Western Electric Co. v. Anthracite Tel. Co.

• Decision Date: 27 January 1902
• Citation: 113 F. 834
• Parties: WESTERN ELECTRIC CO. v. ANTHRACITE TELEPHONE CO. et al.
• Court: U.S. District Court — Western District of Pennsylvania

113 F. 834

WESTERN ELECTRIC CO. v. ANTHRACITE TELEPHONE CO. et al.

United States Circuit Court, W.D. Pennsylvania.

January 27, 1902

G. S. &amp H. L. Hooker, for bankrupt.

James A. Wood, for creditor.

Before ACHESON, Circuit Judge, and BUFFINGTON, District Judge.

BUFFINGTON District Judge.

This is a bill filed by the Western Electric Company against the Anthracite Telephone Company and others, charging infringement of letters patent No. 449,106, now owned by complainant, applied for August 16, 1890, and granted March 31, 1891, to John J. Carty, for telephone circuit and apparatus. This patent has heretofore been considered by the courts of this circuit. In the case of Western Electric Co. v. Millheim Electric Tel. Co. (C.C.) 88 F. 505, the patent was held valid in an opinion delivered by Buffington J. This decree was affirmed by the circuit court of appeals in an opinion reported in 37 C.C.A. 38, 95 F. 152, delivered by Kirkpatrick, J., the remaining members of the court Acheson and Dallas, JJ., concurring. Later, the present bill was filed, and a preliminary injunction on the adjudged patent sought against the respondents. On hearing such motion, Judge Acheson refused a preliminary injunction in an opinion found at 100 F. 301. In addition to other grounds thereto moving the court, including the fact that in the Millheim Case the court had not been required to, and had not in fact, passed upon or defined the scope of the claims, it was there said:

'Enough, however, here appears to justify a refusal of a preliminary injunction unless the adjudication in the Millheim Case is to be considered as conclusive against the defense of prior use at this preliminary stage of the case. But the proofs before the court disclose circumstances connected with that adjudication which, I think, ought to deprive it of such effect. It appears that the American Bell Telephone Company was and is the owner of more than one-half of the capital stock of the Western Electric Company, the plaintiffs in the Millheim Case and in this suit, and that by virtue of such controlling ownership, and also by reason of contract relations between these companies, said two companies were and are jointly interested in this litigation on the Carty patent, their common interest being to sustain the patent. Now it further appears that, pending the suit in the Millheim Case, the local representative of said Bell Telephone Company, acting in the interest of that company, and for it, bought out the Millheim Telephone Company and all its property. The negotiations for this purpose began in January, 1898. The terms of sale were settled on February 10th, and the transaction was consummated by transfer and delivery of possession in March, 1898, when the alleged infringing apparatus was taken out by the Millheim lines and replaced by other apparatus. It seems to me from the evidence that a real controversy between the Western Electric Company and the Millheim Electric Telephone Company no longer existed when the Millheim Case was heard in the circuit court on February 17, 1898. Certainly, there was no such dispute when that court made its decision on July 18, 1898. It may, I think, be affirmed confidently that, if the learned judge what sat in the circuit court had known the facts, he would not have heard or decided the Millheim Case, and that the court of appeals would have dismissed the appeal had the facts been brought to its notice. Lord v. Veazie, 8 How. 251, 12 L.Ed. 1067; Cleveland v. Chamberlain, 1 Black, 419, 17 L.Ed. 93; East Tennessee, V. & G.R. Co. v. Southern Tel. Co., 125 U.S. 695, 8 Sup.Ct. 1391, 31 L.Ed. 853.'

Subsequently, much testimony was taken in this case, and it came up for final hearing before Judges Acheson and Buffington. Being fully advised of the facts on such hearing, this court adheres to the view above expressed, that the prior decision of this court, reported at 88 F. 505, and affirmed by the circuit court of appeals, is not conclusive in the present case.

As the general nature of telephone party lines and the difference between series and multiple systems are quite fully set forth in the prior opinions, they need not be here detailed at length. Suffice it to say the Carty device is of the multiple circuit construction, and at each station is a permanent bridge, in which is seated a bell magnet, with a high coefficient of self-induction, and of marked impedance. There are also two other bridges, normally open, and closed only when the station is in use. The telephone bridge circuit, normally open, is closed in multiple arc with its own bell magnet, and, of course, with all others in the line, when in use. The generator call circuit, normally open, when used, forms a second bridge or cross connection between the wires in parallel circuit with the bridge circuit of its own bell and those of all others in the line. In operation, the tendency of the call current to short-circuit is counteracted by using a bell magnet of high self-induction and impedance. This not only prevents short-circuiting, but effects a more even current distribution through the bell magnets of the entire system. By means of the numerous windings of the bell magnets, the small portion of the call current passing exerts a marked magnifying effect on the cores and a spirited working of the call signal. Does such combination involve patentable novelty? The solution of this question turns on whether the placing in combination of these elements all of which, individually, were old in the art, involved inventive genius, or was the natural advance incident to the application of electrical engineering skill to the solution of recognized difficulties. In that connection, it will be observed the general principles applicable to series and multiple-arc distribution of currents were known and utilized prior to Carty's alleged invention, and that in a multiple-arc system the current divided itself among parallel bridges in proportion to their several resistances. Moreover, it was known that by the use of magnets of high impedance certain currents would, and certain would not, be allowed to pass. So also the difference between voice currents and generator call currents in telephoning was appreciated, and the fact that high impedance magnets were opaque to the former, but not to the latter. Now, wherein does the alleged invention lie in Carty's arrangement? We take, as fairly representative of complainant's contention, the statement of Mr. McBerty, an officer of the complainant company and an expert witness by it called:

'The invention of the patent in suit is a many-station or party telephone line, in which the parts, the different signaling and speech transmitting instruments, are so adapted and arranged with relation to each other, both at each and at all of the stations, that they work harmoniously, each without impairing the efficiency of the other. The central idea of the invention is found in the connection of the different instruments in multiple; the parts at each station are connected in multiple at the station, and the different stations are connected in multiple with the line conductors. As this was not possible with the apparatus arranged for serial connection, the different appliances for the substation were also modified by Carty to adapt them to one another in their new relations in the circuit, and, indeed, to make the new arrangement possible; and in the case of the call bell particularly, a new appliance was provided of high resistance and of very high impedance or self-induction. A bell was constructed with long magnets, with more iron than usual, and with a great number of turns of fine wire, the construction resulting in self-induction so great as to prevent the transmission of telephone currents through it in its place in the circuit. The self-induction of a magnet results from the same condition which makes it a magnet and enables it to do work; and here in Carty's invention this quality which, in the series arrangement, had limited the construction of party lines and impaired their usefulness, is taken advantage of, amplified, and utilized to construct a bell which may be connected in a bridge of a telephone circuit without forming a diverting path for telephone currents.'

It will thus be seen that according to Mr. McBerty the central idea of the invention was the connection of the different elements in multiple at each station and the different stations in multiple with the line conductors. That is, Carty put each of the three essentials of a station, viz., call, voice, and signal apparatus, in its own bridge, and he placed the station itself in bridge with the line conductors. The serial apparatus of the call and voice apparatus were modified to adapt them to the new multiple relation, and 'in the case of the call bell particularly a new appliance was provided, of high resistance and of very high impedance or self-induction. ' Statements made by Mr. Carty himself both in an address delivered September 9, 1890, at the Detroit convention of the National Telephone Exchange Association, and also in a letter of November 1, 1890, to the London Electrical Review commenting on such address, show wherein he considered his invention did, and wherein it did not, lie. In his judgment at that time it did not lie in bridging. His address was on bridging bells, but bridging he explicitly disavows. He then said:

'We do not want to make any contention for a patent on bridging. Bridging apparatus is not new. It was advocated in a paper read at Minneapolis last year, and one of the first things that Mr. Hibbard did in the long-distance company was to throw out the looping arrangement and bridge the operators in.'

In his letters he says:

'I would call your...