Victor Talking Mach. Co. v. Starr Piano Co.Victor Talking Mach. Co. v. Starr Piano Co.
(after stating the facts as above).
“In practice in the production of a record a thin metal plate may be employed upon which is evenly distributed a coating or layer of semiplastic material or partly hardened varnish, or other suitable material. * * *
“I have herein referred briefly to the class of machine to which my invention is particularly applicable, so that the cutting operations may be understood, but, as the cutting tool alone is the subject of my present invention, I have not deemed it necessary to herein illustrate, or further describe, the construction of machine to which it may be applied. * * *
“The object of my presеnt invention is to provide a cutting tool for cutting grooves in wax or other suitable material for recording sound waves. * * *»
The only suggestion in the original specification of a wax matrix capable of direct reproduction is in the following:
“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. This feature, however, forms no part of my present invention herein described.”
A wax matrix for reproduction was not only not claimed as an invention, but manifestly the process first described referred to the sort of process already in use by Berliner carried out with an improved kind оf tool. In the Berliner process a metal plate was coated with lampblack or other material on which was traced a laterally undulatory record to expose the surface of the disk, which was then etched to form the record groove. Even though cutting out a wax tablet was contemplated, the reference was incidental, and was not claimed as an invention even when the divisional application was filed in 1904. The claims of 1904 related to the shape of the laterally formed groove. Even then Johnson apparently regarded everything else as old.
'Difficulties had been encountered in making satisfactory records by the etching process of Berliner, and in December, 1897, Johnson was employed by the Bеrliner Company to devise a “new system of taking gramophone records and making matrices” that would “give * * * better results.” Nafey worked for Johnson in 1898, and left about September of that year. He was succeeded by Rhinehart, who was asked whether he said to a man named Pancoast that Johnson’s apparatus was a failure before Rhinehart came. To this he repliеd:
“Well I may have said it looked like a failure, or something like that. A. man would say offhand, you know, when a man is on his oath and is supposed to tell the truth, that he will tell things as straight as he can. If you are just talking to a man ordinarily, you are not so particular whether it is absolutely straight or not. It is more like a story.”
Now, whatever preliminary steps Johnson may have made, it was not until 1900, just before Turner сame to England, that the process was completed. As Royal, the secretary of the Victor Talking Machine Company, said in his affidavit in 1901: “We never used the first process purchased in 1898.” To be sure, Royal testified at the trial of the
“a number of copies of an original record characterized by laterаl undulations of substantially uniform depth. Heretofore records of this character, generally known as ‘gramophone records,’ have been produced by first tracing the lateral undulations or zigzags in a fatty (ipky) film that protects an etching surface, then etching this tracing into the material to form a groove, then running a blunt stylus through this groove to smooth the ragged etched surface, and finally electroplating this touched-up surface and pressing the matrix so formed into a suitable material to form the commercial record. The etching process, for reasons unnecessary to state, causes considerable departure or deviations, so that the etched groove is far from being a correct representation of the path of the recording stylus. The deformations from this cause are still further exaggerated by the use of the smoothing stylus. I avoid these objections by producing in the first instance a fully finished original record whose grooves are of the final depth required, slight, but appreciable, thus doing away with the necessity for etching and the subsequent smoothing made necessary thereby. The original reсords made by this process are electroplated, and the electroplate matrix used as a die in the ordinary manner.
“In carrying out my invention I employ a disk or tablet, of suitable recording material (as wax or wax-like composition, preferably rendered sufficiently hard, as by an admixture of rosin, to withstand the treatment employed in giving it an electrical conducting surface). Upon the surface of this tablet I then form by the use of a sound-recording machine in a well-known manner a spiral groove of practical!y uniform depth that contains lateral sinuosities or irregularities corresponding to or representing the sound waves recorded. This cutting or engraving of a record groove by the lateral movement of the stylus differs from thе operation of the well-known graphophone system in that the resistance offered the stylus of a gramophone in cutting downward to produce the vertical irregularities characteristic of that system varies practically as the cube of the length of the vibrations of the diaphragm and stylus, whereas in producing any original records the resistance encountered by recording stylus is exactly equal to the length of the vibrations. On account of this difference in principle I am enabled to obtain more accurate, and therefore better, records of the original sounds. The original record so formed is an exact copy of the record to be used for reproducing. It is a complete and finished record, its groоves being of a slight yet appreciable depth, and no deepening or retouching by an etching fluid or in any other manner is required. * * * ”
The specification (page 2, line 50) of the patent in suit states:
“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.”
It was contended by complainant’s counsel that Jones did not intend to employ a cutting out process from a wax record because the word “cutting” was injected into his specification two or three years after the original application was filed in the Patent Office. He did, however, use the word “engraved,” and in his specification as originally filed said:
“I first make a plate or disk of hard wax, preferably beeswax hardened by the adding of a small quantity of rosin or pitch.
“This plate or disk is then placed upon an instrument commonly employed*64 ■for the purpose of recording sound vibrations, and a helical groove of even depth containing sinuosities representing sound waves produced by the movement of the diaphragm and stylus is engraved upon the plate or disk.”
We think it evident that this was a cutting-out process within the meaning of the art and the words used in die Johnson specification and claims.
The Jones patent seems to disclose the same process as the patent in suit and to include the process for making a sound record cut out оf a wax tablet described in claims 6 and 8 in issue. Indeed, Johnson himself admitted in a former litigation that he could see no difference between the Jones process and his. Judge Mayer held in American Graphophone Co. v. Emerson Phonograph Co. (D. C)
It is a significant fact that Johnson controlled the Universal Talking Machine Manufacturing Company, which was the defendant in the suit of American Graphophone Co. v. Universal Talking Machine Manufacturing Co.,
In the Edison British patent to Couraud, No. 15,206, 1891, the specification says, at page 4:
“The recording surface of the phonogram blank is ordinarily made of wax or wax-like material, and it might be supposed that a steel tool of the best quality would be satisfactory for employment in connection with such а comparatively soft substance. It has, however, been found that such tools are liable to become rough. This is partly due to the chemical action of acids or other substances present in the wax or wax-like composition, of which the phonogram blank is made, and partly to the dulling and roughening action of the fine particles of silica or other hard mаterial which get accidentally mixed! with the wax during its manufacture into a blank, or which lodge on the surface of the blank itself. After many trials, it has been discovered that sapphires and similar jewels act in the most effective manner on the wax or wax-like phonogram blank, since the acids thereof do not attack them; they do not rustand they are able to withstand the dulling actiоn of the hard particles of silica or other substances.
“A jewel-cutting tool suitable for the recorder may he in the shape of a cylinder, the outer end being hollowed out; this leaving a curved sharp edge for cutting the surface of the blank. This particular form is, however, not essential. It is mounted in a socket or sleeve at one end of a pivoted lever, the оpposite end of which is connected to the diaphragm. * * *
*65 “The recorders hitherto used are moved by the diaphragm toward and away from the surface of the blank. An improved form of recorder, in which the recording point moves laterally in a succession of minute arcs, has, however, been devised.”
The specification further says, at page 11:
“Vibrations are more truly recorded in this manner than by indenting the blank in thе usual way; the reproduced sounds being accordingly improved.”
The foregoing patent clearly covers cutting from a wax tablet. The Bell and Tainter patent, No. 341,214, granted May 4, 1886, also seems to have disclosed lateral cutting. The specification reads (page, 1, line 16):
“The invention consists thirdly in cutting or engraving the record in the form of a groove with sloping walls, the sound waves being represented by elevations and depressions at the bottom of the groove or otherwise. The advantage of this form of record is that it forms an efficient guide to the reproducing style.” .
The Volta article describing the work of Bell and Tainter, which became public in 1896, clearly shows that they were familiar with lateral cutting. Indeed, the closeness of the refеrence of the Bell and Tainter patent to the patent in suit is further indicated by the statement of Bell and Tainter, at page 2, line 4, of their patent, that:
“The invention consists, fifthly, in reproducing directly from the wax record. It is found that such record has sufficient strength to withstand the rubbing action of the reproducing style, so that a considerable number of reproductions can be obtаined from it. The smoothness of the wax gives it a great advantage in this regard. So far as we are aware, no one has reproduced sound from a wax record by rubbing a style or reproducer over it.”
In view of the foregoing language and general scope of the Bell and Tainter patent, we think it reasonable to infer, as Judge Beamed Hand did in the court below, that this court in the case of American Graphophone Co. v. Universal Talking Machine Co., supra, sustained the Jones patent over the Bell and Tainter'patent because of the novelty and usefulness of the combination of the former, and not because any single element thereof was patentable.
Johnson admitted in his examination that the particular differenсe between the tool described in Figures 5 and 6 of the Bell and Tainter patent, No. 341,214, is that the Johnson tool had sharper lateral edges. The most that can be said of the Johnson patent in suit is that it disclosed a method' of cutting out a lateral undulatory groove of substantially constant depth by an improved form of stylus. Everything except the improved tool which Eis specification discloses seems to have been old, and the improved tool was apparently a matter of workmanship, and at any rate is not an element in the claims in suit.
The master record in disk form, with a spiral laterally undulating groove of uniform depth, cut in wax, which plaintiff claims as his invention, was directly foreshadowed by Bell and Tainter, Gouraud, and Jpnes. Nothing remained but work for skilled аrtisans in order to fabricate a satisfactory sound record. Nothing was achieved worthy of a patent in producing the Johnson matrix.
The plaintiff seeks to save the Johnson patent by the large commer
The decree is affirmed, with costs.