AMERICAN BELL TEL.
SOUTHERN TEL. CO.
place. and preventing any movement of the blade-holdet. When'the razor is to ;be put away, the. second and fourth sections are sprung apart, so as to release the blade-holder from the fingers of the fourth section, the blade-holder drops into line with the second section, and the fourth section drops upon the second section, with which the third section is in lille. The first, second, and third sections are thus in line with each other, and the fourth section lies down upon the second section. The js flattened out, the blade is no longer hel,I in place, and t:1e whole is placed in a shallow box for safe-keeping. The two devices differ in this respect: the blade-retaining spring of the Heitner r:tzor swings laterally, and the two end sections fold upon the third, as the two ends of a sheet of note paper fold upon the middle part of the sheet. The bladeretaining section of the Aloe razor does not swing laterally; it drops upon three sections fall into line with each the second section, while the other, and a flattened device is formed which must be put into a Clise. The Aloe razor is included in the literal terms of each claim of the Heitner patent, and if the claims are to receive a literal qonstruction, there is no doubt of the infringement. I do not think that the patent should be thus construed, and include all folding razors which come within the general language of the claims. The entire scope of the Heitner invention may properly be said to consist in the rnanner in which the Monks raic?r was permitted to be folded. The spring was swung around laterally, and then, in the language of the specification, "the blade section, B', is. folded down on the handle section, B", and the handle section, B"', is folded down upon the whole." The Aloe razor was folded up in a different way, and does not have the advantage of the peculiar and incompactness of the Heitner device. Inasmuch. as the sections of the Aloe razor are not hinged to fold on each other, of the the first claim of the Heitner patent is not infringed; and inasmuch as the Aloe razor does not have a spring which permits the sections, when not in use, to be folded together, the second claim is not infringed. The' bill is dismissed.
[ERICAN BELL TEL.
Co. et al.
TEL. Co. et al.
(OVrouit Oourt, E ·.D. Arkan8a8. April 21, 1888.)
The Bell telephone patent, having been held by the supreme court to extend the idea of, and not the mere device for. the transmission of vocal sounds by means of electrical undulations which are similar in form to the air vibrations that constitute the sounds to be transmitted, defendants' instruments, which, although in some respects different from the Bell patent, produce electrical changes corresponding to the vibrations of sound waves caused byarspeech, must be held to be an infringement of the Bell patent. Defendants resisted an application for a prel1minaryinjunction on the that complainants were guilty of laches. Defendants engaged in their prise in the summer of 1885, and this suit was brought in the fall of 1887. For
two years before 8uit defendants had been in operation, and had bullt up a business of 400 telephones. The fact that they were establishing the business was well known to complainants, who took no steps to restrain them. But, before and at the time defendants began their business, complainants and their patentee were carrying on litigation in several courts Qf the United States, Itnd in many ways were vigorously asserting and their claims, and a case involving the 'validity of that patent was then pendmg in the supreme court,all which facts were well and publicly known. Held that. as defend· ants chose to rely upon. their belief that. the supreme court would hold the Bell patent invalid, they could not complain of the consequences of a differ· ent decision, nor urge laches on the part of the complainants, and the injunction should issue.
In Equity. Bill to restrain infringement of patent. James J. Storrow, John McClure, and Eben W. Kimball, for complainants. U. M.· Rose, Casey Young, and Jefferson Chandler, for defendants. BREWER, J.' When I came here I did not expect the burden of this case to faU on me, but thought I had only come to assist my Brother CAWWELL, and advise with him. But the circumstances were such that it seemed necessary that I should take the sole responsibility, and that he should look after other matters pending, aside from this case. I did not want to take the case. I avoid patent cases when I can. And yet this happened to be one involving questionB to which my attention has been directed as a matter of intellectual interest for the last two or three years; and from time to time, as the opinions of the various courts hav(t been announced, I have examined each opinion, and studied with interest and curiosity the various questions presented and passed upon. When this bill Was filed, no decision had been announced by the supreme court of the United States, although several opinions had been promulgated by circuit courts, and hence much of the testimony taken in this cause was with reference to matters which it was apparently thought might be presented for.examination here. But on the 19th of last month the supreme co'urt decided the Telephone Cases,l alid ·.that decision puts out of considerafion many matters that would otherwise be fair subjects for discussion. Of course, the decision in that cause is not a final adjudication as between these parties. The proceeding there was res inter alios acta, and not conclusive upon this litigation. Many questions of fact which, as lJetween the partiQS thereto, were settled,-such as the question as to the priority of discovery,---are not settled as between these parties by that decision. That question is still so far open that when that court has a . new case before it, if brought between other parties, and upon different testimony, it may declare that Mr. Bell was not the first discoverer and inventor. Thus the supreme court, about two years ago, after a careful investigatir>n, sustained what is known as the "Drive-Well Patent," but in the next year the same court declared that patent· vQid, because the testimony showed the entirely new fact of a prior public use. Some yel:\.rs ago I sustained· the Glidden patent for barbed-wire fence. Afterwards Judge SHIRAi;; held it invalid,because of a prior use and invention before me. .But it unquestionably appears from not .shown in the
18 Sup. Ct. Rep. 779.
AMERICAN BELL TEL. CO. V. SOUTHERN TEL. CO.
the decision of the supreme court, not only that it upheld Mr. Bell's pat· ents, but that after carefully considering its construction it gave it 8 very broad scope. In cases, even, between other parties-certainly on motione for preliminary injunctions-that decision must be accepted as conclusive, unless perhaps there should be developed unexpectedly a clear showing of new matter. If, for instance, in this case there was presented which was absolutely new in this litigation, something that was very clear and conclusive, this court might refuse an injunction, notwithstanding the decision of the supreme court affirming the validity and determining the scope of that patent. But in all ordinary cases on an application for a preliminary injunction the decision of the supreme court must be accepted as conclusive, both as to the validity of the patent and as to its scope and extent. That relieves me of much labor. I understood the counsel in their argument to state that from previous decisions it mUllt have been expected, and that it was expected, by the profession generally, that the supreme cO)1rt, if it found against the validity and priority of Mr. Drawbaugh's claim, would sustain the Bell patents as broadly as they have been sustained. This may have been the expectation and belief of the bar in the east, but I am inclined to think, from conversations with members of the bar who have given this matter investigatiou, that that was not the expectation here, and that the belief was that even if the patent wae sustained, and Mr. Bell decided to be the first who made the invention, the patent would be so as to make it a patent for the particular apparatus described, or for the particular and limited mode which was embraced and developed in the precise apparatus shown. But I think no man can read this opinion of the su.preme court and compare it with other deliverances of that court upon patent cases without perceiving that, in language as clear and potent as it is possible for language to be, it has affirmed the validity of the patent, and has decided its scope, without limiting it to the mere apparatus, and hns held that it extends to his whole method of transmitting and reproducing vocal sounds. His method, as he states it in his p'llent, and ae the supreme court construes it, covers the whole matter of the tele11honic transmission of speech, because the essential part of it consists in the .transfer to the electric current, and the transfer by that current, of thevibrating motions caused by the human voice in the utterance of speech. Let me turn now to the opinion. The chief justice says: "The important question which meets us at the outset in each of these cases is as to the scope of the fifth claim of the patent of March 7; 1876. which is as follows: -The method of an apparatus for transmitting vocal or other sounds telegraphically; as herein describt'd, by causing electric undnlations. similar in form to the vibrations of· the air accompanying the said vocal or otber Bounds, substantially as set forth.' " That is the idea of the transmission of these sounds by means of electrical undulations which are "similar in form" to the air vibrations that constitute the sounds to be transmitted. The court continue: "The question is not whether' vocal Bounds' and -articulate speech' are useqlilynollyrnously as scientific terms, but whether the Bound of articulate
FEDERAL REPORTER. .
speech is one of the" vocalor'oth'er sounds'" referred tointhjaclllim· ()f the patent. We have no hesitation in saying that it is, and that, ,patent sUfltain.ed to th.erun extent of il;l now contended, for, it gives to Bell. and those who claim under bini,'the' exclusive use of his art for that purpose, until the expiration of the statutory ter,m of his rights. In this' attr-or, what Is the same thing under the patent law, this process, this way of transmittingspeech-electricity. one of the forces' of nature, is employed, but electricity, left to itself, will not do wbat is wanted. The art consists in sQcontrolling tile forp/:! as to ml,'keit accomplish the purpose. It had long ,been tb.at if t,b.e vibratipusDf air caused bytb.e voice in speaking could be reproduced at a distance by means of electricity, the speech itself would be reproduced and understood. Ho'w to do it was the question. B"n discovered th'at it could be done by gradually changing the intensity of a continuous electriecurrent so as to make it correspond exactly to the changes in the density of the air caused by the sound of the voice. This was.'his \lort. He then deand speech vised a way in which these changes of intensity ,could transmitted.. Thus his art was put in a condition tor practical use. In doing this, both discovery and invention, in the popular sense of those terms, were involved; discovery in finding the art, and invention in devising the means of making it useful. For such discoveries and suchinvelltions the law has given the discoyerer and inventor the righttoa.patent-as discoverer, .for the ,useful art, process, method oldoing a thing he has found; and as inventor. for the means.hehas devised to make his discovery one of actual value. Other inventors may compete w,ith him fO,r the ways pf, giVing effect to the discovery, but the new art he has found will belong and those claimingnnller him, dUring the life of his patEint. 'I , . Th/lot .is, the inte.\lsIty of the current was. changed in accordance with tne..form or character of each vibration. And then, again. the language of court implies. what seems .to me from my study of the telephone to 'a necessary physical fact, that in no other way can electricity be actually made operative to convey those peculiar vibrations. That is the .main idea of the P!1ten,t. There must, of course, be something more ,than the bar/:! idea; ther/:! must be some machine tOD,lake it practically useful. But the patent is not limited to the employll1ent of it by that apparatus. The court further says: "An effort was mau.e in argument to confine the patent to the magneto instrument, and such modes of creating electrical undulations as could be produced by that fl}rm of apparatus; the position being that such an apparatus necessarily implied a closed ciicuit, incapable of being intermittent. But this argument ignores the fact that the claim is-First, for the process; and. second, for the apparatus. It is again said that the claim,.if given this broad construction, is virtually' a claim for speech transmission by transmitting it; . or, ip other words, for all such doing of a thing as is provable by doing it.' il;l. true that Bell transmits speech by transmitting it,. and that, long before so, it was beli,eved b)' scientists that it could be done by means of elecif tpe requisit.,Ej Ellectrical effect could be produced. Precisely how that subtle force operates under Bell's treatment, or what form it takes, no one can tell. .AU we know is that he found out that by changing the intensity of,a continuous cUJ['rellt,so as to make it correspond exactly with the changes in/tile density of air caused by sonorous vibrations, vocal and other souuds could be transmitted &nd heard at a dililtance. This was the thing to be done, and Bell discovered the way of doing it.. He uses electricity asa medium for that pnrpose, just as air is used within speaking distance. In effect, he prolongs the air vibrations by the use of electricity. No one before him had ,
found out how to use electricity with the same effect. To use it with success it must be put in a certain -condition. What th.at condition was he was the first to discover, and with his discovery he astonished the scientific Then. the court quotesfi'om some of the scientific commendations, and adds: "Surely a patent for such a discovery is not to be confined to the mere means he improvised to prove the reality of his conception." It follows, and this, to my mind, .is supreme as to the scope of the patent, that by its terms, and by the decision of the court, it covers the idea of the transmission of the vibrations of articulate sounds by undulatory currents of electricity. These undulations are the means of reproducing human speech at a distant point, because they repeat electrically the same vibrations. The sound vibrations are, so to speak, converted into corresponding and similar vibrations of electricity, as though .these forces of nature, though different, were convertible, and what was done by the one could be, and in the telephone was, copied by the other. The idea was that when the vibrations created by the organs of speech acted on the electrical current they set up in the electrical force the same variations or vibrations, transferred these vibrations to the electricity, which iu tum transferred them to the distant point. That is the idea on which Mr. Bell's instrument is based. The difference between putting into the current of electricity undulations which are copies of the vibrations caused by the human voice, and using a regular and uniform current of electricity, merely broken up by intermissions, or what is called a "make and break," is very clear. Take the old Morse instrument. In that the currents of electricity are uniform; they are merely made and broken, and there is nothing like any change in form or strength. Suppose we load each barrel of a revolver with a bullet of the same size, density, and shape, and shoot one after the other, they impact upon the object on which they strike with successive blows which are uniform, systematic; and regular. When a current of water flows through a pipe, if we suddenly turn a stop-cock we simply brenk the current; as soon as it is opened , and the water moves again, it flows with a uniform motion, and makes only a similar impres!'ion upon a far-off object. But Bell's idea of the transmission of sound is that the vibrations are irregular and different for each word; -somewhat as if you put a paddle in the water and wave it backward and forward irregularly. Then the wave-like motion of the water is like that of the paddle. That is Mr. Bell's idea. The wavelike changes in his current are irregular, just like the irregular to and fro movement ill the air which produces his electrical waves. That-is what the supreme court says his patent is for. He takes a current of electricity which is uniform and regular, and continuous in its flow, and changes that current by-the vocal impulses, such as are made by articulate speech; so that the current,: instead of being simply continuous and uniform, corresponds exactly with the variations of the vibrations in the air. Looking at it from that stand-point, it seems to me impossible to trans· niit human speech by electrical currents otherwise than by giving to those currents variations harmonious with and corresponding to the various vibrations of the air. It would be impossible to do it by sending
regular and uniform currents merely broken up. If you should merely break up a uniform. current, preserving in successive volumes its uniformity of flow, it would be a physical impossibility ever to transmit speech.by means of it; for it seems a physical impossibility ever to transfer human speech otherwise than by gettinK the current itself to correspond to the peculiarities of the vibrations which constitute that speech, and which the current must transfer. That there is in all articulate speech something that may be called a "pause" between one vibration and an"' other, and that that infinitesimal pause will cause a corresponding instant of no motion or no change in the electrical current whi,h transmits that speech, is obvious. When I speak there is not, inane sense, an unbroken and continuoufl flow of souud. In every vibration of the air there is an instant when, having moved in one direction, it ceases to do that, and begins to move in the other; and so, in an electric current which copies that vibration, there would be the same corresponding in:finitesimal break and flow again. And besides that, between each sound, or between each word or each syllable, there is a pause in the air vibrations, and so there would be in the electric undulations which copy them. But that is not a broken current, like the current of the Morse telegraph. When we speak of a continuous current in the telephone we mean a current which has such continuity as the air vibrations and motions have in speech. It was argued at the hearing that the deiEmdant's instrument had breaks orcurrent which accompanied the various changes in the motion of the instrument acted on by the voice. It was said that the use of the induction coil showed that there were breaks in the currents, and also that there were two separate circuits, the primary and the secondary, and .that the current did not flow, and was not continuous, from one into the other. Neither'of these considerations are new in this litigation. Both were presented.to the supreme court. Suppose all that to be true, just as stated. If tl).e supreme court had decided that there must be only one .current, and that the current must be absolutely continuous, there might perhaps be force in that contention. But the idea which thesu., preme court rested on was that of a current c ntinuous and undulating in the sense in which I have described it, like the vibrations of the air, corresponding to its motion. and not "merely" intermittent. It would not make any difference, in .my opinion, if there were half a dozen currents co-operating with each other, so that at the last the transmitting current took up the undulations corresponding to the air vibrations, and earried them to the distant point. The idea expressed by the supreme court is that stated by the language of the specification: CausiQK and employing electrical undulations "similar in form" to the air vibrationS' accompanying the vocalor other sounds to be transmitted. That is the idea. That is the art or method which is patented; the same variations in the electricity as in the air,-similar to the changes in the air vibrations, and co-extensive with them. To one who has read this opinion of the supreme court with that view of the operation by which speech is transmitted, there can be but one conclusion as to the fact that the various instruments which are used by these defendants infringe. Whatever
AMERICAN BELL TEL. CO. V.SOUTHERN TEL. CO.
else they do or do not produce, they produce electrical changes which correspond to the vibrations of sound waves caused by articulate speech, and those are the "undulations similar in form to the air vibrations" described in the patent. Thus far I have very little trouble in reaching a view which disposes of thi!:! part of the case. The other question is more embarrassing, and that is whether a preliminary injunction under the circumstances of this case would be proper. These defendants engaged in this enterprise in the summer or fall of 1885. This suit was brought in the fall of 1887. For two years before this suit was instituted the defendants had been in operation, and had built up a business of some 400 telephones. The fact that it had established or was establishing its business was well known to the Bell Company, and still no suit was instituted for a period of two years. Generally, a doubtful question of fact ought not to be settled on ex parte affidavits. In this application for an injunction the case is presented on both sides by affidavits, and affidavits are not very reliable testimony. The case, it is urged, ought to wait until the witnesses could be examined and cross-examined; and only after that full investigation, which ie more certain of eliciting the truth, ought an injunction to be issued. At the hearing the important question which the counsel relied upon as doubtful was whether the process by which their instruments transmitted speech consisted in the use of undulatory waves, or of the absolute make and break of a current which was uniform between the breaks; and they urged that that question ought not to be settled on a preliminary investigation, or by any means short of a full hearing upon the examination and cross-examination of witnesses. Where there is a doubtful question of fact the court will generally wait until witnesses have been produced and been examined and cross-examined. And if this case was a case which turned upon the weight to be given to the testimony of witnesses on such a subject, the argument would be forcible. Suppose that I entered into, or claim to have entered into, possession of a tract of real estate, and, having left it, come back 20 years after, and upon the question of an injunction the defendant claims a continuous occupation, and I produce affidavits and he produces affidavits as to whether' there was actual entry and possession by me at that distant time,-that presents a question that in the very nature of things may be doubtful, and affidavits on such a matter may control the courts very little. It isa question that particularly presents a subject for cross-examination of the witnes!:!es. But I have had enough experience in patent cases to know there never was a patent of any intricacy in which experts could not be produced on either side, men of intelligence and scientific acquirements, abilit.y, and integrity, who would file their affidavits on one side or the other. But no amount of that kind of evidence, as a rule, will overcome what the court can clearly learn from an intelligent examination of the instruments themselves. The examination of those instruments, with the explanations given by Mr. Young and Mr. Storrow I on one side and the other, in regard to the respective apparatus, is testimony that is full and satisfactory. You see the instruments, and v.34.1!'.no.l0-51
you examine them to ascertain the. process, ,with the explallations.of gentlemen, who are fully competent to explain. This is not a case where the investigation is surrounded with doubtful questions of fact, which could be cleared up by bross-examination of the witnesses. Another argument urged against this motion is that of laches, and rests upon the delay of complainant. A man who. stands by and sees his p.eighbor go onto his land and dig a cellar and put in a foundation and build a house, and waits from day to day and month to month and year to yaar,and says nothing to restrain him from the use and waste of'his money, and afterwards wants to turh round and take his money and the products of his labor and time, does that which shocks any man's sense of right. If he knew this man was using his time, labor; and.IDoney to improve his property, he;should have tried to restrain him; then, if the trespasser stm persists, it is the trespasser's own fault.. The defendants claim that the plaintiffs did not bring their, suit until two ye,arsafter the defendants built their exch!inge;.andthat is the fact. But no definite. length of,tifue constitutes laches. This defense always depends upon the circumstances of the case. If these defendants had proc ceeded to make their investment, ,believing that they had a right to use their telephones, and believing that no claim was made to the contrary, and had.: been led into this condition by inaction and silence on the part of the plaintiffs, with full knowledge of what the defendants were doing, of.course·it would be !\infair to stop them now, before the case is tried ili the usual way. But in this case the fact that Mr. Bell had these patents, and that he was insisting upon his claims in the broadest extent. as broadly as he does now, and was carrying on litigation in several courts of the United States, and that several courts in the various circuits had confirmed their validity and their scope as he contended for it, and thll,t a number of these cases were pending; in the supreme court of the United, States, .and thatmost earnest and vigorous proceedings were beby the Bell Company to enforce its claims, /lind that one ing department of the government wall affirming fraud in the patents, and was about to institute proceedings for the purpose of canceling them ,7" these matters were of common knowledge. The defendltnts, in the face of those universally known facts, and, it is proved, with actualknowledge of the existence of the litigation and the decisions, and of the fact that litigation was pending in the supreme court (If the United States, which would sooner or later be determined, entered into this business. ThElysay they believed that the patent would be decided to be void, and that they believed that the government suit would be a protection; and I have no doubt they believed this. If the patent had been defeated in the supreme court, there would be no inj unction j and they would be free. But this was one of thema-tters to be determined by that court. Under those circumstances, can it be said,..when these suits were finally determined and Mr. Bell sustained to the fuHest extent claimed by him, that he should be answered here by the-daim tbat, ashe had waited until his rights were determined, he was too late to enforce themjand, because the defendants had infringed for. two years. during the:litigation they
were watching; they should be'inteirei.-ed with for9ix m6nths, or nine months', or S0me other tithe afterwards. It is a case where, to Use a common phrase, a lllan' buys into alawsuit, and must take his chances of the result; for here the defendants knew all about the litigation, and what the consequence of Ii decision by the supreme court must be, and based their expectations on the belief that the litigation would terminate adversely to Mr. Bell. But it has ended in his favor. This case is of much importance, and I have heard several days' atgtiment on the' motion, and given it all the consideration possible dUring the week. It is evident from what has been said that the complainants are entitled to the preliminitry injunction asked for, and it is granted·
BELL TEL. Co. et cd. ". SOUTliERN TEL. Co. et al.
(Circuit Oourt, E. IJ. Arkan'a8. April 17,1888.)
PATENTS FOR INVENTIONS-AcTION FOR INFRiNGEMENT-PLEADING.
The averment, in a biil for injunction against infringem.ent of a patent, that complainant's patent has been adjudicated by another circuit court, and held valid, being in accorqance with the rule that a party seeking relief by injunction must first establish his title at law, is proper. The allegation that complainant has a patent, describing it in a general way. coupled with profert of the patent, is sufficient. The profert is equivalellt to an avcrm!lnt that he has title to all the rights specifically described in such patent.
In a bill for injunction against infringement of a patent, the simple averment that the defendant has infringed, without specifying in what particulars, is sufficient. .
In Equity. Bill for injunction against infringement of patent. On exceptions and special demurrer to bill. James J. Storrow, John McClure, and Eben W. KimbaU, .for complainants. U. M. RoBe, Casey Young, and Jefferson Ohandler, for defendants. BREWER, J. In reference to the matters that were argued yesterday, I have but these few words to say: One of those matters is the exceptions to bill, for impertinence. The defendants say that the matters contained in said bill, beginning with the words, "The most important in said suits," in section 7, and ending 'with the words, "are owned by the said respective defendants," at the close of section 24 in said bill, are irrelevant a.nd impertinent. Their challenge is to the substance of those statements, rather than the manner in which they are made. .They are averments of the fact of prior adjudications on the validity of the patents. This is a bill for injunction; and the old equity rule-a rule which is not enforced, perhaps, with the same strictness, or in as many cases now, as formerly-is that a party must establish his title at law