240 F. 716 | 2d Cir. | 1917
(after stating the facts as above). This court is not required to give, and the parties may be spared, any description or history of the art of radio communication, as a preface to the consideration of this appeal. The case at bar does not raise for decision questions affecting the fundamentals of that art; and in so far as it does attack defendant’s right to use a certain method of producing ether waves, the historical relation of the method in question to the art in general, and many details of commercial practice said to prove or disprove infringement, are sufficiently treated in the opinion of Judge Mayer. In that careful and illuminating review of a record unusually extended, the efforts of counsel have pointed out no omissions, however divergent their arguments as to the force or probative value of the facts there summarized.
Fessenden describes and pictures an arrangement of radio appliances not unfamiliar at date of application, and for which he claims no patentable novelty; he then states as the problem successfully attacked by him the “annulment” or “prevention of atmospheric and other disturbances,” which in the “tropics” and “even in the more northern climates” cause “great difficulty * * * in wireless signaling.”
To accomplish his purpose he suggests as a voltage source an “alternating current dynamo” giving its voltage “at a frequency of 500 periods per second,” and both justifies the suggestion, and explains his method, by disclosing that while “experimenting with a high frequency alternator” he had noted that, when “the trains [of waves] succeeded each other at a frequency above the normal frequencies used for alternating current work, the signals became mote distibct in the presence of atmospheric disturbances”; and especially had he observed that signals given with a spark frequency of 250 per second were useless under conditions that permitted the operator to “easily read” them “when the spark frequency was raised to 900.”
It being understood that “reading signals” presupposes the production of sounds, depending for their nature and existence upon a chain of natural phenomena starting with the generation of ether waves by the sparks resulting from condenser discharges, the statement quoted' from the specification plainly means that, the more sparks per second were produced, the more easily the resulting sounds were heard.
To explain this ease, it is further taken as understood that “the low
The patentee then assigns, as a reason for the asserted ease in hearing the sounds which represented sparks with a frequency of 900, the “physiological phenomenon” that a hearer could “concentrate” his “attention” on higher notes, so that the lower noises of static “ceased to-affect consciousness.” This is called a “novel physiological effect, discovered by the applicant”; but, however dressed out in long words, it is no more than an observation in acoustics familiar to any one who has heard the whistle of a fire engine dominating and piercing through the rumble of a city and the roar of a crowded street.
This “freedom from disturbance” the patentee calls “selectivity,” and states that his “physiological method of selectivity” renders tuning, either electrical or mechanical, “not always advantageous” and he expressly excludes it from his “present invention”; that is, he uses for hearing or receiving purposes an ordinary telephone receiver.
Upon these quite simple disclosures, Of which the inaccuracies or overstatements above noted would not affect the substantial facts, are based the two claims in suit, which may fairly be compressed into the following statement of invention, viz.: A method of overcoming or
The application stood substantially thus until March 13, 1909, when, in order to “bring out more clearly the distinction between applicant’s invention and the method” of the references cited by the examiner, the specification and claims took their final form, the patentee arguing that the receivers of the references accomplished “selectivity by rendering the receiver responsive to only one definite group frequency” (that is, they were tuned, at least partially, as Fessenden preferred to have his tuned when he filed the application); but, as changed by the amendment of 1909, the patentee declared that he attained “selectivity by utilizing the physiological discovery referred to in the specification.”
It is further observable that nowhere in the patent as issued, or tire file wrapper, is there mention of any special spark gap, or arrangement therefor. Fessenden pointed to his drawing and in the application said, “37 is a spark gap”; the drawing indicates (if it means anything definite) a fixed gap; so the matter has stood since application filed.
Finally, we note that not until March, 1909, did the patentee in argument with the office describe the sound producible by ether waves as a “musical note,” and he then speaks of the “musical notes produced by. atmospheric disturbances,” as well as. those produced “by waves from the sending station.” His assertion was that, because the ''pitch” of the two musical notes was “different,” his physiological selectivity enabled the operator, using an untuned receiver, to distinguish signals from static.
(b) Mr. Fessenden conducted his experiments, and evolved the method under consideration, while employed by the National Electric Sig
The testimony as to what this station could and did do has been so thoroughly considered in the court below that we find it unnecessary to go into details. It is enough to say that in 1905 the station had no appliances capable of producing 250 sparks per second, and it used a synchronous rotary gap, a device not common among radio workers, not invented by Fessenden, not new, and known as producing mechanical regularity in timing discharges. This apparatus did produce or ultimately cause an even persisting series of sounds, which were noted as musical as early as December, 1905, by an operator who heard them at San Juan, Porto Rico. .
Mr. Fessenden was anxious, long before he filed his application, to get and use dynamos capable of at least 500 sparks per second; he evidently wanted high frequency, but there is no evidence that prior, to the date of his application he spoke or wrote of the desirability of having high frequency with spark regularity, or of a resulting musical quality in sound producible by such a method. There is, however, ample proof that, substantially at the date of application, he discovered his principle of physiological selectivity, and we consider it shown beyond a doubt (dehors the patent itself) that his belief in tire value of that idea impelled him to file application. Not only the patent as it exists, but tíre wording of the original application, fortifies this conclusion.
2. The tenor of plaintiff’s evidence (especially Kintner’s), the argument below so plainly reflected in the opinion of the District Court, and the presentation of this appeal, all compel belief that throughout the present litigation appellants have thought themselves entitled to succeed only if it could be held that the “gist of the patent is the generation of waves having a definite — i. e., regular — group frequency, above 250 per second, preferably of the order of approximately 1,000 per second, and the reception’ of such groups with an indicator resonantly unresponsive to said group frequency.” To quote further from plaintiff’s final brief:
“The invention overcomes static by generating waves in groups of definite recurring period, and at such high frequency that the sound produced thereby in the receiving telephone will be a musical tone or note, clearly distinguished from the noises” of static.
We.accept as-the final position of plaintiffs that the patent discloses one inventive thought dominating and distinguishing the method claimed, viz., regularity or uniform periodicity in spark production, at frequencies so high as to make the resultant sound musical because of the regularity, and high-pitched because of the high frequency. If the claims in suit do not embody and describe this thought, they cover nothing worth contest.
The present reading of the claims makes the word “definite” contain the one vitalizing idea. It is said to mean “regular,” in the sense of uniform recurrence (of wave groups) in point of time. On this point the patent itself, its office history, and the evidence surrounding its evolution lead us to observe that there is no reason why the same word should have unexplained differences of meaning in the same document. Fessenden speaks of the “definite periodicity” of the vibrations of a tuning fork when expounding his supposed discovery in physiology (page 2, line 119), and in both the claims both “wave frequency” and ^ “group frequency” are described as “definite.” No reason at all appears why he should be held to have assigned different meanings to the same word, thus used. Yet such must be the holding on appellants’ contention.
Finally, there is no evidence that the patentee had any idea that definite — i. e., regularly and uniformly recurring — wave groups, were a part of his invention when he filed application, nor until March, 1909.
But it is said that Fessenden used a synchronous rotary spark gap, which insured definiteness in the sense urged, and from this fact is built up the argument that he invented his method as early as 1905. Let the fact of use be assumed; but, if so, then there is no excuse for the omission in the specification of the only piece of apparatus, even now suggested, for accomplishing the patentee’s method, for the reasons and by the system said to be wrapped up in the word “definite.” We decline to believe that, when Fessenden wrote “37 is a spark gap,” he meant “37 is a synchronous rotary spark gap producing uniformly recurring impulses, which I describe as definite group frequencies.”
Unless this can be done, however, the conclusion is irresistible that, if “definite” means what appellants insist upon, the Fessenden method
(b) Examination of prior patents and publications relating to radio communication shows that before this application was filed the word “definite,” as applied to spark production, was by no means unknown. The main citation against Fessenden (Blondel, No. 824,682) uses it repeatedly, and always in its normal sense of fixed or predetermined; there are other instances of such use, but no case is called to our attention, in the whole prior history of the_art, wherein the word was used with the meaning we are now asked to give it.
By overwhelming evidence it is proven that, before San Juan heard the Brant Rock signal, the United States Navy, using a fixed gap and a mercury turbine interrupter, accomplished high frequencies, resulting in a high pitched signal, which in the case of the U. S. S. Kentucky became quite literally famous in the service; nor do we consider the testimony on this point open to criticism, because much of it was given by the wireless operators of the Navy who attended court in uniform. We are aware of no reason why the dress of their profession should be avoided by witnesses.
Whether regularity in timing discharges was or could be attained by the Navy method is a point on which no decision is necessary. It is enough that in 1905 there was no novelty in the high note resulting from high frequencies.
Summarizing the foregoing observations, we hold, from a consideration of the application resulting in this patent, that, when filed, .regularity in point of timing sparks was not, and was not intended to be, any part or portion of the method applied for. That idea, now said to be the foundation stone of the patented system, appeared (if it ever did appear) in 1909, constituted “a radical change of base,” and is now represented in unlawful claims. National, etc., Co. v. Telefunken, etc., Co. (D. C.) 209 Fed. 856.
Further, it is plain from the known Brant Rock practice and experiments, plus the paper history aforesaid, that what Mr. Fessenden had thought out in 1907 (not before), and the reason for filing application, is correctly described in the opinion of Buffington, J., and now that the theory of validity .then successful is abandoned by those who urged it, no other meaning can be ascribed to the language of the patent consistently with the very facts that overturn the original contention.
It is therefore concluded that Fessenden never patented the method
But we also conclude that he never intended to patent, or supposed he had patented, the method of appellants’ argument; on the contrary, Fessenden’s method depended for vitality on that physiological selectivity which has been abandoned in the face of facts put in evidence for the first time in this case.
The claims being invalid, the decree below is affirmed, with costs.
Or “spark frequency” or “wave train frequency.”
The definite wave frequency of the claims may be disregarded; by uncon-tradieted evidence, any given circuit arrangement produces waves both fixed, regular, and predetermined.
These points are fully elaborated in the opinion of Mayer, J. The evidence thereon, here first adduced, renders the result reached in 208 Fed. impossible, by the reasoning there used.
It is not thought necessary to prolong the matter by consideration of the De Forest methods, especially at Galilee, N. J., nor to consider whether infringement can result from use of the quenched gap, because (and only because) decision is not to be rested on these matters.