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It is next contended that Hernandez, as a subject of Peru, was entitled to a statutory copyright in his own right, because, as it is further contended, Peru belongs to the Montevideo International Union. This contention is based on the words of section 18, supra, which gives the right of copyright to a citizen or subject of a foreign

a state or nation when such state or nation18 a party to an International agreement which provides for reciprocity in the granting of copyright, by the terms of which agreement the United States of America may, at its pleasure, become a party to such agreement.

If this were all there were in the statute, the contention of the plaintiff might have some foundation. The statute, however, provides that the existence of such conditionshall be determined by the President of the United States by proclamation, made from time to time, as the purposes of the act may require.

It is insisted, however, that this provision is directory and a right is conferred independent of the action of the President, his proclamation being only a convenient mode of proving the fact. We cannot concur in this view, nor do the cases cited by plaintiff sustain it. In Morrell v. Jones, (106 U. S., 466;) Campbell v. United States (107 U. S., 407;) Williamson v. United States, (207 U. S., 425,) this Court decided that where the Secretary of the Treasury or Secretary of the Interior is authorized to make regulations in aid of the law, he cannot make regulations which defeat the law. In Buttfield v. Stranahan (192 U. S., 470) a regulation of the Secretary of the Treasury fixed the primary standard of imported tea, and was sustained as an “executive duty to effectuate the legislative policy declared in the statute,"

It is admitted that the decision of the State Department is adverse to the contention, and, it is asserted by defendant and not denied by plaintiff, that the Librarian of Congress has always construed the statutes as denying to citizens of Peru copyright protection. We think, besides, the statute is clear and makes the President's proclamation a condition of the right. And there was reason for it. The statute contemplated a reciprocity of rights, and what officer is better able to determine the conditions upon which they might depend than the President !

On the record, we think there was no error in directing a verdict on the opening statement of counsel. We agree, however, with plaintiff that it is better to let a case be developed by evidence. In Hoffman House v, Foote (172 N. Y., 248) it was pertinently said:

The practice of disposing of cases upon the mere opening of counsel is gen. erally a very unsafe method of deciding controversies where there is or was anything to decide. Judgment affirmed.

21890-H. Doc. 124, 61-2- -35

[Supreme Court of the United States.)

LEEDS & CATLIN COMPANY v. VICTOR TALKING MACHINE COMPANY

AND UNITED STATES GRAMOPHONE COMPANY.

Decided April 19, 1909.

144 0. G., 1089.

1. CLAIMS-FUNCTION OF MACHINE.

A claim for a sound-producing apparatus consisting of a traveling tablet having a sound-record formed thereon and a reproducing-stylus shaped for engagement with said record and free to be vibrated and propelled by the same is not for the function of the machine, but sets forth a valid combina.

tion. 2. DURATION OF PATENT-LIMITATION BY FOREIGN PATENT-PROCESS AND APPA

BATUS. A claim for a process and a claim for an apparatus by which the process 18 performed are distinct Inventions, and the United States patent for one does not expire, under section 4887, Revised Statutes, by reason of the expi.

ration of a foreign patent for the other. 8. SAME-SAME-COMBINATION AND ELEMENTS THEREOF.

A combination of elements is an invention distinct from one of the elements thereof, and a patent containing claims for both does not expire, as to the combination claim, by reason of the expiration of a foreign patent

covering one of the elements. 4. SAME-SAME-FAILURE TO PAY TAXES.

Under section 4887, Revised Statutes, a United States patent is not IlmIted in its term by reason of the expiration of a prior Canadian patent before the end of the term for which it was granted by tallure to pay the annual taxes thereon. (Pohl v. Anchor Brewing Co., C. D., 1890, 276; 61 0. G., 156; 134 U. S., 381.)

STATEMENT OF THE CASE.

This case is here on certiorari to an interlocutory decree of injunction restraining the petitioner, Leeds & Catlin Company, from manufacturing, using or selling sound-reproducing apparatus or devices embodied in claim No. 35 of Letters Patent No. 534,543, issued to Emil Berliner, bearing date 19th of February, 1895, and also from manufacturing, using or selling or in any way disposing of apparatus or devices which embody the method specified in claim No. 5 of the same patent. These claims will be given hereafter.

The bill is in the usual form and alleges the issuing of the patent and the existence of the necessary conditions thereof under the laws, of the United States. It also alleges the transfer of title to the plaintiffs in the suit and the infringement of claims 5, 32 and 35 by the defendant, petitioner herein.

Petitioner answered, denying some of the allegations of the bill, and of others denying that it had knowledge or information sufficient to form a belief. Explicitly denied infringement, and alleged antici.

pation of the invention described in the patent by a great number of patents and publications in this country and other countries, an enumeration of which was made. And hence it is alleged that, in view of the state of the art, Berliner was not the first inventor or discoverer of any material or substantial part of the alleged improvement and invention described or claimed.

The answer further alleged that said Letters Patent did not describe or specify or claim any subject matter patentable under the statutes of the United States, and are and always have been null and void. Abandonment is alleged and a two years' use of the invention in this country before the application for the patent, that the invention and improvement were known and used by others and were in public use and on sale in this country by divers persons, a list of whose names is given.

It is alleged that before the invention was patented in the United States the same was patented, or caused to be patented, by Emil Berliner in foreign countries, and that by reason whereof, under section 4887 of the Revised Statutes of the United States, the Letters Patent in suit were limited to expire at the same time with said foreign patents and each of them. The numbers and dates of the foreign patents are given-two in Great Britain, three in France, three in Germany and one in Canada. They will be specifically referred to hereafter. And it is alleged that in consequence thereof the said Letters Patent of the United States have long since expired and plaintiff is not entitled to any relief by injunction or other relief in equity, that a court of equity has no jurisdiction of the suit, and that plaintiff has an adequate remedy at law. A replication was filed to the answer.

Upon the bill and certain supporting affidavits an order to show cause against a preliminary injunction was issued, which coming on to be heard upon such affidavits, and other affidavits and exhibits, a preliminary injunction was granted. (146 Fed., 534.) It was af- . firmed by the circuit court of appeals. (148 Fed., 1022.)

Mr. Louis Hicks for the petitioner.
Ur. Horace Pettit for the respondents.

Mr. Justice McKenna delivered the opinion of the Court.

The motion for preliminary injunction was made upon affidavits. Those of respondent (complainant in the circuit court) described the invention and the machine made in accordance therewith, averred the practical identity of petitioner's machine therewith, and set forth the record in the case of the Victor Machine Co. and the United States Gramophone Co. v. T'he American Graphophone Co., instituted in the Circuit Court for the Southern District of New York. The affidavits averred that the suit was pending and awaiting decision when this suit was brought, and was subsequently decided; that by the deri

sion, claims 5 and 35 of the patent in suit were held valid and infringed by the talking-machine of the defendants, and that an injunction was ordered. (140 Fed., 860.) And it was stated that the circuit court of appeals, though not concurring with the circuit court in all of its reasoning, affirmed the decree.

The affidavits of petitioner (the defendant in the courts below) set forth the defenses which were made in the case just referred to, a summary of the proofs introduced to sustain the defense, and submitted new matter. The affidavits also contained a description of the patent in suit and what was considered to be its basic invention, averred its identity with certain foreign patents which were not in evidence in the other suit. The affidavits also undertook to meet and refute the charge of infringement. The affidavits were very long and circumstantial, and had attached to them copies of the foreign and domestic patents relied on, translations of foreign laws, copies of publications and certain testimony. Such parts of these exhibits as we deem relevant will be referred to hereafter.

Upon this body of proof, formidable.even in its quantity, and having no other elucidation than the arguments of counsel and some mechanical exhibits, presenting grave questions of fact, we are asked by petitioner to go beyond the action of the lower courts, and not only reverse them as to a preliminary injunction but decide the case. If we should yield to this invocation and attempt a final decision it would be difficult to say whether it would be more unjust to petitioner or to respondent.

The circuit court felt a like embarrassment, as will be observed from its opinion. The court did not pass on the defense of infringe. ment, and said that, except as to one patent, the petitioner had failed to introduce any new matter which would have led the courts in the other case, if such matter had been before them, to have reached a different conclusion. And, speaking of the patents referred to, the Circuit Judge said:

But even if I am mistaken in this view, and if the explration of the Suess Canadian patent is a complete defense, or if a decision of the questions raised as to the character and scope of the various patents now Introduced for the first time should be postponed until final hearing, yet I am constrained to grant the injunction in order to permit an appeal and a determination of the questions at the earliest possible moment.

And the lower courts also reserved to the merits the consideration of the defense that claims 5 and 35 were invalid because they were the functions of machines, resting those defenses, so far as the preliminary injunction was concerned, upon the adjudication in the prior suit. We shall do the same, remarking, however, that the contention, if it has any strength as to claim 5, seems to us untenable as to claim 35. We think the latter is a valid combination, consisting of the elements, (1) a traveling tablet having a sound-record formed thereon; (2) a reproducing-stylus, shaped for engagement with the record, and free to be vibrated and propelled by it. It is, therefore, a true mechanical device, producing by the coöperation of its constituents the result specified and in the manner specified.

In passing on the other foreign patents the circuit court considered that the prior adjudications fortified the presumption of the validity of the patent in suit, and established its scope, and that the new matter introduced by petitioner did not repel the presumption or limit the extent of the patent. That the lower courts properly regarded the prior adjudications as a ground of preliminary injunction is established by the cases cited in Walker on Patents, section 665 et seq. See also Robinson on Patents, section 117 et seq. And in that aspect the question must be considered, and so considering it we may pass the defenses of anticipation, whether complete or partial, and the defense of infringement. These are, we have already said, questions of fact which we are not inclined to pass upon unaided by the judgments of the lower courts made after a hearing on the merits.

The patent in suit and the patents which, it is contended, anticipate it or limit its extent or duration are for methods or devices whereby sound undulations trace or inscribe themselves upon a solid material, and are by suitable devices made to reproduce themselves and the sounds which made them. One of the questions in the case is, as we have seen, the relation of the patent in suit to the prior art. It is contended by the respondent that Berliner, (he was the patentee of the patent in suit,) improved the prior art, not only in the methods of recording and reproducing sounds, but in the devices by which the methods are accomplished.

In the old method the sound-record was produced by vertical vibrations, either indenting a pliable material, by and in accordance with the sound-waves along a helical or spiral line, as in the Edison patents, or by like vibrations engraving a suitable material, by and in accordance with the sound-waves, as in the Bell and Tainter patent. By both of these methods there was produced a record consisting of a groove of varying depth, that is, containing elevations and depressions corresponding to the sound-waves which produced them. In the Berliner patents the vibrations are made to inscribe a laterally-undulating line in the general direction of a spiral. The line, therefore, is of even depth, the inequalities or sinuosities produced by the sound-waves being upon its sides. By this method there is produced a sound-record tablet, consisting of a flat disk of hard resisting material, having in its surface inscribed a spiral groove of practically even depth, but undulating laterally in accordance with the sound-waves. The patent in suit describes and specifies the ways of making such record-tablet, as do the prior patents the sound

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