AMERICAN BELL TELEPHONE
BEI;L TELEPHONE Co.
GLOBE TELEPHONE CO. and others.
(Circuit Oom, 8. D. N6tJJ York. July 19, 1887.)
PATENTS FOR INVENTIONs-!NPRINGEHENT-Acrs WARRANTING INJUNCTIONBELL TELEPHONE.
Letters patent No. 174,465 were granted March 7,1876, to Alexander Graham Bell. for certain improvements in telegraphy, the tlfth claim of which, relating to the transmission of speech by electricity, became entitled, by judicial construction. to a broad interpretation in favor of the inventor. Prior to 18B5 the Globe Telephone Company was incorporated under the laws of New York, the object of its formation being to manufacture. sell, license, and lease telegraphic; telephonic, and electric instruments, and supplies therefor, and ·to acquire and dispose of patents, I?atent-rights, lind inventions relating thereto, The company acqurred certam patents. which were shown to be in-. fringements upon the Bell patent, and put up in their otlice sample instruments of an infringing character. They also, by advertisements. invited the public to purchase their instruments. and become licensees of their patents and claims. No instruments. however, were ever actually made or used, except experimentally, and none were ever sold. Held, that the acts of the com· pany were sutlicientto warrant a decree restraining infringement. The experilJlents and invention of one Antonio Meucci, relating to the transmission of speech by an electrical apparatus, for which invention a caveat was filed in the United States patent-otlice. December 28, 1871, renewed in December. 1882, and again in December. 1883, do !lot contain any such elements of an electric IIpeaking telephone as would give the same priority over or in. terfere with the said Bell patent.
8. SAME-INVENTION OF MEUCCI"';PIuORITY.
E. N. DickerB<mand J. J. Storraw, for complainant. D. Humphries and S. R. Beckwith, for defendants.
WALLACE, J. The complainant has filed this bill to restrain infringement of the patent gran,ted by the United States to Alexander Graham Bell, dated March 7, 1876,'No. 174,465, for improvements in telegraphy. Infringement is also alleged of the United States patent to Bell, No. 186,787, dated January 30, 1877, for improvements in electric telephony; but the proofs have not been addressed to the question of the infringement of this patent, and it is practically out of the case. The fifth claim of the first patent has been judicially construed in two cases by the circuit court for the district of Massachusetts, and in both of these cases it was substantially held that Bell was the discoverer of the new art of transmitting speech by electricity, and that the claim should receive the broadest interpretation to secure to the inventor, not the abstract right of sending soundll by telegraph without regard to means, but all means and processes described which are essential to the application of the principle. A'1l1.erican Bell, Telephone Co. v. Dolbear, 15 Fed. Rep. 448; Same v. Spencer,8 Fed. Rep. 509. This court, in American Bell Telephone Co. v. Molecular Telephone Co., followed the construction thus pl)iced upon the claim. 23 Blatchf. 253, 82 Fed. Rep. 214. The proofs for the complainant show that the apparatus, which it is alleged has been used and offered for sale by the defendants, embodie&
the means and process for transmitting speech by electricity which are the subjeot of the fifth claim 'of the patent to Bell; and no evidence has been introduced by the defendant to controvert this fact. The defendants answer The answer of the Globe Telephone Company and of the defendant Rogers consists merely of general and .s,pecific denials ofthe averments ,of the bill. The answer of the defendant Meucci alleges that he was the first and priQr inventor of the ;.that in 1871, by a series of improvements and experiment5 in telephony, he had perfe,otea a perfect speaking telegraph; .which cOluprj,sedau the electrical principles since known in the art of telegany telephones or speaking telegraphs for :;mypnrpose except that for more than. 24 yeats!;t,ehas had, durip.g· mostoftre time, at his residence at Staten fslandi a speaking telephone for d,0m.estic use; that prior to 1876 he endeavored to.introduce the invention· of said telephones into publicllse, but, poverty, .wasunable to do so; and: to that end cause the same 10 be ,publishe<liIJ.the.pewspaper theEco D'Italia; and did endeavotto'secure the assistance of others by making known to them his said invention. The answer of the defendant Beckwith con.,. sists ,M a general denial of the averments of the bill, and sets up the' priority of the invention of MeuGCi;' .. , . , Inasmuch as none ofthe .defendants setup, by way of defense, any prior patents, publications, or instances of prior invention or public use, except the prior invention of Meucci, and' their proofs consist only of evidence of Meucd's invention, aqd evidence to show that they never used, manufact1,1red, or sold electric speaking telephones, or procured or assisted others to' do so, it is unnecessary, and would be extraneous .to the rea,lquestions in the case, to consider the point, made in the brief of the counsel for one ofiha'defendants, that the fifth claim of Bell's patent of 1876'i8.not entitled to the broad construction which has heretofore been given to it by the courts.. The only questions really involvedare whether the acts of the defendants are an infringement of the e.xClusive rights of the complainant to manufacture, use, and sell the speaking telephone, and whether the proofs establish the defense tnat Mencci was the prior' and original inventor of that apparatus. The bill was filed November 10,1885. At that time the Globe pany had been incorporated about two years and a half. It was a New Yorkcorpotation. Its certificate of incorporation recites that the objects for which the company is to be formed are to lCmanufacture, sell, and lease telegraphic, telephonic, and electric instruments, and supplies therefor of every description, and to acqtiitejbypurchase or license or otherwise, and dispose of by sale, license,·btotherwise, patents, patent-rights, and inventioui:l relating thereto, altd incidental to August, 1885', the manufactllre of said instruments and the defendant Beckyvith became the general manager of that company. At that time he was interested in an invention patented in Englaud known as the "Bassano-Slater telephone," and had agreed with the ers to procure a patent for the invention in this country , and had the
AMERICAN BELL TELEPHONE
V. GLOBE TELEPHONE 00.
right to use and introduce the invention here. That company was the owner of patents which had been issued to Shaw and to Hadden for inventions in telephonic instruments. When Beckwith became manager, the company entered into a written agreement with him by which it promised to use the Bassano-Slater invention in itsbusiness,unless by subsequent agreement the parties should agree to substitute other inventions. Beckwith was to have a large share of the profits of the company. It was also agreed between Beckwith and the company that the latter would secure, "for purposes of defense, the so-called Antonio Meucci claims evidenced by caveat filed in the United States patent-office." From the time Beckwith became manager until this suit Wl\S brought the company seems to have been mainly engaged in advertising its pretensions as a competitor of the American Bell Telephone Company in trying to procure money, and in endeavoring to enlist others to become purchasers or licenseeS of its rights in telephone inventions. It had a capital stock of nominally $10,000,000, and but very little real capital. Its officers soon became aware that its patents were worthless, unless the Bell patent could be invalidated. It had not manufactured any telephone instruments, nor did it ha.ve any for sale, but it had in its office certain instruments, the history of which is stated by Mr· . Bowen, one of its directors. He testifies as follows: "At a boa.rd meeting I raised the question, 'have we got any instruments of any kind?' and it was stated by Mr. Beckwith that we had the Bassano-Slater instruments. The Shaw and Hadden were both infringements upon the Bell, and could not be used. IL was then suggested by Mr. Beckwith that we could use the Bassano-Slater instruments; that we could use them in connection with the Meucci instruments, and it would make a first-class instrument. Then I think the question came up before the board in reference to having made a set of instruments for a sample set, to have in the office to show what they were, as we had nothing. I think I stated at that time that as long as I had been a member of the company I had not seen anything that looked like an instrument to show anybody. At that meeting there was an order issued by the board authorizing Mr. Beckwith to have made a set of sample instruments, such as he deemed proper and sufficient for testing, for samples, to have in the office to be exhibited." These instruments were put up in the office of the company in the Mills Building, on Broad street, New York city, by Beckwith, and .connected with the office of Mr. Hadden, the electrician of the company across the street. They were used for several weeks to communicate with Mr. Hadden, and for the purpose of illustrating to others what telephones the company proposed t.o introduce to compete with the American Bell Telephone Company. During all this time the officers of the company Were unwilling to commit it to any acts of ·open infringement of the Bell patents, fearing that the Bell Company might obtain an injunction, and thus embarrass their operations. But they were holding themselves out to the public as the owner of: patents which would protect the purchasers or licensees against the claims of the Bell Company, and as prepared to furnish to purchasers
or licensees telephone instruments made in accordance with such patents. In September, 1885. the company issued a circular, in which it recited the history of the first Bell patent, and the discovery of the prior invention of Meucci. The circular stated that the company was able to fully substantiate the fact that Meucci was the first inventor, and that, besides sectuing his title to the original invention of the Electro Magnetic Telephone, the company had procured telephone instruments operating upon a different principle from those of the American Bell Telephone Company, and which were not infringements of the patents of that company. The circular invited the public to purchase the instruments, and to promote the formation of companies to become licensees under its patents and claims. The theory of the Globe Company is that it has never made or used telephone instruments, except experimentally, to test their operativeness; that it has never sold any; that its officers were aware that it could not do so without danger of legal proceedings by the American Bell Telephone Company until the Bell patent could be successfully contested; and that they were waiting until that time should arrive, and in the mean time proposed studiously to avoid allowing anything to be done that would bring their company in conflict with the American Bell Telephone Company. The testimony of its officers is inconsistent with their conduct. The instruments put up in the office of the company were undoubtedly put there and used to demonstrate to the public that the company ceuld supply practical commercial telephones to licensees and subcompanies. When the September circular, inviting the public to purchase telephones, was issued, the officers of the company doubtless intended to refer to telephones of the description put upon exhibition in their office.as the instruments which could be used. This is indicated by what took place subsequent to the filing of the present bill. It is shown that after this suit was commenced, and after an application for an interlocutory injunction against the company had been denied by this court because there was not sufficient proof of acts of infringement on the part of the company, the company, by its manager, Mr. Beckwith, procured a company to be organized in New Jersey, called the Meucci Telephone Company, for the purpose of erecting a telephone exchange in the city of Elizabeth, and purchasing the rights of Meucci in hisjnvention of telephones for such purpose. The contract made by Beckwith· with the Meucci Company authorized company to use in +heir exchange the inventions of Meucci, Bassano, Shaw, and Hadden, one or more of them; and that contract was ratified by the board of directors of the Globe Company by a resolution of March 30, 1866. Shortly thereafter the officers of the company concluded it would be safer not to execute the contracf made in the name of Beckwith until it had the approvalof their attorney, and, after consultation with the attorney, there was never any formal execution of a contract. The Meucci Company erected a telephone line in Elizabeth, and used upon it telephone apparatus similar to that which had been used in the office of the Globe Company.
AMERICAN BELL TELEPHONE CO. V. GLOBE TELEPHONE CO.
The proofs establish satisfactorily that the instruments used in the office of the Globe Company are infringing instruments; and it is plain that the use of these instruments in the manner and for the purposes disclosed by the proofs is sufficient to authorize an injunction the defendant. All the defendants were acting in concert together. Rogers was the secretary and treasurer of the Globe Company. Beckwith, as has been stated, was its manager. Meucci was its nominal electrician. All of them were acting in co-operation, in endeavoring to incite others to appropriate and infringe the rights of the complainant. _Thedefense, so far as it rests upon the priority of invention by Meucci, may be briefly disposed of. The circumstance that this defel1se'is not relied upon by the Globe Company in its answer, and that its counsel has insisted in his argument that it should not be considered because not satisfactorily presented by the proofs, although indicating that the principal defendant has no confidence in the asserted priority of invention by Meucci, ought not to prejudice the position of the defendant Beckwith, who relies upon this defense, has urged it with great zeal, and is evidently convinced of its truth. As was held in the Drawbaugh Case, 22 Blatchf. 531, 22 Fed. Rep. &09, the patentee starts with the benefit of the presumption of law that he was the first and original inventor of that for which the letters patent were granted him, and whoever alleges the contrary must assume the burden of proof, and the defense of want of novelty or originality must be made out by evidence so clear and satisfactory as to remove all reasonabledoubt. According to Meucci's story, while he was at Havanna, employed as a machinist and decorator of a theater there, and in the year 1849 or 1850, he discovered how to obtainthe transmission of words by means of conducting wire, united with several batteries to produce electricity, and gave his discovery' the name of the "Speaking Telegraph." In 1850 he came to this country, and took up his residence at Olifton, Staten Island, where he has ever since resided. He was engaged in various kinds of business, particularly candle making, and the manufacture of paper from vegetable fibre, and at one time had a brewery. He states that soon after coming here he resumed his experiments with the telephone; that before 1860 he had good working instruments; and before 1865 had instruments which embodied the essentials of the modern magnetic instruments. These instruments he asserts were known to his friends; were in use at his house before and -during the years 1864 and 1865, and subsequently. He describes them from his memory. The originals are not in existence. He states that in 1860 he thought his invention sufficiently perfected to introduce it, and about that time applied to his friend Bendelari, who was going to Italy, to try to get assistance to perfect the invention, and bring it into use. He says that he felt anxious to have his invention first appear from his old home, and thought Bendelari would be able to bring the invention out there; and he therefore gave a pretty full description of it to Bendelari, and also about this time published the fact that he had made the invention in an
.newspaper published inrNew York called "Echo L'Itallienne." He states that after this, until 187·l,'from time to time,he experimented to make improvements.in his invention, but made no particular improvements after 1864 or 1865. He says that in 1871 he found that his wife, during his illness; had, without his knowledge, sold all the instruments and. devices he had.used in his experiments in sound telegraphy, except some bobbin, apart ()f a permanent magnet, and some fragments of pasteboard, which he subsequently found, to a dealer in second-hand articles. In thelatter part of 1871 he entered into an agree.inent"with three of his Italia.n friends, by which they became copartners in the business of perfecting and introducing his invention. The written agreement bearing date December 12, 1871, is produ<led, and recites the business of the copartnership as that of "making and trying all the necessary experiments for the accomplishment of the transmission of the human voice through electric wires invented by the aforesaid Antonio MeuccL" These parties immediately took steps looking to the procurement of a patent, consulted Mr. Stetson, a patent expert and solicitor, and, under his supervision, an application for a caveat was prepared, and was filed in the patent-office, December 28, 1871. Soon thereafter Meucci consulted again with Mr. Stetson, with a view of making an application for a patent for the invention, but Mr. Stetson discouraged the attempt. Upon the application of Meucci, the caveat Was renewed in December, 1882, and again in De::ember, 1883. It is not claimed that Meucci made any essential improveUlents upon his invention subsequent to the time he obtained the caveat, but, as has been said, he states himself that he made none after 1865. Such in brief is Meucd's own history of his invention. There is no reason to doubt that for many years prior to 1865, and from that year .until he applied for the caveat, he· had been experimenting with telephonic and electrical apparatus with a view of transmitting speech, and during this time had convinced himself that he had made interesting discoveries, which might eventually become useful ones. To this extent he is corroborated by the testimony of a number of witnesses. But the proofs fail to show that he had reached any practical result beyond that of conveying speech mechanically by means of a wire telephone. . He doubtless employed a metallic conductor as a medium for conveying sound, and supposed that by electrifying the apparatus or the operator he could obtain a better result. That he did not believe he had accomplished anything of practical commercial utility is a reasonable inference from the fact that he did not communicate his invention to those who .·would have been likely to appreciate it, and assist him in perfecting and introducing it to the public. Between 1859 and the time of his application for a caveat he filed many applications for patents for other in'ventions. During the years 1859, 1860, and 1861 he was in close business andsbOiaLrelations with William E. Ryder, who was interested in his inventions, paid the expenses of his experiments, and, in connection with others whom he introduced to Meucd, invested a considerable amount of money in Meucd's inventions, and their use in business enter-
prises. He was a constant visitor at Meucci's house, lived near him, and seems to have been his closest personal friend and business adviser. Their intimatE! relations continued until 1867 , when Ryder became satisfied that Meucci's inventions were not sufficiently practical or profitable to devote mOre time and money to them, and their intimacy ceased, although as late as in 1871 he interested himself for Meucci to dispose of some of his inventions. During all these years, according to the testimony of Mr. Ryder, he never hea.rd from Meucci, or anybody else, of Meucci's telephone. In 1864 and 1865 David H. Craig was a partner with Meucci and Ryder in the paper manufacture. He had been intimately associated with others in telegraph. inventions and patents, and' his interest ,in such matters must have been known by Meucci. He never heard; from Meucci or. otherwise, that Meacci bad invented or waS experimenHng with the telephone. The C<:iveat itself is sufficient to indicate that he had reached no practi. cal result. There is no reason to doubt that his application contained the best description of his invention which he was then able to give. Before consulting Mr. Stetson, Meucci prepared a description of his invention', intending to make an application ,for a patent. After consulting Mr; Stetson, hEl concluded to make application for a caveat only. With thea;id Gf an interpreter, and the manuscript containing the description, Mr. Stetson prepared the formal application. After it had been prepared by Mr. Stetsoo;it was, sent by him to Meucci, and returned by the latter with amendments to be inserted in it. It is sufficient to say that the application does not describe any of the elements of an electric speaking telephone. Itl! opening statement refutes the possibility that Meucci understood the principle of that invention. Meucci states that he employs "the well-known conducting effect of continuous metallic conductors a!3a medium for sound, and increases the effect by electrically insulating both the conductor and the parties who are communicating.'" As originally expressed by Mr. Stetson, it contained this statement: "The system on which I propose to operate consists in isolating two persons, separated at considerable distances from each other, by placing them upon glaSS insulators, employing glass. for example, at the feet of the chair or bench on which each sits, and putting them in communicatioli by means of a telegraphic wire." As· amended pursuant to Meucci's instructions, this statement was qualified as follows: "It may be found practicable to work with the person sending the message insulateQ.. and with the person l:eceiving it .in free electrical communication with the ground. Or these conditions may possibly be reversed, and still operate with some success." It is idle to contend that an inventor having such conceptions could at that time have been the inventor of the Bell telephone. The application does, however, describe a mechanical telephone, consisting of a Dlouth!piece and ear-piece connected by a wire; A letter written by Mr. Stetson of the date of January 13, 1872, is in evidence, and is im-
portant all confirmatory of the conclusion that beyond this the inven,tion was only inchoate. This letter was written to Meucci when the latter was in communication with Mr. Stetson in reference to obtaining a patent for the invention. In this letter Mr. Stetson, in substance, advised Meued that his invention was not in a condition to patent; telling him that it was "an idea giving promise of usefulness," and the proper subject of a caveat, but requiring many experiments to prove the reality of the invention. Without adverting to other evidence tending to indicate that Meucci was merely an experimentalist who had not produced anything new in the art of transmitting speech by electricity, it suffices to say that his pretensions are overthrown by his own description of the invention at a time when he deemed it in a condition to patent, and by the evidence of Mr. Stetson. The evidence leaves the impression, that his speaking telegraph would never have been offered to the public as an invent.ion .jihe had not been led by his necessities to trade on the credulity of. his friends; that he intended tojnduce the three persons of small means and little business experience, who became his associates under the agreement of December 12, 1871, to invest in ,an invention which he would not offer, to men like Ryder: and Craig; and that this was done in the hope of obtaining. such loans and assistance from them as he would temporarily require. A decree is ordered for the complainant.
MIDDLETON and others.
(Circuit Court, D. Oregon. August 12,1887.)
PATENTS FOR INVENTIONS-INFRINGEMENT-CONCRETE PAVEMENTS.
The Schillinger patent for an improvement in concrete pavements is confined to a pavement laid in detached blocks, formed on the ground, with a water-tight joint between them produced by the interposition of a strip of tar-paper, or other suitable material, between said blocks; and a concrete pavement laid between scantling in sections six feet by twelve, more or less, with a vacant space between each, of thr,ee feet by twelve, in which the pave-, ment is laid as soon as the adjoining sections are sufficiently set to work over, while each section, as soon as laid, is marked off, or cut with a marker or trowel, into blocks three feet square, or other convenient size, is not an infringement of such patent.
(Syllabu8 by the Oourt.)
In Equity. Bill for injunction to restrain infringement of complainant's letters patent. William B. Gilbert, for plaintiff. Cyrus Dolph, for defendants. DEADY, J. This suit is brought by the plaintiff, a citizen of New York, against the defendants William A. Middleton, a citizen of Oregon, Mary Hueston, a citizen of New Jersey, and the Oregon Artificial Stone