The talking machine world (Jan-June 1922)

January 15, 1922 THE TALKING MACHINE WORLD 29 DECISION FOR CHENEY CO. IN TONE-ARM PATENT SUIT United States Circuit Court of Appeals in Cincinnati Reverses Decision of District Court in Important Tone Arm Suit Brought by the Victor Co. Against the Cheney Co. and Finds There Was No Infringement — Decision of the Court, Written by Judge Dennison, Is Most Exhaustive The decision in the important tone-arm suit of the Cheney Talking Machine Co., appellant, vs. the Victor Talking Machine Co., appellee, and the Victor Talking Machine Co., cross-appellant, vs. the Cheney. Talking Machine Co., crossappellee, was handed down by the United States Circuit Court of Appeals, Sixth Circuit, by Circuit Judges Knappen, Dennison and Donahue, in Cincinnati, O.. on December 15. Circuit Judge Dennison wrote the decision, which was in favor of the Cheney Talking Machine Co., in this suit for alleged infringement of the Johnson taper tone arm patents No. 814,786 and No. 814,848, which had been filed against it by the Victor Co. The three presiding judges concurred unanimously in the opinion and reversed the decision of Federal Judge Sessions. The decision in full follows: Dennison, Circuit Judge: This is the usual infringement suit brought by the Victor Co. against the Cheney Co., based upon Claims 42 of Patent No. 814 786, and 7 and 11 of Patent No. 814,848, both issued March 3, 1906, to E. R. Johnson and assigned to the Victor Co. The Pis trict Court held that Claims 7 and 11 were not infringed, but that Claim 42 was valid and infringed. Both parties appeal. Passing by other questions we have thought proper to devote our attention chiefly to the issue of infringement of Claim 42. That disposed of, the issues under Claims 7 and 11 give less trouble. Claim 42 is of that type which seems to be simple and clear enough as applied to the particular structure described and shown in the patent, but which becomes thoroughly ambiguous when application" is sought to the variant structure of a future defendant. It is also of that type where, without distortion of any word beyond the common meaning, the language may be read upon defendant's structure, but where many things warn against the breadth of construction necessary to such application. Since the case presents an unusually complicated instance of the typical difficulties, and since our conclusion is superficially — though, we think, not substantially— not in accord with some results reached in other courts, it seems fitting to discuss the issue more in detail than we commonly do. In 1903 there were two classes of sound-recording and reproducing machines. One, which may be called the Edison type, used a record of cylindrical form, and the stylus followed a spiral path around the surface of the revolving cylinder by reason of a positive mechanical feed, which caused relative motion longitudinally of the cylinder between it and the stylus-carrying parts. The other, which may be called the Berliner form, used a flat disc, upon the upper surface of which the stylus traveled in a spiral path. In reproducing the stylus point would tend to remain in the prepared groove, and thus to cause the stylus and its attached parts to travel from the outside of the disc toward the center. Each form was provided with a diaphragm operated by the stylus and communicating with the amplifying ho-rn. ; Johnson devised a sectional horn, the preferred and illustrated form of which was adapted particularly for use in the Berliner machines. He filed his application February 12, 1903, upon a talking machine. In February, 1904. using identical drawings and generally the specification of the first application, he filed a divisional application directed to the amplifying horn. Both patents issued on the same , day, the one based upon the original application being No. 814,786, and the one based upon the divisional application being No. 814,848. The structure is shown in the following sketch, which is Fig. 1 of the drawings of each patent: Claim 42 reads as follows: "A talking machine, comprising a tapering sound-conveyor, means for attaching sound-reproducing means to the small end thereof, and horn-coupling and supporting means with which the other end of saiu conveyor is movably connected." The defendant manufactures a form fully enough shown by the following sketch: As we approach the question whether Claim 42 may, consistently with its validity, have a reading broad enough to cover defendant's form we' do so in. an atmosphere colored by two unusual things: The first is that plaintiff declined defendant's offer to submit its machine to plaintiff soon after it came on the market, so as to' be advised whether plaintiff would consider if an infringement of any patent, but later brought and prosecuted an infringement suit, substantially the same as the present one; yet, when that suit was about to be heard, voluntarily discontinued it without prejudice to a new suit; and some three years later brought the present action. In this course of conduct we do not find the estoppel which defendant urges: but plaintiffs do not commonly take such action in clear cases, and its presence here strongly suggests that the right to recover in the first suit was doubted by the plaintiff. The other colorful thing is that this patent application was prosecuted by skillful counsel for nearly three years, through repeated rejections and through the presentation and urging of about 100 varying claims, resulting in a final sifting by which forty claims were agreed upon be tween examiner and solicitor as covering the varying aspects of the invention — all before any claim occurred to the solicitor which would reach defendant's structure. Just as the case was ready for issue Claims 41 and 42 were added. This suit is not planted on Claim 41, although it is broader than 42. We do not suggest that the applicant may not, at any time before issue, broaden his claims in any way justified by his disclosure and by the state of the art; indeed, matters which develop during the period of .prosecution often demonstrate or call attention to the fact that earlier claims are not as broad as they should be; but such a course of conduct as here occurred strongly supports an inference that the claim thus added was intended only to reach some anticipated, possible variations of the general conception already described and claimed, rather than a distinct and largely inconsistent conception which had never so far been suggested. Only in the latter view can the claim reach the defendant here. Returning to the patented structure, we see that its primary elements are three: (1) The stylus with its diaphragm and diaphragm frame, which, in some form, is drawn down to a central opening opposite to the center of the diaphragm and constituting the beginning of a conduit for the sound waves which have been produced by the diaphragm vibrations. These parts, grouped in this way, seem to be what the patentee means when he speaks, in specification and claims, of a sound box. (2) The sound conveyor or tube which forms a continuation of the conduit and carries the sound waves away from the production point in order to reach the amplifying horn. (3) The amplifying horn itself. Johnson makes his conduit (2) of expanding tapered form, and thus causes elements (2) and (3) to constitute together one continuous amplifying horn. In addition to these three primary he has two secondary elements. These are (4) connecting means between the sound box and the small end of the tapered tube, giving relative movability, whereby the sound box can be raised or lowered for replacing a needle or starting or stopping and without moving the tapered tube. (5) Supporting and connecting means applied to the joint between the large end of the tapered tube and the small end of the horn proper, whereby either the tube or the horn may swing horizontally, and yet the weight of both is carried, and the two are coupled together into a unitary horn. In order to reach the defendant's form elements 4 and 5 must be considered to cover all known means of operative connection between (1) and (2) and between (2) and (3). Defendant attaches its sound box to the small end of its sound tube by a bayonet joint. There is detachability but no adjustability of any kind. No method of attachment has been suggested which would escape the claim, if this one does not. At the other end of the sound tube defendant, who uses the now familiar cabinet style, supports the horn by permanently and rigidly fastening to the cabinet top. depending therefrom another sound tube which at its other end rigidly carries the horn proper; the member which serves for coupling and two parts of the horn (if there is any such coupling at the movable joint) does not support the horn; seemingly, any form of supporting the horn and the tube so that they effectively communicate, but with relative motion, would respond to the claim, if this one does. In substantial effect, plaintiff says that Claim 42 is for "a talking machine comprising a tapering sound conveyor, carrying, at the small end, sound-reproducing means, and, at the large end, communicating with a suitably supported horn and having a jointed connection therewith." With this — necessary for this suit — construction the claim reads absolutely upon Baynes and Jenson of the prior art, save that their sound tubes were cylindrical and not tapered. We, therefore, meet the questions whether there was any invention in this mere change from straight tube to tapered tube, and whether Claim 42 should be given that breadth of construction which can rest only on the proposition that there was invention in this mere change. Upon these questions we have no precedent in any earlier decision upon this patent. The opinions of Justice Warrington, in the Chancery Division, and of the judges in the Court of Appeals (Graphophone Co. vs. RuhD indicate that no great breadth was accorded to the English patent, which has the same drawings as both the. patents here in suit; but the question of broad invention, as we have stated it, was not discussed; indeed, the English patent contained no claim of such scope; its broadest claim was like 7 of 814,848. In the Lindstrom case Judge Learned Hand states the question broadly enough and concludes that there was invention, but though Claim 42 was sued upon, and infringement thereof was found, yet defendant's machine there responded to several other claims and would have infringed Claim 42, even though construed narrowly enough not to reach the defendant here. It is fairly consistent with what Judge Hand says to conclude that he had in mind, not the mere change from straight tube to tapered, but that change associated with Johnson's chief declared object — a continuously amplifying horn from sound box to mouth. In the Wanamaker case Claim 42 was also sued upon and was found valid by Judge Augustus Hand; but here, again, : several other claims were infringed, and the validity of the claim to the tapered tone arm, in combination with improvements at both ends which Johnson devised and which defendant used, was the real question involved. For the purposes of this opinion at least, we will assume that there was invention broadly in this mere change, and that Johnson would have been entitled to a claim like the one we have supposed; it does not follow that Claim 42, as issued, was intended to have, or can receive, this construction. Here, again, we have no precedent in the previous litigation. The claim has received no special attention and has not been applied, except in cases where there was no question of infringement, beyond the definition of "tapering sound conveyor." In determining the scope, intended or appropriate, we cannot overlook Cannavel. Our foregoing assumption of validity implies, also, that Cannavel is not a complete anticipation; but it has a bearing on the scope. He used an Edison rather than a Berliner machine; but this cannot be controlling, since the Johnson specification does not suggest that his_ invention fails to reach both classes, and many of his claims, including 42, are as appropriate to one class as to the other. Cannavel showed the complete sound box of Johnson, consisting of a stylus, a diaphragm and a diaphragm frame drawn in back of the diaphragm so as to leave a small central opening opposite the diaphragm center. He then conducted the sound away from this central opening through an expanding taper tube toward the horn. This tube turns and extends parallel to the diaphragm a substantial distance beyond the diaphragm edge, but it is relatively short, it is made integral with the primary sound box and as a development thereof, and Cannavel calls it a diaphragm box. This first tube ("e" in the German, "cl" in the French) is then attached bv slip connection to a second tube ("g" in the German, "e" in the French) which continues the progressive taper expansion. At the other and larger end this second tube enters the base member of the horn proper ("i" in the German, "f" in the French), where it is pivoted, and through which the progressive expansion of the sound waves continues. Cannavel distinctly discloses, by his specification and drawings, the same meritorious thought which is at the base of the Johnson invention, as it is now claimed to be formulated in Claim 42. viz., that the expansion in the sound tube should continue in unbroken progression from the immediate vicinity of the diaphragm on through into the main horn, and that there should be a jointed connection between the sections of this expanding horn which would permit the sound box to have the necessary play while the horn itself was otherwise supported. Cannavel's "c" constitutes Johnson's sound box and sound tube combined, save that the tube is so short that it may be (Continued on page 31) Ward's Khaki THE C. E. WARD CO. (Well-Known Lodge Regalia House) 101 William Street New London, Ohio Also Manufacturers of Rubberized Cavers and Dust Covers for the Wareroom oving Covers Distributors BRISTOL 4 BARBER, INC. . 3 E. 14th St.. New York City YAH R & LANGE DRUG CO. 207-215 E. Water St., Milwaukee. Wis. COHEN II HUGHES. INC. Washington. D. C. BECKWITH-O'NEILL CO. Minneapolis, Minn. STREVELL-PATERSON HARDWARE CO. Salt Lake City, Utah C. L. MARSHALL CO.. INC. Beckman B Id a , Cleveland, 0. Butler Bide-. Detroit, Mich. THE REED CO. 237 Fifth Avenue, Pittsburgh, Pa. C. J. VAN HOUTON & ZOON 140 8. Dearborn St.. Chicago, III. SONORA DISTRIBUTING CO. OF TEXAS Dallas. Texas KNIGHT-CAMPBELL MUSIC CO. 1608 Wynkoop St., Denver, Colo. CHA8. H. YATES 31 1 Laughlin Bldg , Los Angeles. Cal. W. D. & C. N. ANDREWS Buffalo. N. Y. SACHS & CO. 425 So. 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