# American Bell Tel. Co. v. National Tel. Mfg. Co.

> U.S. Circuit Court for the District of Massachusetts · June 24, 1901 · 109 F. 976

URL: https://www.frixlaw.com/law-library/cases/8744825

## Case

- **Full name:** AMERICAN BELL TEL. CO. v. NATIONAL TEL. MFG. CO. SAME v. CENTURY TEL. CO.
- **Court:** U.S. Circuit Court for the District of Massachusetts
- **Decided:** June 24, 1901
- **Citations:** 109 F. 976; 1901 U.S. App. LEXIS 4827
- **Precedential status:** Published
- **Opinion:** Opinion of the court by Brown
- **Judges:** Brown
- **Cited by:** 7 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/8744825

## Opinion text

BROWN, District Judge.
The decree in these cases must be for the defendants.
A.
I find the Berliner patent invalid:
1. Because, at the date of the application, June 4, 1877, Berliner had not made the invention covered by the patent issued to the American Bell Telephone Company on November 17, 1891. Berliner’s application says, of the instruments shown in the drawing of the patent: “These simple instruments will reproduce any musical sound uttered in the neighborhood of one of them; but for the reproduction of special sound, such as speech, they are not adapted.” A clear statement of the reasons is given, the statement is repeated, and >it is said also of sound waves: “Nothing of the nature of each wave and the shape of their curves is recorded.” He states that he accomplishes this by apparatus operating to make and break the circuit. His model and drawings,- as well as the text of his application, show that he intended to transmit speech by the erroneous method of interrupting the contact of electrodes and breaking the current. This document stands, in this case, as evidence on the question of invention, exactly as it was written. It is conclusive evidence that Berliner had not invented, and did not intend to apply for a patent for, a constant-contact speech transmitter. The complainant’s attempt to show that statements contained in this document were inserted through the mistake of a solicitor’s clerk is a failure. I am convinced that this is not true. I find, as a matter of fact, that Berliner did not, before June 4, 1877, succeed in transmitting speech, l)ut, on the contrary, was convinced by his experiments that speech could not be transmitted by the apparatus of the patent in suit. I And also that he did not at that date intend to describe or claim the apparatus as a speech transmitter. In view of the original application, the complainant’s case cannot be established without proof of successful experiments by Berliner. The invention set forth in the patent lay in experiment. In inventions of this class, the true date of conception is the date at which the experiment succeeds. The complainant concedes that Berliner did not make new apparatus, but reproduced substantially the old Reiss apparatus. Proof that the Reiss apparatus, or Berliner’s apparatus, or the Morse key, is operative in the hands of experts, does not establish invention by Berliner. He is not entitled, as an inventor of apparatus, to claim whatever may be found to be within its capacity, because his sole claim to invention is based upon an alleged discovery of a new capacity in old apnaratus. If he did not discover this, nothing new remains that he did discover or invent. He did not “embody” an invention in appa *979 ratus unless he succeeded in making the old apparatus perform Bell’s process upon the current. The complainant has not proved that Berliner’s apparatus will transmit speech under the conditions existing at Berliner’s experiments. Berliner’s caveat of April 14, 1877, does not establish invention, and does not count as a reduction to practice. Tt proves a project. Later caveats, the application, the record in the patent office, and other evidence show the failure and abandonment of this project. Complainant’s experts agree that what was stated in Berliner’s caveat of April 14, 1877, would at that date have been deemed by scientific men impracticable, and 'that it could not have been predicted upon scientific or theoretical grounds. In the Telephone Cases, 120 U. S. 545 , 8 Sup. Ct. 778, 31 L. Ed. 863 , the supreme court said of an experimenter: “It was not until after Bell’s success that he found out how to use the Reiss instrument so as to make it transmit speech. Bell taught him what to do to accomplish that purpose.” Also it was said: “It was left for Bell to discover that the failure [of Reiss] was due not to workmanship, but to the principle which was adopted as the basis of what had to be done.” If it was obvious to Berliner, or to persons skilled in the art, upon a reading of Bell’s patent, that the Reiss apparatus could perform Bell’s process, then the case fails as to invention. If what Berliner wrote in his caveat was obvious without experiment, Bell “taught him what to do to accomplish that purpose.” The complainant avoids the defendants’ point that Berliner made no invention in using Reiss’ old machine by Bell’s old method by evidence that it was not known that such changes as could be effected between solid electrodes would vary the current sufficiently or in the desired proportion. This required discovery through experiment. The complainant’s contention that its case can be established irrespective of experimental results is therefore untenable. To claim that Berliner made an invention because scientific men would have deemed it impracticable to practice Bell’s method with solid electrodes, and because it was wholly unknown that the current could thus be made to vary in the proper proportions, and also in the same case to claim that Berliner, in writing his caveat, must, as an inventor, have perceived that his project was necessarily true, and that experimental verification was not necessary, is highly inconsistent. The complainant’s case as to invention must rest upon the ground that what was stated in the caveat was not obviously and necessarily true, that experimental verification was necessary, and that Berliner did verify his project by successful experiment, resulting in discovery of facts before unknown. The proof is strong to the contrary. It is largely documentary and contemporaneous, and is not met by the inconclusive, argumentative, and wholly unsupported oral testimony of Berliner, given years after the filing of the application. The absence of any corroboration from the numerous persons who are said to have witnessed Berliner’s experiments, and the failure to account for the nonproduction of witnesses, is a strong fact against the complainant.
2. Because the invention described in the patent is radically different from the invention described in the application. A comparison *980 of the two documents leaves no doubt on this question. The application expressly disclaims speech transmission by the instrument of. the patent, and claims as a speech transmitter a double-pin instrument, operating to make and break the contact of electrodes. The patent calls for constant contact of electrodes and an unbroken current; the application, for an interrupted contact and a broken current. The decision of the supreme court in the Telephone Cases shows the substantial difference between these methods of operating on the electric current. The original application, by changes purporting to be amendments, has been completely transformed jnto an application for a distinct invention. This transformation is of the most remarkable character, and was made after Edison’s carbon constant-contact speech transmitter was invented and described in a printed publication. Such amendment is illegal, even if Berliner had made the invention before June 4, 1877. The amendments made prior to 1880 cannot support the patent, as they did not introduce constant contact of electrodes. If they did, they are illegal, as introducing a different invention. A constant-contact speech transmitter is first sufficiently described and claimed, if at all, in the rewritten specification of 1880. The invention had then been in public use for more than two years, i. e. from June, 1878. There is no legal application to support this patent.
3. Because the invention was previously patented by Berliner. Berliner, in 1880, took out a patent which covered the speech transmitter of the. patent in suit, applied to its appropriate use in a “system,” i. e. with a receiver. Claim 4 of this patent is not in terms or in fact for a combination, since the transmitter is a system part or relative part, and it does not constitute a “combination,” in the sense in which that term is used in patent law, to put a system part into a system for which it is designed; to put a relative instrument into its intended relation, without invention in so doing. This is but application to appropriate use. The effect of claim 4 of the 1880 patent was to give a monopoly of this instrument, applied to its appropriate use, without additional invention in making this application. By granting the patent of 1880, the commissioner exhausted his power to issue a second patent, whereby the patentee could control all use of this instrument as a transmitter. Having been protected for 17 years in the use of this transmitter with one receiver, Berliner was not entitled to further protection for use with any and all receivers. I agree with the conclusion of Judge Carpénter on this point in U. S. v. American Bell Telephone Co. (C. C.) 65 Fed. 86 .
4. Because Edison was the prior inventor. Berliner’s amendments must bear date as of the date of filing. 4 August 8, 1877, is the earliest date of amendment affecting this controversy. Berliner’s amended application is anticipated by Edison’s application of July 20, 1877, and by the Philadelphia Press article of July 9, 1877. The burden of proof is upon the complainants to anticipate Edison. They cannot sustain it. Assuming Berliner’s application to date as of June 4, 1877, he is anticipated by Edison’s application of April 27, 187.7.. One form of apparatus therein described is substantially the Berliner apparatus, operating in the same way.
*981 B.
Claims 1 and 2 in suit are invalid because anticipated by Bell’s patent and Bell’s liquid transmitter. Bell was a prior inventor of a transmitter that operated upon a battery current by changes of an electrical contact. Its mode of operation was by constant, but variable, contact of electrodes. Variable pressure upon the diaphragm and variable pressure of one electrode upon another are invariable and necessary accompaniments of its operation. As Bell’s liquid transmitter has two aspects or -features invariably accompanying each other, and novel over the magneto instrument, either will serve for a name or description that will distinguish the liquid transmitter from the magneto transmitter. We may call the Bell liquid transmitter a “constant but variable contact transmitter,” or a “variable pressure transmitter,” or we may say that the mode of operation is by “variable contact” or by “variable pressure.” These names are interchangeable. They are of no value, however, in pointing out differences between the different types of constant-contact transmitters before us in this case, because they name only features common to all, and do not state a distinctive difference. The claims of the patent cover all transmitters having variable pressure between electrodes. They therefore seek to appropriate Bell’s invention under a new form of words. The claims, when read according to their natural signification, undoubtedly include Bell’s liquid transmitter, and are invalid for excessive breadth. They cannot be saved by making an arbitrary exception of Bell’s liquid transmitter as specific apparatus, because that would still leave Berliner claiming all other transmitters possessing Bell’s features of variable contact and variable pressure between electrodes, which are now public property. This is not a mere verbal criticism of the claims; for experts and counsel, by the use of language similar to that of the claims, credit to Berliner, and seek to cover by his patent, what was in fact the invention of Bell. Attributing to Berliner the invention of a mode of operation or process, to wit, “variable pressure,” and apparatus characterized by this mode of operation, they explain its novelty by ignoring Bell’s liquid transmitter, and by reverting to Reiss. They thus show a novelty over Reiss, to wit, the “variable pressure operation,” as distinguished from the make and break operation. In other words, they claim for Berliner a new “electrical mode of operation,” which is in fact Bell’s, and also a new mode of treating the circuit, i. e. varying without interrupting it, which is also Bell’s. This is accomplished with some degree of plausibility by using a new term, i. e. “variable pressure operation,” to signify an old thing, i. e. the varying' contact operation. When we start from Bell, as we must, in the search for novelty, and not from Reiss, as the complainant does, we find that the language of the claims, read in the light of the prior art, shows nothing novel over Bell.
O.
Claims 1 and 2 are anticipated by Edison. These claims are of excessive breadth, for the further reason 1hat they include various devices of- Edison, which, like Bell’s liquid transmitter, employ a *982 battery current, and a variable contact of electrodes, and variable pressure. Edison’s devices of February 9 and April 1, 1877, anticipate these claims. The complainant asserts that these transmitters differ essentially from Berliner’s, and therefore admits that Berliner has no right to include them; but nevertheless the broad, general language of the claims covers them. A limitation to solid electrodes does not save the claims. By claiming “variable pressure” of electrodes as a method or principle,' the complainant has attempted to monopolize a feature common to many constant-contact transmitters, and thus to discourage and hamper further invention in the same line of industry. The claims are plain. They cover all forms of variable contact transmitters before us in this case. I am of the opinion that they are void, and cannot be saved by the specification. These claims are now said by counsel to express accurately and happily Berliner’s real invention. They do, in fact, represent the substance of the complainant’s main argument. The complainant also claims for Berliner invention in the use of the minute force of a sound wave to vary pressure between electrodes, and invention in the discovery that accompanying variations of pressure were corresponding variations of current. This is in the Bell patent as well as in Bell’s liquid transmitter and in various devices of Edison. The complainant is certainly not entitled to claim as a novelty the utilization of minute forces, after the Bell patent ánd Bell’s liquid transmitter, and in view of the contention that Edison intended to compress a mass of plumbago thereby. Berliner borrowed his apparatus for “transmitting the impression of agitated air” bodily from Bell’s second patent. As variations of current are proportional to variations of pressure at tbe diaphragm in all transmitters, it is not remarkable that they are also proportional to variations of pressure at the place in the circuit where the change of contact occurs, and where the force exerted upon the diaphragm is expended upon the circuit. It is the principle of Bell’s magneto instrument and of his variable contact transmitter that the current shall vary proportionally to the pressure at the diaphragm. It is a principle of the variable resistance method that the resistance shah vary by pressure exerted upon the circuit, and proportionally thereto. In the liquid transmitter is the principle that the current shall vary proportionally to the pressure at the diaphragm, and also proportionally to the' pressure between electrodes, and also that, as pressure on the diaphragm and between electrodes is weakened, the current becomes less intense; as it is strengthened, more intense. This was also in Edison, before Berliner. We are not dealing with claims carelessly drawn by an ignorant inventor, but with the phraseology of experts framed more than two years after public use of the invention, with the intention of asserting that Berliner was the originator of very broad principles that control the practical art of telephony. Those principles are Bell’s.
D.
Claim 1 for a method is invalid. The patent discloses nothing patentable as an art, method, or mode of operation. The method *983 is “by causing the sound waves to vary the pressure,” “so as to sir eng then and weaken the contact.” Apparatus is required, i. e. electrodes in constant contact. The “causing” is accomplished by placing the apparatus where there are sound waves. This is not patentable as an art or method. Producing sound waves is no part of the method whereby existing sound waves are caused to vary pressure. The patent covers no art or skill required in keeping the; electrodes in constant contact. The patent stiows a screw by which this can he done. It appears that an equivalent means is in using a low tone of voice to avoid destroying the contact. This is not an art or method, or, if so, not that covered by tbis patent. If invention is required to keep the electrodes in constant contact, or to put transition resistance into the circuit, the patent is bad, since it leaves this to be found out by experiment. Producing« sound waves appropriate to particular forms of apparatus is not the method whereby existing sound waves are caused to vary pressure between electrodes, and should not be confused therewith. The force utilized and the process performed upon the current, i. e. causing undulations of a particular form, are both in Bell. The method of claim 1 is practiced solely by a machine, and is merely the modus operand! of a machine, and is not patentable a'S an abstraction apart from a machine. If there was involved a discovery of the value of minute variations of contact in changing a current, this led merely to the construction of apparatus, and not to a new art or method. Moreover, claim 1 is invalid by two years’ public use.
E.
Assuming that the specification discloses an invention, and that by limitation claim 2 can be saved, the patent nevertheless is limited to the structure therein described, and so limited that the defendants do not infringe. The patent does not disclose or suggest any material other than metal for the second electrode. Berliner’s experiments were solely with metallic electrodes. He did not, as a matter of fact, make any investigations in consequence of which he was entitled to assert a general truth concerning all solid electrodes. It is not proven that metallic electrodes are generally suitable for practical use in a speech transmitter. To save the patent by limiting it to the apparatus there shown would not avail the complainant. The defendants’ transmitters having carbon electrodes are, as apparatus, distinct inventions. The carbon electrode was the invention of Edison; it was not an equivalent for the metal electrode of Berliner. The complainant seeks to hold the defendants’ transmitters- as infringements by comparing them as embodiments of a principle, art, process, or method discovered or invented by Berliner. I am of the opinion that it has not succeeded. The variable pressure principle affords no basis for a distinction between Berliner’s device and three variable pressure constant-contact transmitters which preceded it, two having solid electrodes. This generalization, which covers the defendants, also covers so much of the prior art that the complainant is anticipated if it stands upon it. Distinctions between changes in inti *984 macy of contact and of area of contact, and changes of mass or molecular condition following pressure of electrodes in contact, are distinctions as to apparatus, not as to principles, and these distinctions are not satisfactorily established. The transmitters of Bell, Edison, and Berliner agree in this: that each is capable of producing electrical undulations similar in form to sound waves and of transmitting speech. Upon the evidence as it stands in this case, this must be assigned to the general feature which is common to all variations of physical contact. I do not think that anything more than distinctions in the kinds of contact has been shown. A patentee is entitled to take the position that, as an experimenter, he produced practical apparatus, or found that old apparatus could be applied to a novel and nonanalogous use. He may stand on his legal right to refuse to enter upon a discussion of the laws of nature or scientific principles involved, and say, “I claim, as a novel and useful thing, my apparatus. This apparatus exhibits my invention, and proves by example its character.” The complainant does not submit to have the invention compared with others as to its practical efficiency in the practical art. It undertakes to claim something very much broader than what.is exhibited in the apparatus of the patent. The patentee first takes the position that Berliner said, “I have found that, when electrodes are pressed together more or less by the minute pressure of sound waves, the current increases and decreases proportionally;” but two inventors before Berliner found this out. The patentee then says, “I have found that this is the case with two solid electrodes;” but Edison had found this out before. The complainant replies: “But these inventions change the area of contact, and the mass or molecular condition of the second electrode, which is a radically different method from mine, though probably these changes may occur in my transmitter to some extent. I do not know what is the reason of the change of current in my transmitter.” The defendants say that all these instruments agree broadly.in this: that as changes of physical contact occur changes of current occur. They all produce electrical undulations similar in form to sound waves. They are therefore members of a class, to be compared merely in respect to the manner in which they respectively perform their functions, and according to what they have contributed to the practical art. The complainant makes a final attempt to lift Berliner’s invention out of a subordinate position in the class of constant-contact transmitters, and attempts to give an account of the reason for the change of current in Berliner’s instrument, saying Berliner’s instrument operates by varying transition resistance (that is, the resistance of imperfect contact, which varies as the contact is weakened and strengthened); but this does not appear to be anything more than singling out for description another aspect of what occurs in all cases when a contact changes. The resistance is due to discontinuity. To change the discontinuity, we must change the continuity. Changing the continuity is merely changing the contact. This is a novel form of words, but it does not distinguish Berliner’s transmitter broadly from other transmitters. But it is said the *985 other transmitters show but little or no trace of microplionic action when they transmit speech.
The final distinction is as to the character of the tone produced by the different transmitters. Testing the merit of Berliner’s invention by his advance in the art, by the advance made with metallic electrodes, we see that it is very slight. Metallic electrodes have never come into commercial use. The Berliner instrument made no advance upon Bell’s magneto instrument. It is not proven to be superior to the instruments of Edison having solid electrodes. The Berliner patent, or Berliner’s caveat, does not contain any suggestion of the thought that was the basis of the invention of the carbon transmitter. Edison preceded Berliner in the transmission of speech. The carbon transmitter was an experimental invention of a very high order of merit. It would he contrary to common sense to permit this invention to be subordinated to the invention of Berliner’s patent. If Berliner made a discovery, it was simply a’ discovery that such minute variations of contact as could be produced between. metallic electrodes would transmit speech to a limited extent. If Berliner or others have succeeded in finding that metallic electrodes can be balanced so delicately that they will transmit speech, this is not a discovery that is embodied in the defendants’ transmitters. Edison, thinking of using such variations of contact, tried them before Berliner, and found them useless. He set about the problem of finding a contact material that was adapted to the preservation of contact, and adapted to produce a wide range of variations in the current. The advance in the art is due to what he discovered. If scientific men, by patient industry, succeed in stating some aspect or some peculiarity in which Berliner’s and Edison’s transmitters agree, this is not such a practical test of identity as the patent law requires. The only practical test of identity in this case is by comparing instruments of the Berliner type and instruments of the Edison type in respect to practical efficiency. The attempt to expand Berliner’s unsuccessful experiments and caveat, first into an invention, and next into a broad claim for an art, method, principle, or process,' exhibits a remarkable degree of ingenuity; but is not convincing. Mere changes of a current, not resulting in speech, do not make Bell’s speaking current. A statement in writing that an instrument will produce any and all changes of current is not the equivalent of finding by experiment that it will do so. Variable pressure between electrodes in constant contact is not Berliner’s novelty. It is not a sufficient account of a means of transmitting speech. Varying transition resistance is varying contact. The distinctions are between apparatus, not between methods. The discovery that minute variations of contact between metallic electrodes will transmit speech is not the discovery embodied in the defendants’ transmitters. I am of the opinion that the defendants’ transmitters are an invention substantially distinct from that disclosed in the Berliner patent; that the conception by Edison of the use of carbon for speech transmission preceded Berliner’s conception of the use of solid metallic electrodes; that, from his first conception, Edison diligently proceeded upon a line *986 of experiments that led to an invention of remarkable character, which borrows nothing from Berliner, has no substantial resemblance to what is shown in the Berliner patent, and cannot be identified with it by any ingenious use of language. The defendants owe nothing to Berliner.
By this rescript I announce my decision; but will file, as soon as may be, a printed opinion, in which will be considered in further detail the questions of law and fact arising in this case. The bill will be dismissed, and a draft decree may be presented accordingly.
BROWN, District Judge.
These suits are for infringement of letters patent No. 463,569, issued November 17, 1891, to the Americah Bell Telephone Company, as assignee of Emile Berliner. The patent states that the invention consists “in a new and useful improvement in transmitters for'electrically transmitting sound of any kind.” The defendants contend that the patent is invalid, and that claims 1 and 2, on which the complainant relies, are either invalid, or so limited in scope as not to include the defendants’ devices.
The following drawing is from the patent:
The invention is thus described in the specification:
“It is a fact that if at a point of contact between two conductors forming part of an electric circuit, and carrying an electric current, the pressure between both sides of the contact becomes weakened, the current passing becomes less intense, — as, for instance, if an operator on a Morse instrument does not press down the key with a certain firmness, the sounder *987 at the receiving instrument works much weaker than if the full pressure of the hand had been used. Based on this fact I have constructed a simple apparatus for transmitting sound along a line of an electric current in the following manner: In Figs. 1 and 2 of the drawing, A is a metal plate well fastened to the wooden box or frame, but able to vibrate if sound is uttered against it or in the neighborhood of said plate. Against the plate and touching it is the metal ball 0, terminating the screw-threaded rod B, which is supported by the bar or stand d. The pressure of the hall 0 against the plate A can be regulated by turning the rod, B. The said ball and plate are included in circuit with an electric battery, so that they form electrodes, the current passing from one of them to the other. By making the plate vibrate the pressure at the point of contact, a, becomes weaker or stronger as often as vibrations occur, and tbe strength of the current is thereby varied accordingly, as already described. By placing now, as is shown in the drawings, one such instrument in the station Fig. 1, and another instrument capable of acting as a telephonic receiver in the station Fig. 2, both situated on the same electric circuit in which a current is passing, as shown by the wire connections following the arrows, sound uttered against the plate of the instrument Fig. 1 will be reproduced by the plate of the instrument Fig. 2, for as the vibrations of the transmitter Fig. 1 caused by tbe sound will alternately weaken and strengthen the current as many times as vibrations occur, the diaphragm of the receiver will be caused by these electrical variations to vibrate at the same rate and measure. The latter vibrations being communicated to tbe surrounding air, the same kind of sound as uttered against the transmitter Fig. 1 will he reproduced at the receiver Fig. 2, or in as many other receiving instruments as are situated within the same electric, circuit. It is not essential that the plate should be of metal. It can be of any material able to vibrate, if only at the point of contact suitable arrangement is made so that the current passes through that point. The plate may be of any shape or size, or other suitable vibratory media may be used, — a wire, for example. Any other metallic point, surface, wire, etc., may he substituted for the ball. There may be more than one point of contact to he affected by the same vibrations. Both of the electrodes may vibrate, although it is preferable that only one should. If the uttered sound is so strong that its vibrations will cause a breaking of the current at the point of contact in the transmitter, then the result at the receiving instrument will be a tone much louder, but not as distinct in regard to articulation.”
Tlie drawing shows two distinct instruments. The transmitter, Fig. 1, is the subject-matter o£ the patent in suit. Its plate is vibrated by sound waves, and the vibrations produce electrical undulations. It is conceded by the complainant that the instrument of the patent is substantially the old Reis structure illustrated in the Telephone Cases, 126 U. S. 40 , 53, 58, 60, 191, 196, 31 L. Ed. 898 , 903, 906, 908, 950.
*988 With this apparatus Reis, as early as 1861, transmitted musical tones. “He could sing through his apparatus, but he could not talk,” for the reason that he broke the contact of his electrodes and interrupted the current. The apparatus, however, under expert manipulation, is capable of transmitting speech, though this was not accomplished until after Bell’s discovery that the true way to transmit speech was to operate on an unbroken current. 126 U. S. 540 -545, 8 Sup. Ct. 785-788, 31 L. Ed. 991 -993. The receiver is represented by Pig. 2. Its plate is vibrated by electrical undulations, and the vibrations of the plate produce sound waves. The receiver is covered by another patent to Berliner, No. 233,969, dated November'2, 1880. The claims in issue are as follows:
“(1) The method of producing in a circuit electrical undulations similar in form to sound waves by causing the sound waves to vary the pressure between electrodes in constant contact so as to strengthen and weaken the contact, and thereby increase and diminish the resistance of the circuit, substantially as described. (2) An electric speaking-telephone transmitter operated by sound waves, and consisting of a plate sensitive to said sound waves, electrodes in constant contact with each other and forming part of a circuit which includes a battery or other source of electric energy and adapted to increase and decrease the resistance of the electric circuit by the variation in pressure between them caused by the vibrational movement of said sensitive plate.”
The patent contains the following disclaimer:
“I do not claim that I am the first inventor of the art of transmitting vocal and other sounds telegraphically by causing electrical undulations similar in form to the sound waves accompanying said sounds. Neither do I claim that I am the first who caused such electrical undulations by varying the resistance of an electric circuit in which a current was passing.”
The last sentence has reference to Bell’s variable-resistance method described in the Telephone Cases, 126 U. S. 531, 536, 538 , 8 Sup. Ct. 780, 783, 784, 31 L. Ed. 988 , 990, and covered by the following claim of Bell’s patent:
“(4) The method of producing undulations iñ a continuous voltaic circuit by gradually increasing and diminishing the resistance of the circuit, or by gradually increasing and diminishing the power of the battery, as set forth.”
On page 323, 126 U. S., and page 963, 31 L. Ed., is shown “Bell’s Centennial Liquid' Transmitter,” an instrument operating by the variable-resistance method covered by claim 4 of Bell’s patent, 174,465, March 7, 1876. Though Bell’s patent made no claim for apparatus operating by this method, his specification contained this language:
“Electrical undulations may also be caused by alternately increasing and diminishing the resistance of the circuit. * * * The external resistance may also be varied. For instance, let mercury or some other liquid form part of a voltaic circuit, then the more deeply the conducting wire is immersed in the mercury or other liquid, the less resistance does the liquid offer to. the passage of the current. Hence the vibration of the conducting wire in mercury or other liquid included in the circuit occasions undulations in the current.”
Prof. Wright, complainant’s expert, says of this extract from Bell’s patent:
*989 “This describes a liquid transmitter, and I believe that any one familiar with electrical science, and having a knowledge of the state of the art as it was at that time, would have been able to construct an apparatus which could be used for the transmission of speech.”
MOUTHPIECE.
BELL’S LIQUID TRANSMITTER, 1876.
Speaking into the mouthpiece vibrates the diaphragm, whose movements cause the conducting wire attached to the diaphragm to move up and down in the liquid, thereby permitting more or less electricity to pass according to the extent of immersion. The liquid may he acidulated watfer or mercury. Prof. Cross, complainant’s expert, says that this was the apparatus with which Bell first successfully transmitted speech, and that “the apparatus was and is perfectly operative.” It was exhibited at the Centennial Exhibition in 1876. Prof. Cross describes the operation as follows:
“When the diaphragm vibrated, the wire dipped more or less deeply beneath the surface of the liquid, so that that portion of the wire from which the current flowed into the liquid was alternately increased and diminished, thus increasing and diminishing the resistance at that place, and so producing electrical undulations.”
A comparison of this instrument with that of Berliner’s patent is of principal importance in this case. The defendants rely upon it, not as a complete anticipation of Berliner’s instrument or invention, but as an anticipation of the broad claims of the patent, and of the broad claims of the complainant’s counsel and experts as to the character and Importance of Berliner’s invention. It appears by Berliner’s testimony that, before constructing his instrument, he had carefully studied Bell’s first patent, and that the metal plate or diaphragm, A, of Pig. 1, was taken from Bell’s second patent, 186,787, January 30, 1877. What appears in Bell’s patents, or in Bell’s liquid transmitter, cannot be claimed as novel with Berliner. Upon comparison, we find the following resemblances: Each is apparatus for practicing Bell’s art, process, or method of “transmitting vocal or other sounds telegraphically *990 * # * by causing electrical undulations similar in form to the vibrations of the air accompanying * * * vocal or other sounds.” Bell’s patent, claim 5. The treatment of the current described in the Berliner patent is the same as Bell’s. Each is apparatus for practicing Bell’s art by Bell’s variable resistance method, i. e., “gradually increasing and diminishing the resistance of the circuit.” Bell’s patent, claim 4. The method of treating the resistance of the circuit is the same in each. Each receives the sound waves upon a diaphragm, which vibrates and effects changes in a circuit in which an unbroken battery current is passing, thus producing electrical undulations similar in form to sound waves. In each, there are electrodes in constant but variable contact. Each operates by a varying contact. In each, pressure is exerted upon the diaphragm by sound waves, and by one moving electrode upon another electrode; so that in each there is pressure between electrodes. In each, there is produced by the force expended upon the diaphrágm a weakening and strengthening of the current, through the weakening and strengthening of physical and electrical contact of electrodes. Bell’s liquid transmitter is, therefore, a complete anticipation of Berliner’s transmitter in these particulars: In the use of a battery current, instead of a current generated by-the transmitter instrument, as in Bell’s magneto in: strument illustrated in Bell’s patent. See Fig. 7 in 126 U. S. 5 , 31 L. Ed. 867 . In the use of electrodes in constant contact with éách other, and forming part of a circuit which includes a,battery. In the-úse of the pressure of one electrode upon another to strengthen an electrical contact, and of a relaxation of pressure to weaken the electrical contact. It is, therefore, true, as the defendants contend, that claims 1 and 2 of the patent in suit, taken as they read in the ordinary sense of the words used," without limitation as to the size, shape, or materials of the electrodes used, are anticipated by Bell’s liquid transmitter.
It may clear the discussion of this case if we observe that two distinct questions have been confused: Does Bell’s liquid transmitter anticipate the first and second claims? Does Bell’s liquid transmitter anticipate an invention made by Berliner? The complainant misstates the position of the defendants, saying on its brief that “the National Company contends that the ‘Bell liquid transmitter,’ briefly referred to in Mr. Bell’s great telephone patent of 1876, was a microphone, and anticipated Berliner.” The defendants do not so contend. The term “microphone,” according to the complainant, denotes an instrument having solid electrodes. The defendants do not contend that Bell’s liquid transmitter was a microphone. To the defendants’ assertion that the claims cover Bell’s liquid transmitter, as well as Berliner’s, the reply is that Bell’s liquid transmitter does not anticipate Berliner’s instrument, nor Berliner’s actual invention. This does not meet the true issue. The anticipatory ■ effect of Bell’s patent and of Bell’s liquid transmitter cannot be ignored. The failure of the complainant to recognize this fully is a weak point in its argument. It is clearly established that Bell was a prior inventor of a constant but va *991 riable-coniact' transmitter. It is also apparent that, in every transmitter having a constant hut variable contact of opposing electrodes (a contact varying according to'the vibrations of a diaphragm), there must be, as an invariable and necessary accompaniment, a variation of pressure between the electrodes. Whenever, in transmitting sound, pressure is expended by one electrode upon an opposing electrode, there is varying pressure, whether the second electrode be of water or mercury, as in Bell’s liquid transmitter, or of powdered carbon, felt saturated with water, or plumbago, as in Edison’s devices, and whether the second electrode yields to the force exerted upon it, or resists this force.. It is manifest, therefore, that, when Bell invented a transmitter in which there was a varying contact between opposing electrodes, he also invented a transmitter in which varying contact was inseparably associated with varying pressure. To claim broadly variable pressure between electrodes is to claim in other words variable contact of opposing electrodes. The claims of the patent are such as could properly be made, if at all, only by the inventor of the first transmitter having a constant but variable contact of opposing electrodes, i. e. Bell. As varying pressure is a uniform accompaniment of varying but constant contact,of opposing electrodes, one who desired to- define Bell’s liquid transmitter, so as to distinguish it from the Bell magneto instrument, which had no electrodes in contact, or from the Beis transmitter (with an inconstant or broken contact), might do so by reference to either of the novel features of Bell, and say that its novelties were either “constant contact” or “variable pressure,” or both. Either of the two names will distinguish a constant-contact transmitter from the Bell magneto instrument, or from the Beis apparatus when operated according to Beis’ method. Definition by a single novel feature, under some circumstances, is quite as good as definition with a full enumeration of particulars, but it may lead to fallacy by creating two names for one thing. Berliner was not the inventor of the first constant-contact transmitter. His instrument cannot he distinguished from previous or subsequent constant-contact transmitters by referring to a single feature not novel with him, but possessed by several transmitters. Therefore he must point out, in his claims, some distinctive difference between his invention and what is disclosed in the Bell liquid transmitter, in order to show his advance in the art. His apparent difference is merely in apparatus, but Ms apparatus is so inefficient commercially that if his patent is to- he construed merely as for apparatus, the complainant’s case is hopeless on the issue of infringement. The complainant, therefore, rests its case upon the proposition that Berliner’s invention was a “new mode of operation,” and from this arise the principal difficulties in the case. The complainant stalls the search for novelty at Bell’s magneto instrument, and at the instrument of Beis, and not from Bell’s prior variable-resistance transmitter and, upon its brief, contrasts Berliner’s apparatus with Bell’s magneto transmitter, and with the Beis transmitter, first saying of Bell’s magneto transmitter:
*992 “The apparatus of Mr. Bell was exceedingly perfect, both in its theory and in the practical results which were reached by it. But the currents produced by the transmitter were extremely feeble, since the currents utilized ■were generated by the transmitter itself; and its motions, as it was actuated only by the sound waves due to the voice, were but slight.”
The brief then says, in italics, “Mr. Berliner remedied this defect,” and made a new type of transmitter, which employs Bell’s method of transmitting speech. “It is what is known as a ‘variable-pressure contact transmitter.’ It operates, not as did the magneto transmitter, to generate, the undulatory current produced by the small amount of energy which the voice can communicate to the transmitter, but simply to impress upon the electrical current furnished from another source — practically a battery — variations in strength which correspond to the motions impressed by the voice upon the transmitter.” But this is true of Bell’s liquid transmitter, and was true of it in 1876, when it was exhibited at the Centennial. Berliner’s transmitter in this respect was not a “new type of transmitter,” but merely a species of a new type of transmitter invented by Bell. It is a remarkable fact that in spite of the testimony of Prof. Wright that the Bell patent sufficiently disclosed a liquid transmitter to enable a persón skilled in the art to make one, and in spite of the testimony of Prof. Cross that the Bell liquid transmitter was, and is, perfectly operative, the complainant should ignore the Bell patent and Bell’s liquid transmitter, and explain Berliner’s invention by saying that in Bell’s magneto instrument the currents were very feeble, since they were generated by the transmitter itself, and by saying, in italics, “Mr. Berliner remedied this defect.” Such a contention cannot be sustained. Bell’s patent suggested the use of a battery current, and Bell’s liquid, transmitter used it in 1876. Berliner’s apparatus has never been used commercially, and made no practical advance on Bell’s magneto transmitter. The error of attributing to Berliner the credit of an advance upon Bell in the substitution of a battery current for a current generated by the transmitter rendered necessary a footnote to the brief:
“It is true, of course, that Mr. Bell also suggested in his magneto patent that he could produce an undulatory current by varying the resistance, but lie made no suggestion whatever that this could be done by varying the pressure between two electrodes in contact.”
After the opinion of the supreme court in the Telephone Cases as to the variable-resistance method ( 126 U. S. 538, 246, 247 , 8 Sup. Ct. 784, 31 L. Ed. 990 ), in explaining the importance of Berliner’s work, counsel for the Bell Telephone Company call Bell’s great patent “Bell’s magneto patent,” and ignore the instrument with which Bell first transmitted speech. 0 This is a confession of fundamental weakness in the complainant’s case. It is essential to the complainant’s argument that the true scope of Bell’s variable-resistance method, and of Bell’s work in applying that method, should be ignored, in order that the Berliner patent may be construed as for a new “method,” instead of for practically useless apparatus for practicing the variable-resistance method of Bell. The complainant further proceeds to show the nature of Berliner’s *993 invention by stating, as a main proposition on the brief, “Berliner’s inventions do not reside in the structure involved.” Berliner, “using substantially the old Reis structure,” produced a “new mode of operation.” In explaining this, the brief again ignores Bell’s liquid transmitter, and reverts to Reis, quoting the language of the supreme court to the effect that the question is “not as to the character of the apparatus, but as to the mode of treating the current of electricity on which the apparatus is to act.” It refers to Berliner's “new electrical mode of operation,” and also quotes the language of Prof. Cross:
“Structure here is not the controlling element. In machines generally the operation and the result are absolutely controlled and defined by the structure and organization of the machine. But this simple contrivance is more like a tool because it can be compelled at the pleasure of the operator 1o perform the breaking operation and produce the broken Beis current, or to I>erform the variable-pressure operation and produce the undulatoxy current.”
Berliner’s “new electrical mode of operation” or mode of treating the current is new as to Reis, because it lias that novelty which the supreme court has decided to constitute Bell’s advance upon Reis. His mode of treating the circuit is new as to Reis in .that the contact is not broken, but this is Bell’s novelty. The complainant’s patent does not refer to any new treatment of an electrical current, and disclaims novelty in causing electrical undulations similar in form, to- sound waves. As a substantive part of its case, the complainant has claimed for Berliner as distinctive features the use of a battery current and constant contact of electrodes, both of which are Bell’s. Although the paten.I: expressly disclaims that Berliner was the flrst to cause electrical undulations by varying the resistance of an electrical circuit in which a cm rent was passing, and disclaims novelty in the production of electrical undulations similar in form to sound waves, the brief in effect retracts this disclaimer by showing Berliner’s novelty against a prior art, from which is excluded what the patent by its disclaimers acknowledges was old at the date of the application. Bell’s liquid transmitter is not in the prior art of the complainant’s case. The attempt (xi dispose of that apparatus by characterizing it as a mere laboratory experiment, after Prof. Cross’ evidence that it is an operative instrument, and after it was presented to the supreme court as a speaking telephone ( 126 U. S. 247 , 322), is not successful. This instrument is quite as important after the expiration of Bell’s patent as it was before. It was the primary instrument employing the- variable-resislance method, and after it the problem was to improve upon Bell’s electrodes. Improvement upon the. resistance of the circuit was not a new art or method. Whatever the iiarticular kind of resistance, whether “contact resistance” or “mass resistance,” the method of varying it is Bell’s.
I am of the opinion that.upon Bell’s liquid transmitter the defendants have established their lirst defense, to wit:
“In the state of the art of electrical telephony in 1877, there was nothing in the Berliner transmitter of patent Xo. l(i;i,5G9 patentable over Bell as an art (claim 1), nor anything patentable as mechanism (claim 2), unless in the sub *994 stitution of a solid metal electrode for Bell’s mercury electrode, which substitution only reproduced 'a Kegnault or a Reis instrument, to be operated by Bell’s method.”
It appears also that there can he only two narrow grounds upon which the Berliner patent can stand: (1) That it was patentable to apply'Bell’s variable-resistance method to the apparatus of Reis; [2) that it was patentable to substitute a solid metal electrode for Bell’s mercury electrode. I am further of the opinion that these claims are invalid for excessive breadth, under the decision of the supreme court in the Incandescent Lamp Patent, 159 U. S. 465, 476 , 16 Sup. Ct. 75, 40 L. Ed. 221 , as attempting to monopolize the use of the pressure of one electrode upon another to effect changes in the circuit, and also as attempting to monopolize the use of apparatus operating by changes of contact between opposing electrodes, even if the electrodes be limited to solids. Prof. Cross, upon the prima facie case, was asked, “Is the patent confined to any particular size, shape, or materials of the electrodes?” and replied that “the patent is not in any way thus limited. * * * There is no limitation as to this matter in claims 1 and 2 of the patent.”
In argument, counsel for complainant, in setting forth the “remarkable character of Berliner’s invention,” and its great im-' portance, state:
“That this invention is broadly covered, and conceded to be broadly claimed in the patent in suit, is stated in this bill [brought by the government for the annulment of the patent]: ‘And your orator avers further that the broad claims of said patent cover in their scope every form of constant-contact telephonic transmitter which it is possible to make, and that, so far as can be foreseen, the possession of said patent, if it is valid, will continue to the respondent company without substantial diminution during the full term thereof the Same close monopoly of the art of telephony in the United States which it has enjoyed under said patent to Bell, 174,465.’ ”
I believe these claims to cover broadly all transmitters having variable contact of opposing electrodes. They certainly are broad enough to cover every variable-contact transmitter that has been presented in this case. The concessions made by the complainant are sufficient to prove that these claims are what were termed in Carlton v. Bokee, 17 Wall. 471 , 21 L. Ed. 517 , “ingenious attempts to expand a simple invention of a distinct device into an all-embracihg claim, 'calculated by its wide generalizations and ambiguous language to discourage further invention in the same department of industry and to cover antecedent inventions.” It is a familiar rule that a generalization or definition that is too broad cannot be made good by making an arbitrary exception of each case that comes within its terms, but which should not have been included. A single contrary example destroys the generalization.
The complainant claims broadly variation of pressure between electrodes in constant contact. This first conflicts with Bell’s liquid transmitter. A liquid electrode is then excepted, but the exception of a liquid electrode still leaves the complainant claiming the mode of operation by variable contact for all electrodes other than liquids. The claims limited to solid electrodes next *995 come into collision with devices of Edison. The effect of these devices as anticipation will be considered later. We now consider them merely in connection with concessions of the complainant that the claims should not cover them.
This device has solid electrodes, and was an operative telephone in February, 1877. It is the basis of Edison’s patent 474,230, applied for April 27, 1877. Its electrodes are a diaphragm of sheet metal, and a disk of hard rubber coated with plumbago, or a disk of some conducting metal or substance. In this apparatus Edison employed a battery current and constant contact. There was variable pressure between solid electrodes as in Berliner’s apparatus. The complainant excepts this from the Berliner patent by saying that it operates by varying surface area of contact, and by varying the length of the path of the current outside of the area of contact, which is said to be different, theoretically and practically, from Berliner’s method. It is nevertheless within the claims.
The claims are next confronted with apparatus of Edison dated April 1, 1877, Y/hich has solid electrodes. It consists of a diaphragna and “five vertical springs, each provided with a sleeve carry *996 ing a cylinder or button of hard-pressed plumbago fastened to a bar of insulating material. All the plumbago buttons were in contact, and the one at the end rested against a diaphragm. The circuit was complete from the first spring through all the carbons to the last spring.” This the complainant says is not a vaiiablepressure transmitter, for the reason that Edison intended, by the vibration of the diaphragm, to compress electrodes of plumbago; thereby changing the molecular condition of the material of a part of the circuit. Counsel distinguish this, and impliedly limit the electrodes of the patent to solid electrodes having “transition resistance” due to a loose joint, by saying that the Edison device does not operate by variation of transition resistance. There can be no question but that, if Berliner had preceded Bell, Bell’s liquid transmitter would infringe claims 1 and 2, both as to constant contact and variable pressure. If Berliner had preceded Edison, either of the devices shown would infringe the Berliner claims. The logical difficulty with the claims of the Berliner patent, in view of Bell’s liquid transmitter and its position in the prior art, is that in attempting to define and mark out Berliner’s novelty; they refer only to features that are common to Bell and Berliner, and not to the distinctive difference. It is definition “per genus,” and not definition “per genus et differentiam,” and the genus is Bell’s. This is a defect not only of the claims, but of what may be termed the ^variable-pressure” aspect of the complainant’s argument. Practical accuracy, logical rules of definition, and rules of law alike require that a definition shall include a statement of the distinctive difference. If we stop short of that, we err by being too vague. Though the complainant contends with great earnestness that Edison’s devices are distinguishable from Berliner’s, yet it is apparent that, in the same way that the claims fail to express a distinctive difference between Bell’s liquid transmitter and Berliner’s, they fail to express a difference between Berliner’s and the devices of Edison. To the objection that the claims are so broad as to include these devices, it is obviously no answer to reply merely that these devices are not analogous. I am of the opinion, therefore, as the claims are statutory requirements,'prescribed for the purpose of making the patentee define precisely what the invention is, — and as these claims are so broad as to include every transmitter of the general class of which Bell was the first inventor, and which is exemplified in his constant-contact transmitter, — that they are invalid for excessive breadth, and for a vague generality which makes them a constant menace to all inventors who may seek to improve the art of telephony by applying what Bell has taught as to the practicability of operation by the constant but variable-contact method. This is also true if the electrodes are limited merely to solids. By claiming “variable pressure of electrodes” as an art or method, the complainant seeks to monopolize an indispensable feature of every constant-contact transmitter having varying contact and opposing electrodes, and to suppress all subsequent invention in the same field. Walk. Pat. § lá. Counsel say that the method of operation by variable pressure is available “in the case of all electrodes which have surfaces between which there may be varying pressure.” It is *997 obvious that this language does not exclude even the liquid electrodes of Bell; aud that, as all solids have surfaces of this kind, it includes the solid electrodes of Edison.
The final position of the complainant, upon the supplemental brief, is that the method of varying resistance in a battery circuit “by causing sound waves to vary pressure between electrodes in contad” so as to “strengthen and weaken the contact” is a more specific and hence different thing from the mere effecting of “some physical change in the path of the current.” Counsel fail to meet the actual contention that it is not a specific description sufficient to distinguish Berliner’s method from effecting such physical changes in the path of the current as occur in Bell’s liquid transmitter and in various devices of Edison.
I am of the opinion that the language of these claims is clear and that no resort to the specification is necessary to explain its meaning. They are not claims made in the infancy of an art by an unskilled inventor. They were put in the present form more than two years after Edison’s carbon telephone had been placed on (he market. They cover, if not every form of constant-contact transmitter which it is possible to make, at least every form that has been presented. They cover the use of variable pressure exerted by one electrode upon another, to vary the resistance of the circuit. They cover also all transmitters having a variable contact of opposing electrodes. They cover under a new form of words what was previously invented by Bell. To save these claims it is necessary, not to explain them by resort to the specification, but to ingraft upon them restrictive qualifications which the patentee omitted to point out. This may not he done “for the purpose of changing it and making it different from what it is.” White v. Dunbar, 119 U. S. 47 , 7 Sup. Ct. 72, 30 L. Ed. 303 ; Howe Mach. Co. v. National Needle Co., 134 U. S. 388 -394, 10 Sup. Ct. 570, 33 L. Ed. 963 ; Paul Boynton Co. v. Morris Chute Co., 30 C. C. A. 617 , 87 Fed. 225 ; Day v. Railway Co., 132 U. S. 98, 102 , 10 Sup. Ct. 11, 33 L. Ed. 265 ; Merrill v. Yeomans, 94 U. S. 568, 570 , 24 L. Ed. 235 ; Railroad Co. v. Mellon, 104 U. S. 118 , 26 L. Ed. 639 ; Incandescent Lamp Patent, 159 U. S. 465 -472, 16 Sup. Ct. 75, 40 L. Ed. 221 .
Later in this opinion, we will consider further the merits oí the complainant's contention as to the importance and scope of what Berliner is said to have accomplished. Even if it be assumed that the complainant is lawfully entitled to the patent upon which its arguments are based, I am of the opinion that the argument by which the complainant seeks to show that the patent discloses an invention of broad character and scope is logically and legally unsound, and that what is, described in the patent was, in view of the state of the art, of slight' value and of narrow scope. But before considering the reasons for this conclusion, we will consider the question of the validity of the complainant’s title to the letters patent.
The case presents this remarkable feature, — that the application in terms denies that the .instrument of the patent is adapted ¡o the transmission of speech. The patent covers the transmission *998 of speech by an instrument which the application does not describe, as a speech transmitter, but, on the contrary, says is not adapted to the transmission of speech. Berliner’s application filed June 4, 1877, was not for the invention covered by letters patent issued to the American Bell Telephone Company, as Berliner’s assignee, on November 17, 1891. Upon this question we need consider only the single feature of “electrodes in constant contact” for speech transmission. The inquiry whether the application describes the “variable-pressure” method of Berliner is the same as the inquiry whether it discloses the constant but variable contact method of Bell, and whether it calls for the use of an unbroken current. The supreme court, in the Telephone Cases, 126 U. S. 544, 545 , 8 Sup. Ct. 787, 31 L. Ed. 992 , 993, found that Bell discovered the true way to transmit speech, — “to operate on an unbroken current by increasing and diminishing its intensity,” — and that Reis, who preceded -Bell, failed because he operated with a current made intermittent by the opening and closing of the circuit; saying:
“To follow Reis is to fail, but to follow Bell is to succeed. The difference between the two is just the difference between failure and success. If Reis had kept on he might have found the way to succeed, but he stopped and failed.”
We shall find that Berliner did follow Reis, as a matter of fact, and that he failed, as a matter of fact, through attempting what was described by one of the examiners as a “kind of cross between the microphone and the Reis circuit-breaking instrument.” Our present question, however, is merely whether a document sworn to and filed by Berliner discloses a constant-contact speech transmitter, upon an examination of its text and drawings. The examiner on Jánuary 31, 1882, decided that it did not, and filed on appeal before the commissioner an answer which, in my opinion, conclusively shows that the invention disclosed in the application was not a speaking telephone, and not a constant-contact speech transmitter. The rejection of amendments by the examiner was overruled by the commissioner, but it does not appear that he answered the specific reasoning of the examiner. A second examiner also made a ruling adverse to the amendments, which was reversed by the board of examiners on appeal, in a decision which stated:
“It seems to be clear from tbis review of the original specifications that, so far as can be judged from the language used, two things were disclosed by it: First, the transmission of musical sounds, whether uttered by the human voice, as in singing, or produced by musical instruments; and, secondly, the transmission of speech by means of a make and break of contact through the use of the secondary device. It is to be noted, however, that, even as to speech, Berliner’s statement is merely that he had succeeded in reproducing the vowels and other special sounds.” -
The board held, however, that the commissioner’s prior decision permitting amendment bound the board, and reversed the examiner. This opinion of the board as to the meaning of the language used seems sound. While this court is not bound by these decisions of the patent office, and looks to them merely as interpretations of this document referred to in both brieis, it may be said that the weight of reasoning is very decidedly with those officials who found that the *999 application was not for a constant-contact speech transmitter, and that the weight of decision in the patent office upon the sufficiency of the original application is decidedly against the complainant'. We will consider this matter on its merits. A comparison of the two documents seems to me to settle this question. There has been in this case a great abuse of the use of expert testimony. Experts have offered tlieir views upon queslions Ihat are entire-ly outside their province. They have entered into argumentative discourses upon the meaning of a document which is plain upon its face and expressed in terms of ordinary speech that require no expert explanation. The question of the meaning of the text, and the question of mistake in writing the text, questions of fact as to the intention of the applicant when he wrote the text, evidence as to the state of the art having no bearing whatever upon the meaning of terms, and arguments as to the meaning of isolated portions of the text, have been so confused as to obscure the real queslions. Did the original document filed by Berliner, read as a whole, the invention of the patent? Did it disclose the fact-that Berliner had discovered that speech could be transmitted with the instrument of the patent? Did it show that Berliner had made any advance upon Beis, or intended to claim anything more for the of the patent than the transmission of musical sounds? The question whether certain portions of this document were through mistake, and whether, when amendments and are made, the application discloses the invention, is,- of course, an entirely distinct question, that should not be confused with the present inquiry. The application, referring to substantially similar to those of the patent in suit, says:
"Ii now the plate of one instrument, as in Fig. 3, is vibrated by sound waves, which happens wlionever any kind of sound is uttered or produced by mUsical instruments in its neigliborlioou, every wave or vibration that strikea the plate will cause a weakening of the point of con tact, x, or also, if the sound is sufflcieiitly strong, a break of the eiectiic current al that point. It is evident that changes thm occurring at the plate of one iiistrurnenl will be noticed at the plate of the other, or in any such instrmi~ents that are situated within the same electrical connection and, as often as one plate is caused to vibrate, just so often will the others vibrate, caused by the break or the weakhig ol the electrical current. The same kind of sound, therefore, which affects the plate of the first instrument, will be reproduced by the plate of the others."
Immediately following this is a statement which seems conclusive of the question whether the application claiiiis a constant-contact operation for speech transinission,-a statement by Berliner, under oath, on June 4, 1877, which, unless proven to be a clerical mistake, is fatal to the complainant, not only on the qnestiop immediately under discussion, but on the fundamental question of whether, in fact, Berliner invented a constant-contact speech transmitter:
*1000 “These simple instruments will reproduce any musical sound uttered in the neighborhood of one of them, but for the reproduction of special sound such as speech they are not adapted, for the following reasons: In accept-ing the graphical name of wave for a vibration, we must consider the same to have two dimensions, namely, length and depth or height. In Fig. 7,1 have represented three sections of waves, all of the same length and height, yet they differ in simpe, and their highest point is not always situated in the center of their length. Such is the case with sound waves of various kinds of sounds. In a pure musical tone the shape of the wave is entirely regular, like in section I, but in every other sound this is not the case. It is therefore evident that the apparatus described thus far cannot but transmit a pure musical sound, because it transmits only the number of vibrations per second which is equal to the lengths of the waves, but nothing of the nature of each wave and the shape of their curves is recorded.”
sfdf
The statement of the insufficiency of these instruments to speech is accented by the following description of the which was filed by Berliner as his model speech transmitter:
“This I accomplish however by situating within the vibrating field of the plate, A, a second screw, E. In Eig. 6, the dotted line indicates the vibrating field of the plate, B, the screw in contact with the plate, and E, the second screw. It will now happen in special sounds (meaning the of every sound besides its certain musical pitch) that the plate will not always strike the screw, E, in the middle of the duration of one wave or vibration, and taking, for instance, the duration of one wave to be one minute, the plate in special sounds will sometimes strike the screw, E, sometimes after twenty or twenty-five seconds from its beginning. This, now, is exactly recorded by this secondary screw, E, which also makes an electric connection whenever the plate, A, touches it, and at the receiving apparatus these special sounds will be noticed. I have thus succeeded in reproducing a great’many special sounds, such as the vowels and others. The principle of reproducing special sounds by break and make of contact rests mainly in the use of this second-ary contact screw.
“In the drawing the point of this second screw consists of a piece of. spring steel bent in semicircle. This is sometimes advantageous, but not absolutely necessary.”
*1001 It will be observed that this drawing shows, in connection with the two pins, a hearing tube, K, and a speaking tube, O. It is idle to contend that, with this portion of the specification retained, and read in connection with the claims and other parts of the specifica’ tion, the application was for a constant-contact speech transmitter. Applying the legal rule that a document must be read as a whole, and reading it as it stands, it is fatal to the complainant’s contention. The application expressly disclaims speech transmission by the instrument of the patent, and claims as a speech transmitter a double pin instrument operating to make and break the contact of electrodes. Berliner's model filed with his application was a double-pin instrument. The patent calls for constant contact oí electrodes and an unbroken current; the application for an interrupted contact and a broken current. The supreme court has decided that these methods are radically distinct. 126 U. S. 544, 545 , 8 Sup. Ct. 787, 31 L. Ed. 992 , 998. We can find nothing upon the face of this document that requires 1he court, as a matter of construction, to reject any portion of the text, or to interpolate any words which the context proves to have been omitted.
The ccmplainant contends that the statement that the single-pin instruments are unadapted for the transmission of speech is inconsistent with other portions of the text. It is said that the phrase, “whenever any kind of sound is uttered or produced hv musical instruments,” is an assertion that speech is to operate the single-pin transmitter But is this so? The word “uttered” is used in the foliowing paragraph to indicate the production of musical sound, thus
“These simple instruments will reproduce any musical sound uttered in the neighborhood of one of them, but for the reproduction of special sound, such as speech, they are not adapted.”
The word “uttered” is used elsewhere in the application in the sense of produced. The board of appeals said:
“The use of the word ‘uttered’ in the latter part of the specification is significant; for, while it might appear from its use in the former part that it meant speech, this presumption is overcome by its use in the latter part in connection with musical sound.”
This is proper construction. The phrase has no reference to speech transmission. The word “uttered,” being ambiguous, is to receive that interpretation which reconciles it with the rest of the text, rather than that which brings it into conflict therewith.
It is then said that Berliner has stated that a “weakening of the current can he observed,” and that changes at the transmitter that weaken the current can he observed at the receiver. But there is no inconsistency between the statement that weakenings can be observed, and the statement that the instruments will not transmit speech. If some audible effects are referred to as produced by weakening the current, this is not speech. The document does not claim “-hat, within the range of weakenings of the contact of the pin and diaphragm, speech can he transmitted. On the contrary, this is denied, and another inconsistent method is shown. Berliner has described the operation of the musical sound transmitter as a *1002 composite operation of weakenings and breaks of the current, saying that, “as often as one plate is caused to vibrate, just so often will the others vibrate, caused by the break or the weaking of the electrical current.” The statement relative to the irregularity of the sound waves, and that nothing of the nature of each wave and the shape of their curves is recorded, applies to the composite operation, and to both parts of it, — the weakenings as well as the breaks. The reproduction of special sounds is attributed solely to the supposed fact that the height of the waves is recorded by a contact with the second screw following a break of the circuit. It is said that the words “any sound” include speech, and that therefore the subsequent statement that speech cannot be transmitted is inconsistent therewith. But the words “any sound” must be interpreted in connection with the specific exception of “special sound such as speech,” which follows. The contention that the particular clause is a contradiction of the general clause is in effect a claim that a specific exception to a general statement should be rejected as inconsistent. We may test the validity of this method of construction" by applying it to other text: “Of every tree of the garden thou mayst freely eat, but of the tree of knowledge of good and evil, thou shalt not eat of it.” Upon such a mode of construing text, the general permission is inconsistent with the special exception. Therefore the exception should be eliminated. Such a mode of construction doubtless led to the fall of man. Legal rules of construction require that particular force be given to the specific exception. Bock v. Perkins, 130 U. S. 628, 634, 637 , 11 Sup. Ct. 677, 35 L. Ed. 314 .
It is further contended that the passage, read as it stands, would “make nonsense of his first three claims, which would be for inoperative combinations, the first of which would be entirely indistinguishable from the Beis transmitter, and the other two substantially indistinguishable.” But this is not so. The first claim of the original specification is as follows:
“(1) An instrument for transmitting and reproducing- sound waves by tbe agency of electricity, consisting of a metallic diaphragm or other vibratory medium connected to or forming part of one pole of an electric circuit, and arranged in contact with the opposite pole thereof, and capable of being put into vibration by the action of the electric current substantially as set forth.”
The second is substantially the same.
If this claim, as counsel for the defendants contend, is a claim for a receiver only, there is certainly no inconsistency. The words, “capable of being put in vibration by the action of the electric current,” have no application to a transmitter, and support this view. The complainant relies, however, upon the words “for transmitting” to overcome the force of this clause. In U. S. v. Bell Telephone Co., 167 U. S. 264 , 17 Sup. Ct. 809, 42 L. Ed. 144 , it was said, “In a sense, the receiver is also a transmitter, for it passes the sounds from the wire to the ear.” If, then, we should find, that, reading this claim as for a transmitter, it was inconsistent with other portions of the text, we should, as a matter of construction, avoid this inconsistency by interpreting the word “transmitting” in the sense referred to in the opinion of the supreme court, following *1003 Hie rule that the text should be harmonized if possible. But, on the other hand, the claim can he read as for both a transmitter and a receiver without encountering any inconsistency. The single-pin transmitter’s functions are described elsewhere as the production of musical sounds. A claim is not nonsensical that describes an instrument: both as a receiver and as a transmitter of musical sounds, even if the instrument as a transmitter is substantially the Reis transmitter. Many patents describe and e ;a in clear language that which has been invented previously. 'They cannot for that reason he characterized as nonsensical. The third claim of the application is:
“Tlie combination in one circuit o£ two or more vibratory diaphragms and contact pins adapted to operate similarly for the production and transmission of sound waves when one diaphragm is caused to vibrate by means of any sound, substantially as set forth.”
This last clause makes particular reference to the specification and limits the function of the two instruments to the transmission of musical sound. A novelty is shown in the claim, and there is no nonsense here. There is nothing on the face of this text that requires us either to reject any part of it, or interpolate anything as omitted. Reading this document by itself, it is clear and consistent. Upon the view that there was no intention to describe or claim a constant-contact speech transmitter, there is no inconsistency or • confusion. When we attempt to read it as for a constant-contact speech transmitter, then all is confusion, inconsistency, and contradiction. The complainant contends that the patented invention was both described and claimed in the application before a word was altered by amendment, hut, in support of this contention, argues that there was error in the expressions used, and mistake in the text. In considering whether portions of this document disclose a constant-contact mode of operation for the transmission of. speech, the complainant contends that the specification was addressed to a person skilled in the art, and that this person would have known that there was no novelty in make and break of contact, and that speech could not thus he transmitted. It is then argued that for this reason the language must he interpreted as if the breaks were referred to as accidental. But surely such an assumption could not authorize us to reject an express statement by Berliner in this very document that he was attempting to reproduce special sound “such as speech” hv make and break of contact, and that he had thus succeeded in reproducing a great many special sounds, such as the vowels and others. The document itself, on its face, disposes of the assumption, for purposes of construction, that Berliner knew better. Circuit breaking by two pins was new, not old. Berliner claimed it for speech transmission, and shows in his drawings a circuit breaker provided with a mouthpiece and earpiece, and refers to this instrument when he says that “the operator is not in need of handling the instruments sidewards or moving.his head while a conversation is carried on.” And there seems to be no substantial ground for the statement of Prof. Cross that the “circuit-breaking operation was known to be old, worthless, and in *1004 cai>able of producing speech.” The examiner considered many applications for circuit-breaking apparatus as late as 1882, and it appears that a circuit-breaking transmitter was greatly desired in order to avoid the Bell patent. But even did the document elsewhere on its face, fail to disclose the fact that Berliner was attempt-log a make-and-break operation, and were we simply construing those passages that relate to the single-pin instrument, we could not reject a distinct statement because it was erroneous as a statement of fact. The attempt to construe this instrument according to supposed knowledge of the art completely fails, because Berliner expressly states that he thought otherwise than the expert is supposed to think, as well as because, on a question of the construction of text, a reference to the state of the art is permitted only for purposes of explanation, and not to contradict plain language. In Simpson v. Holliday, L. R. 1 H. L. 315, 322, it was said:
“This does not warrant us in giving effect to a specification claiming two things, one practicable and the other impracticable, because a skillful workman would know that one of them could not be acted upon, and so would confine himself to the other. This would not be to construe a specification according to the language of workmen, instead of according to our ordinary language, but to reject something claimed by the patentee, because a workman would know that it was an impracticable claim.”
In Clark v. Adie, 2 App. Cas. 436, Lord Blackburn said:
“When it is attempted * * * to say that inasmuch as those specifications show, or are alleged to show, matters which, upon a fair construction of the specification claimed by the patentee, were old at the time that the patent was taken out, and were generally known to be old, therefore the specification must be so construed as not to include them, that seems to me to be both contrary, as far as I know, to the course of decision, and contrary to principle. * * * It would afford a very simple recipe for saying that no patent should ever be upset upon the ground of want of knowledge. If, when you say you can show that a thing was old at the time the patent was granted, you are to construe the specification as not intending to claim that, because the man who claimed it would be suicidal and foolish, it would be a recipe for saying you shall never upset a patent at all for want of knowledge.”
Tbe question which' counsel undertake to argue is, what does the document say? This is a question entirely distinct from the question of what it might have said or what it should have said, and from the question of mistake. In Soda Fabrik v. Kalle (C. C.) 94 Fed. 168 , upon the question whether a certain document disclosed an invention so as to constitute an anticipation, it was argued that a certain statement was a mistake. Judge Coxe said:.
“The court has simply to consider what the publication in question has contributed to the art. If it fails to show the invention which it -is said to anticipate, the contention that its author knew enough to write an anticipation and intended to do so is grotesquely irrelevant.”
The argument whereby the complainant endeavors to show that the original application could support the patent in suit is a labored attempt to place upon plain and unambiguous language forced interpretations which do not explain, but destroy, its natural signification, — interpretations which do not explain, but contradict. I am of the opinion, therefore, that the patent in suit cannot depend upon the original ajiplication, since it is for an invention radically *1005 distinct from anything described or claimed in the original application.
The radical difference between a inake-and-break transmitter and a constant-contact transmitter having been shown by the decision of the supreme court in 126 U. S., 8 Sup. Ct., and 31 L. Ed., the next question to be considered is whether the original application could, under legal rules, be so amended as to serve as the basis of the patent in suit.' The supreme court, in Railway Co. v. Sayles, 97 U. S. 563 , 24 L. Ed. 1057 , said:
“If the amended application * * * embodied any material addition to or variance from the original,' — anything new that was not comprised in tha t, —such addition or variance cannot be sustained on the original application. The law does not permit such enlargements of an original specification, which would interfere with other inventors who have entered the field in the meantime, any more than it does in the case of reissues of patents previously granted. Courts should regard with jealousy and disfavor any attempts to enlarge the scope of an application once filed, or of a patent once granted, the effect of which would be to enable the patentee to appropriate other inventions made prior to such alteration, or to appropriate that which has in the meantime gone into public use.”
In no case can there be stronger reasons for applying tbis rule than exist in the present case. See, also, Hobbs v. Beach, 180 U. S. 383, 396 , 21 Sup. Ct. 409, 45 L. Ed. 586 .
I am of the opinion that this patent is invalid for the reasons that the power to amend an application does not include the power to change the nature of the invention; that the right to amend or the right to complete an application under section 4894, Rev. St. U. S., does not give the right to transform completely; that the only remedy for a radical mistake in substance so serious as to require a transformation so complete as is here shown is a new application. Rob. Pat. §§ 561, 635; Consolidated Electric Light Co. v. McKeesport Light Co. (C. C.) 40 Fed. 21 -27; Railway Co. v. Sayles, 97 U. S. 554 -563, 24 L. Ed. 1053 ; Michigan Cent. R. Co. v. Consolidated Car-Heating Co., 14 C. C. A. 232 , 67 Fed. 121 .
The first amendment affecting this controversy was made by Berliner on August 8, 1877, when he struck out the passage denying that the single-pin instruments could transmit speech, and also the claim for the double-pin instrument. The complainant contends that the application thus amended was a sufficient basis for the patent in suit. Assuming that the August amendment amounts to fin assertion: “My single-pin instrument can talk. I strike out th’e reasons why it can’t, and also the double-pin instrument, which for these reasons I previously said could talk,” — here is a positive and clear contradiction of the former application, and the introduction of matter radically distinct. If this amendment is to bear this construction, I agree with the learned counsel for the defendants, that “probably no such flagrant instance of an application filed for one thing, and then contradicted into its very opposite, * * * can be found in the books.” If this was the effect of the amendment, it was clearly inadmissible.
Between the date of Berliner’s application, June 4, 1877, and bis amendment of August 8th, there appeared a publication in the *1006 Philadelphia Press of July 9, 1877, in which was described a constant-contact variable-pressure . speech transmitter, the invention of Edison. The apparatus included a diaphragm with -a plumbago electrode in contact therewith.
“This, again, is another original discovery of Mr. Edison’s, viz. that plumbago changes its electrical resistance with enormous rapidity under pressure; the effect in this application being that when the diaphragm is vibrated weakly contact is made with the plumbago point very lightly, and the resistance of the plumbago being but slightly reduced a weak current is sent out from the battery, and a weak effect produced at the receiving station. When, however, a. strong pressure of the diaphragm is effected by reason of the exercise of a inore powerful vibration of the voice, the resistance is very greatly reduced, and a strong current passes to the line and a strong or loud effect is produced at the receiving station. Hence the amount of power, with all its fine gradations, generated by the voice at the, transmitting station, is transmitted in its proportions to the receiving instrument, and thus the fine articulation of the voice is obtained.”
On July 20, 1877, Edison filed an application for letters patent No. 474,231, which covers completely all that is now claimed for Berliner. See 120 U. S. 278 . It is apparent that amendments filed after this would interfere with another inventor, and that Berliner’s amendment must, in any event, bear date as of August 8, 1877, and cannot relate to the date of filing the original application. But the contention that the amendment of August 8th made the application a sufficient basis for the patent in suit is unfounded.’ Striking out the only speech transmitter claimed did not introduce a new speech transmitter. The mode of operation remained unchanged: “As often as one plate is caused to vibrate, just so often will the others vibrate, caused by the break or the weaking of the electrical current.” If by amendment it was intended to claim the single-pin transmitter for the production of any sound, then it would appear, on reading the- amended specification, that Berliner intended to transmit speech by a composite operation of weakenings of the normal current, and breaks of the current. That bréales were to occur in the operation appears from other portions of the amended specification, thus:
“The operation of my invention is as follows: If a circuit of electricity of ordinary strength is made to pass through the plate and the screw across the point of contact, * * * the whole amount of electricity will not be able to pass quietly over the narrow point of contact, and the consequence will be that it will accumulate to a state of tension on both sides of the contact, and the passing over of the current at the point of contact will be so violent as to shake the plate off from the screw. The' shock will be particularly strong at the setting in and at a sudden ceasing of the current, when a cracking sound will be heard from the plate, but a weakening of said current alone can also be observed by making for example a connection within the same current by a wire and the blade of a knife. When scraping the wire end over the blade of the knife, this scraping is distinctly audible on the plate. Her.e the current is never entirely interrupted, yet the minute elevations and cavities on the blade caused by the structure of the steel, and which again cause minute alterations in the intensity of the current are sufficient to shake or vibrate the plate with varying intensity, thus rendering again the same peculiar scraping noise.”
This is followed by tbe language which we have above quoted from the specification. Pages 999, 1000, 109 Fed.
The language here employed, and the figure by which it is illus *1007 trated, have primary reference to a receiver, and not to the transmitter; and this supports the contention of the defendants that the principal invention which Berliner sought to cover was the receiver. If, however, this language is applicable also to the transmitter, and if the passing of the current at the point o£ contact would be so violent as to shake the plate off from the screw, it is apparent that a true copy of the sound waves could not be made upon the line. This would account for the failure of the single-pin instrument as a speech transmitter, and show why Berliner Had recourse to the doublepin instrument. The absence of any specific amendment stating that Berliner contemplated sjieeeh transmission with the single-pin Instrument is a strong indication that he did not intend on August 8th that his amended application should he construed as for a speech transmitter. It is apparent that the apparatus with the double pin completely embodies the single-pin instrument. Berliner has stated in his original application all that he could accomplish with this apparatus. lie also testifies to his failure with it. When he strikes this out, he strikes out all claim for the transmission of speech. Further amendments were made on September 8 and 14, 1877. That of September 8th added a carbon contact, afterwards canceled. But after these amendments the application still described in the original language the composite operation of weakenings and breaks. As Berliner’s novelty is said not to reside in the apparatus but in the mode of operation, this is the vital point. It is of little consequence that the apparatus is shown, if it is not shown operating in the manner described in the patent. The rewritten specification of October, 1877, still preserves a description of the composite mode of operation, with a new claim for the single-pin instrument operating “by either altering or disconnecting said contact at each vibration.” Constant contact of electrodes is first definitely claimed and described in the rewritten application of September 1, 1880. At that date the invention had been in public use for more than two years, as is conceded. I am of the opinion, therefore, that the defendants have established their second defense.
Berliner’s June 4, 1877, application, did not describe the invention of the patent in suit and was never legally amended to do so. Assuming, however, that by the August amendment the application became sufficient to support the patent, and that sucli amendment might he made under proper circumstances, we have still to consider the validity of the grounds upon which the complainant claims the right to amend. There can be no doubt that Berliner had the right to drop out any one of the inventions contained in an application whereby he sought to patent several inventions. That Berliner had the right to drop out claim 4 for the double-pin instrument, and .also such parts of the specification as related solely to that instrument, is clear. The question is whether Berliner had also the right to drop out portions of the text which relate solely to apparatus which he retains in the specification, and thereby change or enlarge what remained. The plaintiff’s brief says:
*1008 “His amenamente simply withdrew from the'specification another invention which had proved practically useless, and incidentally canceled statements in the description of that invention,” etc.
■ This is wrong. Inspection of the document disproves it.
There is quoted by counsel, also, the letter of Commissioner Simonds to the secretary of the interior, dated December 13, 1892:
“These words describe and claim something which is separable from the main part of the instrument, an addition to whát was shown in Berliner’s caveat, and they embody an erroneous conception of the natural action involved. The tyro in electricity knows that now.”
Keferring to the amendment of August 8, 1877, which struck out the passage in question, the commissioner is quoted as saying:
“In making that change Berliner had done two things. He had canceled the description of an unnecessary adjunct. ••= * * He had canceled an erroneous statement of the natural mode of action involved.”
This supports the view that the application was not for the invention of the patent in suit, but stated a wrong and impracticable mode of operation. The commissioner is obviously wrong, however, in stating that “these words describe something which is separable from the main part of the instrument,” — “an unnecessary adjunct.” This is a main part of the instrument, and of the description of the single-pin instrument. It is erroneous to state, as counsel do, that the words are “words of the specification that describe the double-pin instrument.” The entire passage upon which the defendants rely relates solely to a statement of the incapacity of the single-pin instruments, and of the reasons therefor. Following this is a distinct description of the double-pin instrument, and there is no confusion between the two. It is separable from the rest of the document by cutting it out bodily, but in no other way. It is not separable as dealing with a distinct subject. The commissioner was also manifestly in error in justifying the amendment by the rule, “An inventor is not called upon to state and explain the principles of nature involved in the operation of his invention; and, if he does undertake to state them, and thus misstates them, the error is not material;” and, “If the inventor undertakes to state the theory upon which his improvement operates and mistakes it, that fact is immaterial.” If an inventor states that he has invented a new machine that works, and theorizes erroneously as to why it works, he may strike out his theory and stand on his fact; and, in construing his document, we may ignore his theory as surplusage and rely upon other parts of the document. But when this inventor states as a fact that he has found that the instrument will not work, and gives an erroneous theory to explain why, when he strikes out his theory he has no fact to stand on. He has not made the instrument operative by discarding his notions as to the reason for the fact that it is inoperative. Strike out Berliner’s theory, and his reasons for the inoperativeness of the invention, and there still remains his statement that “these simple instruments will reproduce any musical sound .uttered in the neighborhood of one of them, but for the reproduction of special sound, such as speech, they are not adapted”; *1009 and these words can be rejected and amended, if at all, on one ground only, — mistake in writing them, — upon clear proof that this was not intended. As a statement of fact they still remain. Jackson v. Brass Co. (C. C.) 72 Fed. 271 . They cannot be rejected on the ground that they relate to the double-pin instrument and not to I lie single-pin instrument, since inspection shows that it is not so. They cannot he rejected as theory, for there are statements of fact that remain after eliminating all theory. They cannot be rejected as an erroneous judgment as to the capacity of the machine, for the machine was old; and if Berliner had not learned its capacity to transmit speech he had made no advance upon Keis, and was not an inventor. If the amendment of August 8th made the application good, it was by enlargement of the description of the capacity of the single-pin instrument by cutting- off the express limitation that it was only for musical sounds, and thereby converting the application for a musical transmitter into an application for a speech transmitter. I think that it did not have tliis effect; but, assuming that the complainant’s construction of the amended application is correct, it is manifest that the grounds so far stated to justify the amendment are untenable.
Counsel say, also:
“Suppose it were possible that Mr. Berliner, when he filed the specification of June, 1877, thought that there was or might be some value in the break itself in giving that louder, although harsher, sound; can it be contended that he cannot drop that error out when he discovered the contrary?”
But this is inconsistent with the claim that Berliner’s invention was a new mode of operation. So long as Berliner intended to make use of the breaks in the current, lie had not invented a constant-contact speech transmitter. Until he had learned that speech could not be transmitted by a structure in which the two electrodes are not normally constantly in contact, he was following Keis; and, as the supreme court has said, to follow Keis is to fail. An erroneous judgment as to the practicability of the composite operation of weakenings and makes and breaks described in the specification could not be amended as “mistake” or “error.” Manufacturing Co. v. Ladd, 102 U. S. 408 -411, 26 L. Ed. 184 .
Even should we be of opinion that rules of law xjcrmitted the amendments in question, provided Berliner had in fact made the invention, we should still be obliged to find, as a matter of fact, to support this case, that Berliner was mistaken not as to the capacity of his instrument, but merely as to the phrases employed in the application. We therefore consider as the next question, was Berliner’s denial of the operativeness of the single-pin instruinenls contained in the application of June 4, 1877, a mistake of a scrivener? An examination of this question involves also the substantial question, had Berliner, as a matter of fact, invented a constant-contact speech transmitter before June 4, 1877? The burden of proof on the question of mistake is upon the complainant. There rests upon the complainant the burden of overcoming the strong presumption arising from the terms of a written instrument. “If the proofs are doubtful and unsatisfactory, if there is a failure to *1010 overcome this presumption by testimony entirely plain and convincing beyond reasonable controversy, the writing will be held to express correctly the intention of the parties. A judgment of the court, a deliberate deed or writing, are of too much solemnity to be brushed away by loose and inconclusive evidence.” Howland v. Blake, 97 U. S. 624 -626, 24 L. Ed. 1027 ; Insurance Co. v. Nelson, 103 U. S. 544 , 26 L. Ed. 436 ; Coyle v. Davis, 116 U. S. 108 , 6 Sup. Ct. 314, 29 L. Ed. 583 ; Cadman v. Peter, 118 U. S. 73 , 6 Sup. Ct. 957, 30 L. Ed. 78 ; Moore v. Crawford, 130 U. S. 122 , 9 Sup. Ct. 447, 32 L. Ed. 878 . The doctrine of these cases is fully applicable here. A reading of the original application affords no evidence of mistake. The application does not disclose the fact that Berliner had made the invention of the patent in suit, nor that he intended to apply for it. It contains no evidence that Berliner had discovered that speech could be transmitted with the single-pin instrument. The document discloses no evidence of an intention of Berliner to include in it the single-pin instrument as a speech transmitter. I adopt the statement of counsel for defendant:
“It is impossible to read the specification, with its perfectly lucid and orderly description of three specific inyentions, following upon three caveats in which they were described in Berliner’s own words, and not perceive that that is all he wanted to describe in his application,” — excepting, of course, the minor inventions of diaphragms.
If this document be read with Berliner’s denial of an intention to claim his single-pin instrument as a speech transmitter retained, it is perfectly clear and consistent, showing that he intended to cover a variable-pressure receiver, a sparking and recording receiver, a make-and-break double-pin speech transmitter, a concavo-convex diaphragm, a perforated diaphragm, and the two single-pin instruments for the transmission of sounds other than speech; or we may interpret it as proving an intention to claim the single-pin instrument as a musical transmitter. On the contrary, if we read it according to the complainant’s contention that it was intended to cover a single-pin speech transmitter, the whole document is thrown into inconsistency and confusion. It is obvious that the statements concerning the single-pin instrument and its capacity are such as could have come only from Berliner himself. No scrivener would have volunteered such statements. No scrivener would have volunteered such -reasons in support of the statements, nor illustrated them by references to drawings. The alleged mistake does not relate to a matter of form. The statement is of the substance. If there was mistake, it was in the erroneous opinion held by Berliner, and not in any expression of his beliefs or opinions. The .word "error” is used by counsel in a double sense to signify: First, a mistake in expression; second, a mistaken belief. There are two distinct contentions, which should not be confused. We will consider later the contention that Berliner had made the invention of the speech transmitter of his patent, even though he believed on June 4, 1877, that his single-pin instrument could not transmit speech. There is no express reference to the capabilities of the single-pin instrument as a speech transmitter, although, had he *1011 made the invention, Berliner could not have failed to state first and principally what he had accomplished with this instrument in the transmission of speech. Had this invention been made, had the adequacy of this means been proved, it is highly improbable that lie would have made a claim for the double-pin instrument, and a mode of operation which was a reversion to the theory of Reis; or, at least, was intermediate between the constant-contact method of Bell and the current-breaking method of Reis. Berliner testifies that the two inventions of the “variable-contact transmitter” (as he terms it) and the contact receiver, consisting essentially of a diaphragm in electrical contact with a pin or screw, were meant to be covered by claims 1, 2, and 3 of the said application. I am of the opinion, however, that claims 1 and 2 were not intended to describe a transmitter, but merely a receiver; and that claim 3 was merely for two instruments for the transmission of sounds other than speech. It is to be observed that the force which actuates the transmitter is the force of the sound waves; yet claims 1 and 2 contain the clause “and capable of being put in vibration by the action of the electric current substantially as set forth.” This is a characteristic wholly unnecessary to be mentioned in describing a transmitter. Prof. Wright, however, testifies that the mechanical conditions under which each instrument best performs its functions are also very different; “that, if we have a Berliner transmitter with steel points in circuit with a Berliner receiver also with steel points, and adjust the two instruments with care for the best performance of their respective* functions, speech is readily transmitted, received and understood. If, now, without changing the adjustments of either instrument, we speak into the receiver, thus making it a transmitter, and listen at the former transmitter, thus using it now as a receiver, it is found that speech cannot be successfully transmitted and received. Sound is heard, but crude and harsh, with much breaking, and scarcely anything can possibly be understood. These experiments show in a most convincing way that the operations of the forces in the two instruments are by no means identical, — on the other hand, are radically different, — and, furthermore, that the mechanical conditions under which each best performs its function are also very different.” If thus appears that the words, “capable of being put in vibration by the action of the electric current,” imply an adjustment that would practically incapacitate the instrument as a speech transmitter.
The learned counsel for the defendants have made a summary of the contents of the application which so completely covers that document as to negative any reasonable belief that Berliner’s solicitor was mistaken in its preparation. There is no evidence that in the description of the other inventions the solicitor failed to express Berliner’s meaning. The descriptions follow the caveats perfectly, and the claims follow the descriptions perfectly, except as to the transmitter of the caveat of April 14, 1877. Omitting that, the description and the claims are clear, complete and exact. The internal evidence of the application is all against the complainant. Berliner testifies as to the preparation of the application, saying
*1012 that he had made several distinct inventions and sought to save money by putting them into one application; that he had made one invention described in a caveat of March 29, 1877, for a system of magneto-telephony, which he did not believe valuable enough to 'include in the specification; that he intended to insert, “first and principally the invention consisting essentially of a diaphragm in electrical contact with an opposite pin, by means of which I could send undulatory currents of electricity corresponding to sound waves by decreasing and increasing the pressure between said diaphragm and said contact pin. This is described in the caveat filed by me April 14, 1877.” This statement must be read with, great caution. It was made in 1893, 16 years after the event, after continuous controversy in the patent office, and when he is to be considered as an expert. His language is to be given no liberality of construction. If statements of intention made under these circumstances can be of any force as against a written statement under oath to the contrary, yet this statement is insufficient on the ground that it does not meet the point. It is obvious from the specification itself that Berliner did intend to include the single-pin instrument, and to employ “weakenings” as a part of his composite method for the transmission of musical sound. The inquiry is not as to whether Berliner intended to send undulatory currents, but whether he intended to send undulatory currents of the form requisite for speech by the single-pin instrument. In the argument for the Bell Telephone Company ( 126 U. S. 299 -809), Mr. Storrow, interpreting the Bell patent, clearly pointed out that speech is not a necessary result of an undulatory current; that undulatory currents may be used for musical transmission and other purposes. Berliner’s evidence does not prove an intention to claim the single-pin instrument operating throughout its entire range of movement without break, to produce an undulatory current of the form requisite for speech. Before the board of appeal, counsel for Berliner argued: “Can it be discovered from any part of the [specification] that the inventor meant to employ variable pressure as an element? For if he meant to employ it at all, that is enough.” Counsel also refer to “variable-pressure periods of transmission,” with intermediate breaks. Berliner’s testimony may mean only that he intended to send undulatory currents in periods between his intended breaks, or that he intended to send some undulatory currents having “nothing of the nature of each wave and the shape of their curves.” The argumentative character of Berliner’s testimony will be observed upon reading it. It is entirely reasonable to suppose that Berliner, when he gave this testimony, was of opinion that he did intend to- employ undulatory periods as a part of his method of ojieration in connection with the makes and breaks, and that he reasoned that, as he intended to employ these, he intended his instrument for the production of an undulatory current and was'entitled, therefore, to credit for the general invention of an undulatory current transmitter which would include speech transmission, though he had not accomplished it. Though this is erroneous reasoning, it was and is. the reasoning of counsel ,-and may fairly be attributed to Berliner. Testimony as to *1013 an intention existing 16 years before is of very slight weight at best, even when in direct and positive form; but when it may be based upon an “interpretation,” and is equivocal in expression, it can have no force against a sworn statement in writing. It is claimed that mistake arose from speedy preparation by an incompetent solicitor’s clerk, and because this clerk had difficulty in understanding Berliner (who was a foreigner) on account of his imperfect accent. The charge that this statement appears in the specification through any fault of this clerk I believe to be unjust and untrue. It is certainly not proven. Berliner applied to a solicitor on May 13, 1877. His application was sworn to on June 2, 1877, and filed on June 4, 1877. He was turned over to Coombs, a clerk. Berliner says, “He made copious notes, and I remember giving him a few notes of mine.” Coombs, the clerk who wrote the application, stated that he got explanations from Mr. Berliner previous to finishing the rough draft of the specifications; that they had an imperfect model or instrument, helped out with rough sketches and explanations; that at the time of drawing the specifications he had a general knowledge of electricity, but very little knowledge of speaking telephones; that Mr. Berliner’s telephone was the first one be bad ever seen or handled; that be found it rather difficult to understand Mr. Berliner, on account of bis imperfect pronunciation, and, further, “because the subject was strange to me.” The testimony as to the actual fact of mistake is remarkably meager. Nor is it clear as to the amount of time spent in preparing the specification. Berliner' testifies to a hurried examination of the rough draft of the specification, but that be did not read the final draft. That there was a mistake, we have no other evidence than the vague statement of Berliner. Coombs testifies to no mistake. There is evidence that Coombs was furnished with notes and explanations. No evidence is offered as to what those notes were, nor as to when they had, been prepared. < Berliner himself was not uneducated, but a man of intelligence and of unusual skill and facility in the use of language, and fully competent to have prepared complete instructions to Coombs. He had formerly written caveats by his own band, viz. one of March 29, 1877, one of April 14th, one of April 30 th, and one of May 9th. In the summer or fall of 1877 be himself drew an application for patent No. 199,141, which is in perfectly good form, and conducted all the proceedings himself. The evidence as to speed in preparation of the application by a solicitor ignorant of the subject is evidence of the completeness of the instructions given by Berliner to Coombs. There is no evidence as to whether the caveats or copies were in the hands of the solicitor; but the application follows closely those caveats, and shows no error of Coombs in respect to any other invention. In fact, the only direct, evidence of mistake is Berliner’s own testimony. Berliner does not testify that he instructed or informed Coombs that be had found that this instrument was capable of transmitting speech; nor does Coombs testify that there was any information offered to him as to the capabilities of the single-pin instrument for speech transmission. It certainly has not been made to. appear that any mistake was made *1014 by Coombs in transcribing or putting into form any fact or statement communicated to him by Berliner. Coombs did his work thoroughly and accurately as to other inventions. Presumably' he did so as to this. Berliner does not testify that he gave to his solicitor any documents inconsistent with the specification as filed. He does not state that any specific phrase in the document differs from what was stated by him to the solicitor. He does not state that he did not himself write or authorize, the passage in question. He does not state that it was his intention to describe in his application a speech transmitter competent for the production of sounds without make and break. He, is not called upon to deny categorically that any specific statement made in the specification was authorized by him. It was the duty of the complainant to prove in detail, and to the best of its ability, just what the mistake was, and how it occurred. Counsel say, merely, Berliner was a German, his solicitor was incompetent, the application was hastily drawn and hastily read. They do not prove what the mistake was. They do not prove that Berliner did not fully authorize the statement that the instruments were not adapted to transmit speech. Expert interpretation is no substitute for testimony as to facts. The oath of Berliner to his application completely overcomes his vague and uncorroborated oral evidence as to the actual fact of mistake. It would be contrary to the rules of law to allow a sworn statement to be swept aside by incomplete, loose and inconclusive evidence of this character offered by the party whose duty it was to.produce all procurable evidence on this point. Berliner, however, has not only the burden of proving that mistake was made, but also the burden of accounting for his failure to discover it. If mistake was made, it was on June 2d. It was not discovered until August. We find, however, in the conduct of Berliner immediately after the filing of the application, evidence that this was no mistake. On June 27th, more than three weeks after the filing of the application, an amendment was made relating to the double-pin circuit breaker. On July 14th another amendment was made relative to the double-pin instrument and to the air-discharge instrument, and on August 8, 1877, the double-pin instrument was stricken out. From June 4th to August 8th there stood on the files in the patent office a complete denial of the invention now claimed, and Berliner was examining and amending his specification in relation to the double-pin instrument, and during this period failed to discover any mistake. He attempts to account for this, saying that he had a badly copied letter-press copy of his specifications, “but in the course of time I would now and then, by fits and starts, pick up this letterpress copy, open its pages in a haphazard fashion, and then I would read passages of the specification. In that manner I would discover parts or passages which did not seem to sufficiently express all I meant to say, and all that I had thought I had communicated to Mr. Coombs. After discovering such deficiencies, I would go to Mr. Norris’ office and ask that the objectionable portions be. amended or that additions would be made, which was done by Mr. Norris. At another time this would be repeated. I wquld come across another pass *1015 age which I thought needed amending, and I would again go to Mr. In orris to have it amended; and in that way the number of amendments referred to is accounted for.” Hot one of the amendments made by Mr. Horris up to August 8th bears this out. The first amendment of .June 27, 1877, contains no corrections, but an additional description of his make-and-break double-pin instrument, and a new claim for the bent spring. The second amendment of July 14th substitutes the terms “spring made of steel or other inetal” for the words “steel spring,” and there is contained an additional statement, not a correction, in reference to the air-discharge instrument. On July 27, 1877, is another addition, and not a correction, concerning the aii-discharge instrument. Ho one of these actual amendments corroborates the' testimony of Berliner that he discovered objectionable matter in the expressions of Coombs, and therefore made amendments. These amendments, on ihe contrary, contradict his testimony. It is entirely improbable that 'these passages in the original draft could have escaped the attention of a man so skillful in the use of the English language and so intelligent as Berliner; that he could have examined the document for the purpose of mailing the specific additions that he did make; and that he could have overlooked the denial of the very essence, of the invention which he claims. If there is any degree of probability in this statement, the preponderance of probability is so strong against it that this evidence must be rejected upon the ground of its weak and inconclusive character upon the issue of mistake. He testifies that his first discovery of the error of the section dealing with the secondary pin, double make-and-break operation was in the early part of August, 1877; that, happening to pick up the copy of the specification, he immediately noticed “that Mr. Coombs had mixed the matter up considerably, and that the passages referred to did not express what I had invented, and in fact misrepresented it. At first, I thought I would amend this part of the specification so as to make it read right and convey the correct meaning, such as I had laid it down myself in the caveat of May 9, 1877.” He then testifies that he had by that time concluded that the double-contact make-and-break instrument did not amount to much, and resolved to strike out the whole matter relating to it. It is ap parent, however, that even then, when he learned of this vital error, he did not change the conception of a single-pin instrument operating as a transmitter by make and break, for his amendment of August 8th still left the statement that the break or weakening of the electrical current wrns the method of transmitting sound. Prior to any amendment in which, by any liberality of construction, we can find a constant-contact speech transmitter, the

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/8744825. Public record. Not legal advice.