in accordance with the record. None of the claims of the patent suggest such automatic propulsion. It is by no means clear that figure 34 discloses, or is intended to disclose, a device by which the stylus and sound box shall be propelled and guided across the face of the record by the record itself, and without the use of independent mechanical means. Nor is it by any means clear that the figure discloses or is intended to disclose a record groove with undulating sides by which the stylus, through its impingement upon the sides of the groove, is vibrated and propelled. On the contrary, the record is expressly referred to as a 'spiral line of indentations.' The disclosure of a record automatically vibrating and propelling the stylus is to say the least vague. This same figure 34 has been so characterized by Judge Shipman in American Graphophone Co. v. Leeds (C.C.) 87 F. 873, 877. While this figure 34 was not discussed in the opinion of the court or in briefs of counsel in the 'original case,' the answer set up the Edison patent in question as an anticipation; and in the Talk-O-Phone Case figure 34 was discussed in briefs of counsel.

The burden is upon the defendant to show anticipation. It is not claimed that any practical use has been made of the feed from the record idea until by Berliner and his assignee, whose efforts have materially advanced the art of reproducing sound and made the feed from the record machine a great commercial success. In such circumstances, the identity of methods and results being, to say the least, doubtful, the doubt must be solved in favor of complainants. Walker on Patents (4th Ed.) Sec. 76; Simonds Rolling Machine Co. v. Hathorn Mfg. Co., 93 F. 958, 36 C.C.A. 24. The conclusion reached is that the patent claims in suit were not anticipated by Edison.

In support of the alleged anticipation by Bell & Tainter reliance is had, first, upon a paper (known as the 'Volta laboratory paper') deposited by them in the Smithsonian Institute in October, 1881, nearly four years before the making of their application for United States patent No. 341,214, which was applied for June 27, 1885, and issued May 4, 1886; second, upon certain language in the specifications of that patent; and, third, the testimony of Dr. Bell taken during the litigation over the patent in suit. Neither the Volta laboratory paper nor Dr. Bell's testimony were before the court in the 'original case.' In the Volta laboratory paper, the invention of cutting and engraving the original record, as distinguished from indenting, was recorded; and it is also stated that the record groove might be either of the vertically undulating variety or the 'wavy zigzag line of...