The talking machine world (Jan-Dec 1911)

THE TALKING MACHINE WORLD. 33 JOHNSON RECORD PATENTS UPHELD. Judge Ray in Exhaustive Review Grants Decision to the Victor Tall<ing iVlachine Co. — The Control of the Disc Record with Lateral Undulating Groove Remains with the American Manufacturer. The case of the Victor Talking Machine Co., Camden, N. J., against the American Graphophone Co., New York, argued in November last before Judge Ray, U. S. Circuit Court, Southern District of New York, sitting at Norwich, N. Y., at the time, was decided in favor of the complainants. The charge is infringing what is known as the Johnson cut record patent No. 896,059, issued August 11, 1908, which the defendants claim is in contravention of the well-known Jones patent, which they own. Judge Ray's decision, which was handed down March 29, is broad and comprehensive, and by it foreign manufacturers are estopped from attempted inroads upon the trade in this country, by importation of records which are an infringement upon the Johnson patents. The decision perpetuates the control of the disc record with lateral undulating groove, such as at present is employed, in the hands of American manufacturers. It is the first time that the Jolinsdn patent has ever appeared in any court, and, therefore, the decision in detail will be of manifest interest to the entire talking machine trade of the world. Following are excerpts from Judge Ray's decision : The Johnson Patent Described. The patent in suit, "Record for Talking Machines," was granted to Eldridge R. Johnson, assignor to Victor Talking Machine Co. Aug. 11, 1908. on divisional application filed Nov. 12, 1904, original application filed Aug. 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 certain claims. ... In what is called the parent patent, patent to Eldridge R. Johnson, assignor to Victor Talking Machine Co., No. 778,97.'), dated Jan. 3, 1905, application filed Aug. 16, 1898, the claim mafic was for a "cutting tool fnr smmd-rccording 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 indestructible record may be reproduced by various processes from the original record. . Nov. 19, 1807, Joseph W. Jones filed an application for a patent in this same art, and which the defendant claims fully covered the sanu' invention described in the Johnson patent in suit, and a patent issued thereon on the 10th day of December, 1901, U>v "Production of Sound Records," No. 688,739. That palcnl has been the subject of considerable litigation. . . It is obvious from llic specifications of the Jones patent fhat he did not claim Ihc discovery or use of any new or improved mode or metlin.I of "cutting or engraving" the spiral grooves — the laterally undulating grooves — in the wax or wax-like tablet. lie plainly recognized that this had been done before, and that there was more than one way of doing it. After describing liis disc or tablet of suitable recording material he specifically says, "Upon the surface of this tablet T then form, by the use of a sound-recording machine, in a well-known manner a spiral groove of practically uniform depth that contains lateral sinuosities or irregularities corresponding to or representing the soundwaves recorded." In short, he cuts or engraves his spiral groove in "a well-known manner." Validity of Jones' Invention Upheld. In American Graphophone Co. against Universal Talking Machine Co., the Circuit Court of Appeals, Judge Townsend writing the opinion, upheld the validity of the Jones patent as disclosing invention in the mode or method of making commercial sound records by (1) cutting or engraving a record groove of uniform depth by means of the lateral vibraations of a suitable stylus upon a disc of waxlike material; (2) coating the same with a conducting material; (3) then forming a matrix thereon by electrolysis; (4) then making therefrom duplicate records by impression. This case was decided Jan. 14, 1907. I find no reference in that case to the then pending application of Johnson for the patent in suit, issued in August of the next year, 1908. Judge Townsend refers to the Bell and Tainter patent. No. 341,214, claim 9, of which was for "The method of forming a sound or speech record which consists in engraving or cutting the same in wax or a wax-like composition, substantially as described." Of this Judge Townsend said. "An examination of the Bell and Tainter patent shows that the assumption as to its broad scope are without foundation, There is not a word of reference in the specifications to the engraving laterally of undulating records, or of any records of uniform depth." This indicates a departure by Jones from Bell and Tainter in both these respects, as, indeed, the specifications and claims of Jones show. Clearly Jones cut or engraved on his tablet a record-groove "of appreciable and ])ractical]y uniform depth" having "lateral mululations corresponding to the sound waves." From Ihc opinion of Judge Townsend wc would infer that it was here that he found patentable invention in the Jones jnetlio^, Xhc distinction drawn between Bell and Tainter and Jones seems to have been that Bell and Tainter cut or engraved sound grooves on cylinders or on tablets vertically instead of laterally and without regard to uniformity in ilepth. Board of Examiners Grant Claims. After Johnson had divided his original application and filed his application for the patent in suit, Nov. 12, 1904 ("serial No. 232,389), the principal examiner finally on April 3. 1908, rejected claims 1, 2. 3 and 9 (which seem to be I he same as claims 1. 2, 3, and 4 of the patent in suit). .';nd the claimant appealed to the board of examiners in chief April 8, 1908. Among others the Jones patent in question here was cited. July 7, 1908, the board of examiners reversed the examiner in chief. It was held that Johnson was rightfully in the Patent Office with his divisional claims and that Jones did not anticipate as he had filed and abandoned claims for the same subject matter as is embraced in the claims before the board of the patent in suit. Amongst other things on this subject the board said: "Jones has no more equit-y against the applicant's right to a patent for the subject matter of the appealed claims, nor. if possible, even as much as Clark and Johnson, No. 624.625, May 9, 1899, have, upon whose patent Jones claims for the subject matter here appealed were rejected." I think it quite clear from the prior art, the proceedings in the natent office, the exhibits and testimony, that Johnson had clearly in mind the actual cutting out and removal frrmi the groove of a part of the substance of the disc or tablet on which the original record was to he made in the art of making sound records upon tablets of wax or other suitable material of the laterally undulatorv groove tvpe, and that he was the first to conceive this idea and reduce it to practice. In August, 1898, he said, "It is essential in order to produce a clear record that the material be cleanlv and neatly cut from the grooves in the process of recording so that sharp, well d.-^fined lines will be formed in the walls of the grooves." In describing his tool and its operation he says, "These edges (a') are carefullv formed to present a cutting edge, so that as the moving record is traveled against the face a of the tool .\ when held in position, as indicated in Fig. 1, the knife edg^s a' will clearly cut the material from the record, forming a clean-cut groove, with the undulation or sound waves produced by the vibration of the stylus formed in th" record, as shown in Fig. 5, and illustrated in cross-seclion in Fig. 3." His Fig. 1 of the parent patent shows the knife, or cutting tool at work. Fig. 5 shows the groove on the tablet, and Fig. 0 shows the record groove with the laterally undulatory sound waves in the sides thereof. This is beyond anything shown or described in the prior art. or in Jones, and, I ihinK'. was bevond anything Jones had in mind when he applied for his patent, although Jones, broadly speaking, described it. a^ide from the p"culiar form of the groove, elliptical form. Did this originate . with Johnson in 1896, as be claims, and brfore Jones filed his application ? An Improved Sound Groove Attained. It is clear that Johnson had been at work in this field, this art. and this particular branch uf it prior to August, 1898, when he filed his application and claimed the cutting tool. It is not, therefore, improbable that he made his discovery in 1896. when he says he did. It is clear that he knew all about it Aug. 16. 1898, for. as stated, he then had invented and then claimed and later was granted a patent for thp cutting tool that would do the work wdiich he described. I think it may be well doubted that Johnson appreeialed that, in view of the prior art, he had made a patentable Invention in producing a di'^c sound record such as he described in his parent patent of Jan. 3. 1905. applied for in 1898: that is, "A disc sound record having a cut-out laterally undulatory groove of substantially constant or even depth, such lateral undulations corresponding to the sound waves." However, he clearly reserved the riebt to claim it, for he said, "It is understood that in reproducing, the record thus formed may be used for reproducing purposes directly (that is. reproducing the sounds) or a more durable and indestructible record may be reproduced bv 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." That is, he did not go into the feature of a duplication of the original for commercial purposes. . . If Johnson himself and his witness' s. C. K. Haddon, B. G. Royal, W. H. Nafey, A. C. Middl-ton and A. A. DuBois, are to be credited, in fact, unless their statements are to be rejected, Johnson ■Tiade and completed this invention (now held to be an invention") in the early summer or fall of 1S96, which included the makinEr of the lateral undulating record of even depth cut in a plate of wax-like material and the making of an electroplate upon such record of wax like material by covering it with plumbago and making it electro-conductive. If this was done he demonstrated that a matrix made by such process of electroplating the record could be obtained for making duplicate commerc'al records. ... Discoverer of the Cut-Out Process. I do not think it necessary here to go into the details ot the evidence which leads me to the conclusion that Johnson, corroborated as he is. made this invention in 1896. ITc either did or he, Haddon and others, have concocted a plausible story and committed deliberate perjury. I cannot find anything in the . ase to justify a conclusion that he got his ideas, incorporated in ttle specifications of th? so-called parent patent, from Jones. On the other hand, while there is no evidence that Jones got his ideas from Johnson, he did not seem to appreciate and certainly did not claim that he had made any discovery in cutting his groove into not out of the waxdike tablet. He said nothing about actually cutting out a groove by the lateral or zigzag movement of the stylus. In fact it does not appear from the Jones patent that he did in fact cut out a spiral groove of practically uniform depth containing lateral sinuosities or irregularities corresponding to or representing the sound waves recorded. He claims nothing of the kind as a discovery or invention, or, if he did. it was rejected and in the rejection he acquiesced. It is easily seen that such a groove as Jones described might have been produced in a soft wax-like material without cutting out any of the material. Such a groove could have been made by displacement, and mere cutting is quite different from cutting out and removing a part of the material. However, it is perfectly clear that Jones was not the inventor of the cutting-out process in either the flat disc or the cylindrical sound records. Jan. 9, 1897, eleven months before Jones filed his application, Alfred Coeriing Clark and said Eldridg'e R. Johnson filed an application for a patent for a "Sound Recording and Reproducing Machine." which the specifications expressly state \vas adapted to make records upon either rotating discs or revolving cylinders and the original sound reproduced therefrom. . . . The record substantially concedes infringement by defendant, assuming the Johnson patent to be valid, and no time need be spent on that question, although I am of the opinion that sustaining the Johnson patent in suit does not destroy the Jones patent. I think both are valid, but that Jones includes and uses what belongs to Johnson. In short, should Johnson do just what the Jones patent describes and all ihat it describes, he w^ould infringe Jones, while Jones in doing what he does infringes Johnson Estoppel and Other Conditions Considered. The opinion here takes up the question of estoppel and other conditions alleged to have a hearing on the trading relations between the Viclor Talking Machine Co. and the American Graphophone Co. (Columbia Phonograph Co.) in connection with the Jones patent, and deals with them at length, with the result that the court denies every contention of the defendants. The argument then concludes as follows : Nov. 19, 1897, about two years after Jones filed his application for his patent he attempted to amend by inserting the following claims: "1. The herein-describecd method of producing original sound-records, which consists of cutting or engraving upoii a tablet of suitable material, by means of the lateral vibrations of a suitable stylus, a record-groove of appreciable and practical uniform depth, the same having lateral undulations corresponding to the sound vravcs, substantially as described. "2. An original sound record formed of a w^ax-like material and having engraved upon its surface a spiral groove containing lateral undulations of uniform depth, the depth being slight but appreciable, and the undulations corresponding to sound waves, substantially as described." These claims w-ere rejected on the prior art and Jones acquiesced. Defendant cannot be heard now to say these rejected claims formed any part of the Jones invention. As I look at it Johnson claimed and was graulc<l a patent for w hat in substance was denied to Jones. Jones claimed but was denied a patent for (1) the method of producing an original sound record which consisted in, (a) cutting or engraving upon a tablet of suitable material. (b) by means of the lateral vibrations of a suitable stylus. (c) a record groove of appreciable and practically uniform depth, and (d) the latter having lateral undulations corresponding to the sound waves. And again, the product, viz.: (1) an original sound record, (2) formed of a waxdike material, and (3) having engraved upon its surface a spiral groove, (4) containing lateral undulations of uniform depth, the depth being slight but appreciable, and (5) the. undulations (lateral) corresponding to sound waves. The patent granted Jones is for a method of producing commercial sound records which consists in cutting or engraving upon a tablet of suitable material, by means of the lateral vibrations of a suitable stylus, a record groove of appreciable and practical uniform depth, and. having lateral undulations corresponding to the sound waves, as step one, and then coating the same, etc. In short, it stands out perfectly plain that the first step of the Jones method or process which consists in making the original record was claimed by Jones as his invention, and rejected on the prior art. It was subsequently patented to Johnson as the inventor thereof. The Court Can Draw No Distinction. I can draw no distinction between wdiat Jones claimed and had rejected, and claim 3 of the Johnson patent in suit. Johnson cuts on 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 undulations corresponding to the sound waves. Wherein does this differ from the rejected Jones claim and step one of the Jones process or method? And why is it not patentable? It is the making of the original record which may be used to reproduce sound. Hpwever, it would not be a commercial success as a sound record for reproducing sounds because not dui^able. But the commercial records could not be produced without it. Add the other steps of the Jones method or process and we have the successful commercial records of Jones. But in practicing the Jones process the defendant infringes the Johnson patent. Clearly defendant infringes claim 3 of t(ie patent in suit. And as clearly to my mind, the d?