Victor Talking Machine Co. v. American Graphophone Co.

• Decision Date: 27 March 1911
• Citation: 189 F. 359
• Parties: VICTOR TALKING MACHINE CO. v. AMERICAN GRAPHOPHONE CO.
• Court: U.S. District Court — Southern District of New York

189 F. 359

VICTOR TALKING MACHINE CO. v. AMERICAN GRAPHOPHONE CO.

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

March 27, 1911

Horace Pettit, for complainant.

Philip Mauro, Reeve Lewis, and C. A. L. Massie (Ralph L. Scott, of counsel), for defendant.

RAY District Judge.

The patent in suit, 'record for talking machines,' was granted to Eldridge R. Johnson, assignor to Victor Machine Company, August 11, 1908, on divisional application filed November 12, 1904, original application filed August 16 1898. While the complainant alleges in a general way that substantially all the claims are infringed, it points out and specifically alleges infringement of claims 2, 3, 4, 8, 14 and 23. These claims 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 undulation corresponding to the sound waves.

'4. A sound record made from 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 tablet. * * *

'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. * * *

'14. In the art of recording and reproducing sounds, the method of cutting out a laterally undulatory groove of substantially constant depth in a tablet of suitable material by vibrating laterally a cutting stylus through the medium of sound waves and then forming a duplicate thereof.

* * *

'23. The method of producing sound records consisting in cutting out the material in forming the record groove as distinguished from marking or tracing, upon a tablet of wax or other suitable material by means of the lateral vibrations of a suitable cutting stylus, and forming a record groove of appreciable and substantially uniform depth having lateral undulations corresponding to the sound waves, and then reproducing a sound record from the original record groove so cut.'

The specifications of the patent in suit say:

'My invention relates to improvements in sound records of either the cylindrical or disk type, and has for its object to provide an improved record such that the walls of the groove shall be so formed as to reproduce the sounds of the record in tones more clear and distinct than has heretofore been possible from records of prior construction.

'In forming records upon sound recording machines for use in talking machines, such as the gramophone, where the sound waves are recorded in the form of a groove of even depth having lateral undulations as distinguished from an undulatory groove of varying depth, as in the type of machines of which the phonograph is an illustration, it is essential, in order to produce a clear record, that the material be neatly and cleanly cut from the grooves in the process of recording so that smooth, well-defined surfaces be formed in the walls of a well defined groove.

'In the art of making sound records, comparatively little attention has been paid to the finishing and the forming of the surfaces of the walls of the record groove. The vertical groove has heretofore been cut by a recording tool, which, owing to the character of the groove and the shape of the tool, has not only had a tendency to tear the material of the record, or distort the same, so as to form roughnesses which, in the reproduction of the record or its duplicate, cause disagreeable sounds, owing to the harsh vibrations of the diaphragm caused thereby, but also, among other things, in the vertical type of record, the resistance on the cutting stylus in gouging out the material increases in proportion to the depth, which objection is overcome in my cut laterally undulating record groove, where the resistance to the force exerted by the cutting stylus is uniform and even.

'I have discovered by careful experiments that the best results are obtained in a cut out laterally undulatory groove of substantially constant depth in a record tablet, preferably of wax or other suitable material, and furthermore, when the walls of the groove diverge from the bottom of the same to the surface of the record, or, more specifically, when the walls of the groove are formed by surfaces which in cross section give the lines of a segment of an ellipse, the groove being widest at its mouth, and gradually diminishing in its width toward the bottom. By this construction, the material is neatly and accurately cut out, and forms a groove having smooth and well-defined walls; the recording needle has greater freedom of oscillation, and by reason of the relative contour of the walls of the groove with the outline of the needle, this construction prevents any binding effect and secures a maximum ease of movement of the needle with a minimum of wear upon the record.'

Mr. R. M. Hunter, complainant's expert, says:

'(8) I understand that the broad invention comprehended by the patentee is embodied in the method of producing a laterally undulating record of constant depth when the groove is formed by cutting out and removing the material, and in which the side walls of the groove are clearly defined and smooth surfaces produced by the cutting or engraving action of the stylus during the formation of the cut-out groove, whereas in the preferred form of the invention the side walls of the groove 'diverge from the bottom of the same to the surface of the record.'

'(9) The invention described in the patent embodies a method of forming an engraved or cut-out record and also the making of a commercial record from the cut-out record; also the structure comprising a disc having a cut-out laterally undulatory groove with or without diverging side walls; and, finally, a sound record made from the cut-out laterally undulatory groove of constant depth, and which sound record preferably is provided with diverging side walls. The first of these improvements is defined in claims 3, 14, and 23 of the patent in suit, the second is comprised in claims 2 and 8 thereof, and the third is comprised in claim 4 thereof.'

In what is called the parent patent, patent to Eldridge R. Johnson, assignor to Victor Talking Machine Company, No. 778,975, dated January 3, 1905, application filed August 16, 1898, the claim made was for 'cutting-tool for sound-recording machines.' Johnson tells how to make or form a cut-out record. He says, after telling how to cut out and form a record:

'It is understood that in reproducing the record thus formed may be used for reproducing purposes directly, or a more durable and indestructable record may be reproduced by various processes from the original record.

That is duplicates might be made by various processes.) This feature, however, forms no part of my present invention herein described.'

Earlier in the specifications of such parent patent, No. 778,975, he said:

'In producing records upon sound-recording machines for use upon talking-machines, such as the gramophones, where the sound-waves are recorded in the sides of the groove in the record instead of in the base, as in the type of machine of which the phonograph is an illustration, it is essential in order to produce a clear record that the material be cleanly and neatly cut from the groove in the process of recording, so that sharp well-defined lines will be formed in the walls of the groove. I have discovered that, in order to produce the best results, these side walls of the groove must be at a slight angle to the face of the plate or record, and the groove must be widest at the mouth. Where the walls are perpendicular or slightly wider at a point below the mouth of the groove, inferior results are produced, and the record is by no means as durable.

'The object of my present invention is to provide a cutting tool for cutting grooves in wax or other suitable material for recording sound waves of the construction above referred to, my aim being to provide a tool of microscopic proportions peculiarly formed with a flat face of substantially oval form, the edges of the oval being cutting edges to cleanly cut the material from the resultant groove, leaving sharp, smooth, well-defined edges, the flat face being preferably obliquely disposed to the axial line of the tool, so that when in position in operation to present a cutting-face substantially perpendicular.

'It is clear that my invention may also be applicable to other constructions of recording machines than that hereinbefore more particularly referred to.'

Having said this, Johnson then described the tool for doing the work, how to use it, the method of doing the work, and the result. It is seen, however, that the record and method claims were not filed until November 12, 1904, six years after the filing of the 'parent patent.' I do not think there was an abuse of discretion in the Patent Office in allowing a division of the application in this case. In Steinmetz v. Allen, 192 U.S. 543, 24 Sup.Ct. 416, 48 L.Ed. 555, the court, speaking of the division of applications, said:

'Without that rule (rule 41 held to be a hard and fast rule), the action of the Patent Office can be accommodated to the character of inventions and discretion can be exercised, and when exercised, we may say in passing, except in cases of clear abuse, the...