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records of the respective patentees. Further description of the records, however, is not necessary, as we shall have with them but incidental concern.
The records being made, the next step is the reproduction of the sounds which they record. This is done by adjusting to the line or groove inscribed upon the records a point or stylus attached to a diaphragm, which, being vibrated by the indentations or sinuosities of the groove, reproduces the sounds that made them. In the prior art the reproducing-stylus and sound-record are brought in operating relation to each other in two ways. The sound-record was mechanically conveyed across the reproducing-stylus, or the reproducer and its stylus were mechanically conveyed across the record. By one or the other of these means the stylus was kept in engagement with the record and accommodated to the shifting positions of its operative portions. In the patent in suit such independent means are dispensed with. The stylus is made to engage with the grooves in the record-tablet, is vibrated laterally by its undulations, and guided or propelled at the same time with its diaphragm attachment across the face of the tablet, the successive portions of the groove reproducing the sound-waves, which are transmitted to the air. The soundrecords are made of hard, indestructible material and, as stated in one of respondent's affidavits, the groove impressed thereinserves the twofold purpose of vibrating the stylus and producing the necessary vibrations in the diaphragm of the sound-box, and also of automatically pro pelling the stylus in the groove across the surface of the record without a feed-screw or other mechanism independent of the record itself.
The method of doing that is the subject-matter of claim 5, and the means for performing the method is the subject-matter of claim 35. They are, respectively, as follows:
No. 5, the method of reproducing sounds from a record of the same, which consists in vibrating a stylus and propelling the same along the record, substantially as described. No. 35 is a sound-producing apparatus, consisting of a traveling tablet having a sound-record formed thereon and a reproducingstylus shaped for engagement with said record and free to be vibrated and propelled by the same, substantially as described.
We may now understandingly consider the new matter which was relied on in the courts below. The first in importance of these is that the patent in suit is for the same invention of certain foreign patents and expired with them. These patents consist of three French patents to . Emil Berliner, respectively dated November 8, 1887, May 15, 1888, and July 19, 1890; German patents to Berliner dated November 8, 1887, May 16, 1888, and November 20, 1889; a Canadian patent of February 11, 1893, assigned by W. Suess to Berliner; English patents of November 8, 1887, and May 15, 1888. These patents are presented in an affidavit by the leading counsel for petitioner, accompanied by such comparisons of them with the patent in suit as established, it is contended, the identity of their inventions with its invention, and made applicable and controlling section 4887 of the Revised Statutes, which is as follows:
Sec. 4887. No person shall be debarred from receiving a patent for his invention or discovery, nor shall any patent be declared Invalid, by reason of its having been first patented or caused to be patented in a foreign country, unless the same has been introduced into public use in the United States for more than two years prior to the application. But every patent granted for an invention which has been previously patented in a foreign country shall be so limited as to expire at the same time with the foreign patent, or, if there be more than one, at the same time with the one having the shortest term, and in no case shall it be in force more than seventeen years.
The affidavits describe not only the reproducer of the patent in suit but also the recorder, and give details of the construction of both, and petitioner, in its briefs, elaborately traces the development of Berliner's ideas in comparison with the prior art through three stages, each of which, it is contendedis represented by domestic and foreign patents, obtained or applied for, respectively, in 1887, 1888 and 1889–1892.
Each stage, it is insisted, is claimed as an improvement upon the preceding stage, and all of them are but improvements upon the prior art. Berliner did not employ, it is said, any new principles in the reproduction of sound from a sound-recordthe difference in the sound reproducing machines employed by him and those of the prior art consisting of modifications of details of construction.
And it is further contended that an analysis of the patent in suit demonstratesthat the improvements described and claimed related first, to the recording of sound; and, second, to the reproducing of sound.
It is impossible, counsel sayto seriously contend that the essence of the improvements consist rather in the reproduction of sound than in the recording of sound.
It is nevertheless argued that the lower courts so regarded the patent in suit, and by that error adjudged that the foreign patents did not embody Berliner's invention, and that, therefore, the patent in suit did not expire with them. Indeed, it is urged that “in the face” of the expressed and positive declaration of the patentee as to what are the features of his invention, the courts below not only held that the patent included other features not enumerated by Berliner, but went even further, and held that the features which Berliner did enumerate as the features of bis invention are not the principal features of his invention, but are mere minor details.
This is a misapprehension of the view of the courts below. They confine themselves, as it was proper to do, to the claims in suit and to the invention exhibited in them, and in considering the relation of the patent in suit with foreign patents they distinguished between what the circuit court denominates the "broad and basic invention" covered by those claims and the “minor part" shown in the foreign patents. Petitioner attempts to make the recording and reproduction of sounds essential parts of one invention, of which the claims are but parts. The purpose is to identify the invention of the patent with every one of the foreign patents and bring the case under what is conceived to be the doctrine of Siemens v. Sellers, (123 U. S., 276.)
That case, it is contended, precludes a distinction between the claims of a patent into basic and not basic, principal or subordinate, and establishes that all the claims of a home patent must be so limited as to expire with the expiration of a foreign patent, or if there be more than one prior foreign patent, with the expiration of the one having the shortest term. Upon the expiration of a patent, it is argued, all of its claims expire, since, as this Court said in Siemens v. Sellers, as it is contendeda patept cannot be considered as running partly to one date and partly to an. other, for this would be productive of endless confusion. In other words, a patent cannot expire in parcels, It cannot have a plurality of terms.
Therefore it is contended that it is the patent, and not the separate claims thereof, which are by the statute limited to expire with the foreign patent. Siemens v. Sellers is cited for this doctrine, as we have said, and also the following cases: Western Electric Co. v. Citizens' Telegraph Co., (106 Fed., 215;) Sawyer v. Spindle Co., (133 Fed., 238, affirmed in 143 Fed., 976;) Thomson & Houston Co. v. McLean, (153 Fed., 883.)
Siemens v. Sellers is especially relied upon, and whatever there is in the other cases that support the contention of petitioner is based on that case. In Siemens v. Sellers the patent passed upon was for an improved regenerator-furnace, so called, and the question presented was whether it was identical with that described in an expired English patent. The Court said:
We have carefully compared the two patents, the English and American, and can see no essential difference between them. They describe the same furnace in all essential particulars. The English specification is more detailed, and the drawings are more minute and full; but the same thing is described in both. There is only one claim in the English patent, it is true. But that claim, under the English patent system, entitled the patentees to their entire invention, and is at least as broad and comprehensive as all four claims in the American patent.
It will be observed, therefore, that there was no distinction in the subject matter of the claims. There was a difference in the number of the claims arising from the difference in the patent systems, but the claims were coextensive in substance and in invention. There was no question, therefore, of a difference in claims covering different inventions, but such contingency, it is contended, is embraced in the following passage:
It is contended by the counsel of the complainants that the American patent contains improvements which are not exhibited in the English patent. But if this were so, it would not help the complainants. The principal invention is in both; and if the American patent contains additional improvements, this fact cannot save the patent from the operation of the-law which is invoked, if it is subject to that law at all. A patent cannot be exempt from the operation of the law by adding some new improvements to the invention; and cannot be con. strued as running partly from one date and partly from another. This would be productive of endless confusion.
This passage must be construed by what precedes it. It was said that there was no essential difference between the patents. “They described the same functions in all essential particulars," is the language used. “The principal invention,” therefore, was "the same in both," and the improvements, which it was asserted the American patent contained, did not destroy its essence or its identity with the English patent, necessarily, therefore, did not save it “from the operation of the law.” And the court meant no more than that. It was not said that a patentable improvement could not be made which could be secured by a patent which would endure beyond the expiration of a prior foreign patent for that which was improved. Such a ruling would contravene the right given by the statute. Section 4886 provides that, any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement thereof
may obtain a patent therefor. The improvement would be the invention and would endure for the period given to it by law. Besides, a patent may embrace more than one invention. (Steinmetz v. Allen, C. D., 1904, 703; 109 O. G., 549; 192 U. S., 543.) A process and an apparatus by which it is performed are distinct things. They may be found in one patent; they may be made the subject of different patents. So may other dependent and related inventions. If patented separately a foreign patent for either would not affect the other. Why would such effect follow if they are embraced in the same patent? What policy of the law would be subserved by it! The purpose of section 4887 of the Revised Statutes is very clear. It is that whenever an invention is made free to the public of a foreign country it shall be free in this. The statute has no other purpose. It is not intended to confound rights and to make one invention free because another is made so. This will even more distinctly appear in case of a patent for a combination, such as claim 35 is of the patent in suit.
A combination is a union of elements, which may be partly old and partly new, or wholly old or wholly new. But whether new or old, the combination is a means-an invention-distinct from them.
They, if new, may be inventions and the proper subjects of patents, or they may be covered by claims in the same patent with the combination.
But whether put in the same patent with the combination or made the subjects of separate patents, they are not identical with the combination. To become that they must be united under the same coöperative law. Certainly, one element it not the combination nor in any proper sense can it be regarded as a substantive part of the invention represented by the combination, and it can make no difference whether the element was always free or becomes free by the expiration of a prior patent, foreign or domestic. In making a combination an inventor has the whole field of mechanics to draw from. This view is in accordance with the principles of the patent laws. It is in accordance with the policy of section 4887 of the Revised Statutes, which is urged against it. That policy is, as we have seen, that an American patent is not precluded by a foreign patent for the same invention, but if a foreign patent be granted, an American patent is granted upon the condition that the invention shall be free to the American people whenever, by reason of the expiration of the foreign patent, it becomes free to the people abroad. (Bate Refrigerating Co. v. Sulzberger, C. D., 1895, 233; 70 O. G., 1633; 157 U. S., 1, 36.)
And all of the provisions of the statutes are accommodated. Each invention is given the full period of seventeen years, which the statute prescribes for it. If limited at all, it can only be by a prior foreign patent identical with it. Nor can confusion result. Why should it? It does not result from analogous applications of the patent laws. Claims are independent inventions. One may be infringed, others not, and the redress of the patentee is limited to the injury he suffers, not by the abstract rights which have been granted him in other claims. One claim may be valid, all the rest invalid; invalid for the want of some essential patentable attribute. But what is good remains and is unaffected by its illegal associates. In such cases the patent does not stand or fall as a unity. If claims may be separable as in the case of infringement of some and not of others; if claims can be separable, though some are invalid, may they not be separable when some of them have expired? Certainly confusion cannot arise in one case more than in the other. Confusion might result in such circumstances as were presented in Siemens v.
. Sec. 4884. Every patent shall contain a short title or description of the Invention or discovery, correctly indicating its nature and design, and a grant to the patentee, his heirs or assigns, for the term of seventeen years, of the exclusive right to make, use, and vend the invention or discovery throughout the United States, and the Territories thereof, referring to the specification for the particulars thereof. A copy of the specification and drawings shall be annexed to the patent and be a part thereot.