The talking machine world (Jan-Dec 1907)

52 THE TALKING MACHINE WORLD. from his etched zinc discs, and stating the objections to practical use, concluded that these objections would shortly be obviated. Ten years later, when he was called as a witness in this suit against the American Record Co., he fails to state that he ever oTercame said objections or devised a practical method of. duplication, but merely says that because of the Bell & Tainter patent, "I felt that there was no use in following up a method of cutting a record in was or other solid material." The Young Britisti patent. No-. 1,487, is manifestly the closest reference iu the prior art, for it discloses substantially the iirocess of the patent in suit applied to the production of vertically undulating grooves in a cylindrical record. . . . But the language of the Young speciBcatiou would seem to indicate that the patentee, like Edison, had in mind the application of his process to cylindrical records only. . . . Furthermore, the steps in the specified process indicate that they are to be taken iu connection with a cylindrica. i-eeord, and involve the destruction of the original and the collapsing of the duplicate, with the consequent risk of injury. The court below, in a full, fair and accurate presentation of all the material and salient facts in this case, has held that the patented process produced a novel and useful result, but that it was within the limit of the skilled workman. It is upon this latter point that we feel constrained to differ with tlie court below. We think that it gave too much weight to the effect of the disclosures of the Young patent. And we conclude, in the light of the prior art, that the changes from Young to Jones involved invention, because, inter alia, Jo-nes was practical. Young was im practical. Young was before the public for six years before any "skilled artisan" succeeded "in adjusting the various elements so that a flat sound record of the type iu question could be produced," and no one prior to Jones saw that it could be adapted to a practical disc record with lateral undulations; there were inherent objections to the practical production of varying depth records, which Jones found did not exist when the known or suggested processes w-ere applied to laterally undulating grooves of even depth. If further evidence of the patentable novelty of the Jones process be sought, it may he found in the deposition of Charles S. Tainter, a graphic record of unsuccessful efforts, unrealized anticipations and abandoned experiments. PERSUASIVE EVIDENCE OP INVENTION. Where an existing process or device thus discloses what appear to be insuperable objections to practical operation, it is persuasive evidence of invention that an improver has the foresight and courage to break away from such disclosure and conceive of some new method involving a different principle ; but it is also evidence of invention if one by taking a step forward sees that what appeared to be harriers to progress are mere obstructions to side-paths and by-ways, and that the road to a practical invention lies straight before him. The record of the litigation involving the patentability and infringement of the device employed in this new sound-producing art sliows that inventors and skilled mechanics were engaged in a struggle to devise and construct improvements upon the existing devices, to overcome the objections to their practical operation and thus widen their field of use. In the case at bar, it is shown that it did not occur to any one before Jones that the old use of the varying depth process on cylindrical records could be adapted to a new use with a uniform depth process on flat records with a useful and practical result. The courts have generally found it inadvisable to attempt to define invention, and, concluding that there are no affirmative rules by which to determine its presence or absence in every case, have recognized and applied certain negative tests to establish want of invention. Walker on I'atents, Sections 24, 29. But where, upon the application of these tests, the question of invention is still left in doubt, such doubt may be resolved in favor of the patent by evidence of successful results where othene had tried and failed. This doctrine has not only been repeatedly asserted and applied by the United States Supreme Court, . . . but by this court in numerous decisions, where, as in the case at bar, it was argued that the means provided were so simple and obvious that they could not have involved invention. . . . (Here a lengthy citation from previous decisions to illustrate this dictum was quoted.) Upon the same ground, in Brown against Huntington Piano Co., this court sustained a patent for a minor improvement in making the adjustment of a music desk on a piano' automatic. In these circumstances, the disc produced by the patented process responds to the test of success where others have failed. But iu addition to this inventive success it is also a commercial success. And this success is not subject to the criticism that it is due to extensive advertising, or the attractive manner of placing the articles before ttie public, or "the energy with which they were forced upon the market." Nor is the disc merely such an element of a device that its sales may be ascribed to ttie popularity of other elements thereof, or of the entire organism. VALIDITY OP JONES PATENT ESTABLISHED. The pateutable novelty of the process of the patent is not only indicated by large sales, but also by the unassailable evidence of that most sincere form of flattering recognition, namely, imitation and appropriation by rival manufacturers. In short, it has, so far, supplanted all other methods previously used, that, apparently, all disc records are now made by said process, and complainant's chief competitor admits that it has discarded its own patented etching process and has substituted therefor the process of the patent in suit. The validity of the patent is thus established by commercial success, resultant solely from inventive success, and such extensive public use as to supersede discs made by other processes, which is "pregnant evidence of its novelty, value and usefulness." As to the objections raised that the patent in suit covers a mere mode of operation, we concur in the conclusion of the court below that the process of the patent in suit was a patentable one. The contentions in support of the defense of noninfringement do not require extended discussion. The defendant, tlie Universal Co., denies infringement, under a claim that its tool does not cut or engrave its soft material, but displaces it. It does not appear from the evidence that defendant does not use the patented process in making its commercial records. The result of an inspection thereof indicates that they are formed by "cutting or engraving upon a tablet of suitable material, by means of ... a suitable stylus," as claimed in the patent in suit. Therefore, as this court said in I-Iemolin Co. vs. Harway Co., "if the defendants can pro've to the contrary, they should do so." The defendant, the American Record Co.. denies infringement, on the ground that it does not impress the matrix of the patent "into a tablet of suitable material," because it interposes a process of making an additional matrix, not included in the patented process, and impresses this additional matrix into the material. In effect, it claims that although it employs the first process of the patent to make the matrix and the last process of the patent to make the commercial record. yet because of the interposition of a superfluous additional duplicating process it escapes' infringement. * It is unnecessary to refer to the authorities that such a claim is without merit. The decrees are reversed, with costs, and the causes are remanded to the court below, with instructions to enter decrees for injunctions and accountings, in accordance with this opinion. MAURO REVIEWS DECISION. The Well Known Counsellor Furnishes an Interesting Analysis of Litigation. Philip Mauro, counsel for the American Graphophone Co: (manufacturers of the Columbia Phonograph Co.'s products), in referring to the foregoing and appended decisions, said to The World: "The United States Circuit Court of Appeals, in this circuit, composed of Judges Wallace, Lacombe and To-wnsend, have handed do-wn three decisions ■which are of great interest to the talking machine trade, and very far reaching in their consequences. T-wo of these suits are on the 'wellkno'wn Jones patent, -which covers the process no-w universally employed for the manufacture of disc sound records. The effect of this decision ■will be to give the American Graphophone Co. complete control of the manufacture and sale of disc sound records in the United States. The Victor Talking Machine Co. some years ago secured a license under this patent. No other company is as yet licensed. "The third case ■was a suit brought by the Victor Talking Machine Co. against the American Graphophone Co. upon the Berliner patent for a hard rubber record. The Victor Co. contended that -while the disc records of the present day are not made of hard rubber, they are made of a substance so nearly resembling hard rubber as to be an equivalent thereof, and to be fairly included in the scope of the Berliner patent. In the Circuit Court Judge Hazel held that the patent -was limited strictly to hard rubber; and this decision the Circuit Court of Appeals has no'w sustained. "These decisions are final, and as they proceed fro'm the most eminent patent judges of the United States, they may be regarded as the termination of a long and very interesting litigation." Judge Townsend' also wrote the opinion on the appeal from Judge Hazel's construction of the hard rubber claims of the Berliner patent, ■which, after omitting the technical extracts from patent specifications and judicial decisions thereon, may be briefly summed up as follo^ws: Summary of Disc Material Decision. "The court below reached the conclusion that the sound records of the defendant did , not infringe the claims in suit, for the reason that said claims -were limited in terms and in fact to an article of manufacture composed of hard rubber. An examination of the file vi^rapper confirms the correctness of this conclusion. It appears therefrom that the patentee [Berliner], by reason of the rejection of his broad original claims, vfa.s forced to substitute the narrower claims upon ■which the patent ■was finally allowed. . . . "The patentee, having selected a well-known product, having well-known characteristics which made it desirable for reproducing records. Invented and patented a novel means for overcomiiig the obstacle or objection involved in its use. and he is entitled to the benefit of thi.'^ -invention. But upon the familiar principles applied in such cases, his action was equivalent to a notice to the world that it could make any other duplicate records, provided they were not the records limited as specified and claimed in his patent. . . . "If this patent had issued with a broad claim for an article produced by such process in materials other than hard rubber, said patent would have involved invention and would have been infringed by defendant. And in afiirming the court, below in dismissing this bill, we are merely applying the rule of law, stated above, in holding that the patentee abandoned or waived his right to insist upon such a broad construction of the claims for a product as would embrace the defendant's disc. . . . The fact that they look alike is immaterial. . . . The decision is aflSrmed with costs." WRITE US FOR PRICES ^CRANES STANDS ^ HORNS We can give Interesting Prices and. can make Inimediate Shipment. ECLIPSE PHONOGRAPH CO. 203 WASHINGTON STREET, HOBOKEN, N. J.