Westinghouse Electric & Mfg. Co. v. Independent Wireless Telegraph Co.

• Decision Date: 03 June 1924
• Citation: 300 F. 748
• Parties: WESTINGHOUSE ELECTRIC & MFG. CO. et al. v. INDEPENDENT WIRELESS TELEGRAPH CO. et al.
• Court: U.S. District Court — Southern District of New York

300 F. 748

WESTINGHOUSE ELECTRIC & MFG. CO. et al. v. INDEPENDENT WIRELESS TELEGRAPH CO. et al.

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

June 3, 1924

Stephen H. Philbin, Charles Neave, and L. F. H. Betts, all of New York City, for plaintiffs.

Ramsay Hoguet, of New York City, for defendants.

LEARNED HAND, District Judge.

Since this motion was argued, the Court of Appeals for the District of Columbia has awarded De Forest priority over Armstrong upon certain claims in interference proceedings. This does not affect the disposition of the motion. If, as the Court of Appeals said, the invention awarded De Forest is so different from that at bar that both may stand, obviously I may ignore that decision. If, on the other hand, the inventions are so closely akin that their dates of discovery must be identical as would seem to be the case, still the award of priority to Armstrong in the Circuit Court of Appeals of this circuit on the same facts must prevail in a suit in this district until that court sees fit to change its conclusions. It may be conceivable that the courts here will defer to the Court of Appeals of the District of Columbia, so far as concerns the award of those claims, and still adhere to their conclusion upon the patent in suit. However that may be, the issue decided here on this patent must be taken as conclusive in preliminary applications while the decision stands. I know of no rule which compels me to ignore the conclusion of the local court of last resort, because it has come into collision with that of a court of co-ordinate jurisdiction. While it is true that this discordance may in the end present a question which must be settled by the Supreme Court, until that happens I do not understand that it affects the finality for me of the decision of that court to which an appeal from me directly lies.

The defendants present four defenses: First, that the defendants were not parties to the putative infringements; second, that they had an implied license to use the invention; third, that the acts charged were not infringements at all; fourth, that the new evidence now at bar throws doubt upon the validity of the patent.

First. There is no dispute that the post T2 of the plaintiff's detector-amplifier was in a substantial number of cases connected with the antenna post, so as to establish a wing circuit having a leg in common with the grid circuit. This moreover, resulted in the 'regeneration' of the radio-frequency oscillations in the grid circuit, and subject to the matters discussed in the third objection constituted infringement. The defendant Independent Wireless Telegraph Company alleges that it had forbidden any tampering with the wires by its operators, and it must be agreed that the question is at best in dispute whether that company had at any time, directly or indirectly, authorized any such connection as the operators occasionally made. In view of that uncertainty, if it amounts to so much, the objection must be disposed of as one of law. Are the defendants responsible for the acts of these operators? They were servants of the defendant Independent Wireless Telegraph Company, employed by it to operate the wireless installations on the ships of the defendants, the steamship companies, and what they did was unquestionably within the scope of their authority. It makes no difference, therefore, whether they were forbidden to tamper with the wires or not. In some instances they may have done so idly, not in the course of their duties; in such cases I need not say that their acts were within the scope of their authority. But surely it cannot be seriously argued that the tort of a servant in the scope of his general authority is any the less the tort of his master because the master has expressly forbidden him to commit it. I cannot think it necessary to cite any decisions for so common a doctrine of law.

Hence in those cases in which the operators for the purposes of the defendants used the installation regeneratively the operator's tort is to be imputed to the defendant Independent Wireless Telegraph Company, and a succession of such torts will support an injunction against their continuance. I do not, however, find anything in the affidavits to show that the steamship companies were privy to the practice, individually, or by their servants, and no injunction will go against them.

Second. I can find no basis for any implied license in the sale of the detector-amplifiers alone. It is not clear how the Radio Corporation could have prevented the regenerative use of these units without changing their structure. It is clear that to short-circuit the posts T1, T2, would have accomplished nothing, because the operators had to do this themselves before they could lead the wire from the post, T2, to the antenna post. Otherwise there would have been no complete wing circuit for either frequency. The argument comes down to this: That in selling one element of a patented combination the seller gives a license to the buyer to furnish the other elements himself and so complete the combination. Such a doctrine is I venture to believe, quite unheard of in the law, and would, if consistently applied, lead to the most extravagant results. No one would, of course, suggest that the sale of a pawl and ratchet gave an implied license to use all patented combinations in which those mechanical elements were to be found. I agree that the instance is extreme, but it tests the principle.

If the article has other uses than in the patented combination, there is no basis to imply a license. Gen. Elect. Co. v. Continental Lamp Works (C.C.A.) 280 F. 846; Edison, etc., Co. v. Peninsular, etc., Co., 101 F. 831, 43 C.C.A. 479. It is only when the article sold must be used in the patented combination, if it be used at all, that a license is implied. The plaintiffs' detector-amplifier was capable of use without a 'tickler' coil or its equivalent, the 'antenna-plate' connection. The Independent Wireless Telegraph Company never intended it to be used as a regenerator; it was content to set up the apparatus without any regenerative connection, and its orders were to leave the connections as they were. Thus it expected to get no license, and there is no ground to imply that which neither party intended. I agree that, if the plaintiffs had held a patent merely for the combination of grid and wing circuits, the defendants would have had a license, because the detector-amplifier could not have been used without a grid circuit. They were not entitled to all possible uses of the unit which they bought.

Nor is there more weight in the argument that the insistence by the Radio Corporation upon sending out continuous wave signals was a consent to the infringement. It is scarcely an excuse for conversion that the owner flaunts his possessions. Even if it were proved, which it is not, that the Radio Corporation's insistence were only to try out the forbearance of the operators, it would not be a license. At most it was no more than to say that, if the ship wished the news from that source, it must have the patented combination. However, the case need not stand on those instances, because it is amply proved that the operators occasionally made the connection spontaneously, without any spur from the plaintiffs. In those cases, anyway, that act was a tort, if it infringed the claims.

Third. Of infringement: All the claims require 'a resonant grid circuit,' which means one that can be tuned. A circuit can be tuned only in case its responsiveness can be varied by an inductance as well as a capacity, so that it can adapt itself to different wave lengths. The metallic grid circuit of the infringing device is apparently not resonant at all, because, while it contains two condensers (capacities), and the grid leak with its...