# Appendix — Motorola, Inc. v. Armstrong > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385603_0612%3A2 ## Record - **Collection:** Supreme Court brief - **Document type:** Appendix - **Published:** January 1, 1967 - **Citation:** 389 U.S. 830 ## Text — sean tis ——— Eee Ge ees la ie APPENDIX ‘A. RM eee OPINION OF THE COURT OF APPEALS. In THE Unrrep Srares Courr OF AppEais, '* For the Seventh Circuit. ? No. 14830 Szrremnen Term 1966—Janvany Session, 1967 ‘Estner _ AnMstnone, ) Appeal from the Plaintiff-Appellee, |. care States Dis- | triet Court for the | vs. 7 | Northern District ' Mororona, Inc, pon oe we East- Defendant-A ppellant. 7° 7 _ February 6, 1967, . Before Hasrinas, Chief Judge, and -Famewm and Cummines, Circuit Judges. ee: Cummines, Circuit Judge. This patent infringement action concerns three frequency modulation (FM) patents owned by the late Major Edwin Armstrong. The plaintiff } is his widow and executrix. The three patents involved are No. 1,941,069 (’069) — covering the wideband FM system, No. 1,941,066 (066) covering the synchronous heterodyne method for FM reception, and reissue patent No. 21,660 (°660) covering & preemphasis and deemphasis system for use in FM. The .@ 9069 and ’066 patents issued on December 26, 1933, and reissue patent ’066 issued on December 17, 1940. ; -. Inanexhaustive opinion, District Judge Robson held that: the three patents were valid and infringed by Motorola, - Ine.’s FM receivers. He also held that Motorola’s FM ~ communication equipment infringed the ’069 and ’066° patents. For a complete description of the ‘history of this litigation, reference is made to the District Court’s exten- . give findings reported in 230 F. Supp. 337 (N. D. Ill. 1964). The same patents were involved in Armstrong v. Emerson Radio and Phonograph Corp., 179 F. Supp. 95 (S. D. N. Y. 1959), where, in a very thorough opinion, Judge Palmieri also held them valid and infringed. _ » + Jn the'present. case, with the consent of the parties, the _ District Judge. appointed George R. Town, Dean of the College of Engineering at Iowa State University, to act as his impartial technical expert. Dean Town filed a report on the technical issues in the case and excerpts from his report were later received in evidence. — To avoid an unnecessarily voluminous opinion, the facts of the present cage will be discussed in conjunction with the contested issues. Bécause of their ready accessibility, - the 339 ‘findings below (230 F. Supp. at pp. er will: only be highlighted here. Rpesedt: Motorola first claims that by December 1948, when notices - of infringement were sent to Motorola and others, Arm- strong was. estopped from suing Motorola on these three patents. Based on 36 findings of fact, most of them care- fully ‘annotated by references to the trial record and the exhibits, the District Court rejected this defense. Unless clearly erroneous, those findings are binding on appeal. Armour & Co. v. Wilson & Co., 274 F. 2d 143, 149, 156 (7th Cir, 1960). In our view, the findings bearing on the estoppel defense are not, clearly erroneous. Based on those findings, the District Court properly rejected the estoppel defense. The related defense of laches, rejected below, was not re- newed in this Court. age , In 1940, Motorola decided to manufacture and sell FM apparatus for police and mobile communication. In the same year, Motorola decided to add FM broadcast re- ceivers to its line of home receivers. At the time Motorola. } entered the FM market, Major Armstrong was acknowl-’ edged as the inventor of the wideband FM. system. _. Motorola’s predecessors as FM apparatus manufacturers had taken licenses under Major Armstrong’s FM patents. Upon Motorola’s inquiry in April 1940, Major Armstrong sent appropriate patent license forms to Motorela. He ‘advised Motorola that his ’069 patent covered the FM system, that his 066 patent was important in the receiver ' field, and that he owned other patents useful in the FM system. Motorola knew that Major Armstrong expected . to receive royalties on a uniform basis from all manufac- turers of wideband FM apparatus and that he was actively engaged in establishing a uniform licensing system. Early in 1941, Motorola commenced license negotiations wy with Armstrong. In May 1941, a Motorola representative | ' * stated to Radio Corporation of America (RCA), which } had not taken a license under thie Armstrong patents, that ; oe Motorola might take a*license thereunder if Armstrong would reduce his royalty rate from 24% and 3% to 1%. The license negotiations between Armstrong and Motorola terminated in August 1941, when Major Arm- strong advised Motorola’s counsel that he was designat- 1. Major Armstrong’s early FM licensees included General Electrie Company, Zenith Radio Corporation, Scott Radio -Labo- ratories, Inc., Stromberg-Carlson Company, Stewart-Warner Cor- poraton, Radio Engineering Laboratories, and F. M. Link. | . 4a x -ing dela lawyer, Alfred McCormack, to. cuties further negotiations with Motorola for a license ‘under Armstrong’s‘ patents, Instead of pursuing those negotiations, Motorola, on advice of its patent counsel, decided late in 1941 that ' . it was not infringing Armstrong’s patents and therefore would not take a license from him. In a May 1946 letter to American Telephone & Telegraph Co., Motorola reiterated that it was not infringing the. Armstrong FM patents. In March and April 1941, Armstrong advised the Secre- taries of War and of the Navy respectively that ‘‘so long as the present national and international emergency shall exist’’, he would waive all royalties under his FM -patents - with respect to FM apparatus manufactured for the United; ' States for military purposes. This waiver was a matter. of public knowledge. Throughout World War II, Majer Armstrong was primarily engaged in research work for the Armed Forces, as was well known. During World War II,.Motorola and other i manu- facturers ceased the production of home receivers and other equipment for broadcast purposes. However, from .1941 through 1945, Motorola did sell FM equipment for: ‘police © ‘ communication under War Production Board releases. It sold no television receivers until 1947. : ~In. January 1946, Western Electric Company took an Armstrong license: for FM mobile communication appara- ~ tus. Until 1950, Western Electric paid royalties to Arm- strong with respect to such apparatus, including substantial quantities that Western Electric purchased from Motorola. In June 1946, Motorola ’s patent counsel protested Western. Ellectric’s. payment of Armstrong royalties on Motorola’s apparatus, stating that ‘‘over the past six years * * * it has - been and still.is our considered opinion that Motorola’s FM equipment does not infringe any valid Armstrong patent. On this basis, Galvin [Manufacturing Company, predeces- - ° ‘ - 7 : : “ see sence ia - 5a . sor to Motorola] has not taken a license from Major Arm- — ' strong.’’ oy AME ee ee -- World War II ended on September 2, 1945, but the official cessation of hostilities did not occur until December 31, 1946 (50 App. USCA, p. XXII). By the end of 1947, the post-war market for FM receivers and television re- ceivers reached significant proportions. At that time, Motorola entered the-market and sold substantial quan- '. tities of such receivers in competition with Armstrong licensees.* Motorola’s .other competitors ‘included RCA, Philco Corporation, Emerson Radio and Phonograph Cor- - poration, and Admiral Corporation. These four manv- facturers had not’ been licensed by, Major Armstrong either. In July 1948, a few months after the resurgence in sales o of FM apparatus, Major Armstrong filed suit against RCA wey rer for infringement of the ’066, 069 and reissue ’660 patents. | Six months thereafter, Major Armstrong sent a written 1 notice of infringement to Motorola and other alleged in-” fringers of his FM patents, pen tae. In January 1949, RCA informed its licensees, including Motorola, that RCA would complete the Armstrong-RCA litigation before any other contemplated patent infringe- ment suits could be started and completed by Armstrong. - From 1953 to 1957, because of unfavorable market con- ditions, Motorola discontinued the manufacture and sale _ of FM broadcast receivers, The present complaint against ' Motorola was filed in January 1954, The Armstrong suit" against RCA was settled for $1,040,000 in December 1954.’ Armstrong’s complaint against. Emerson was filed in De- cember 1953, and a judgment against Emerson was entered in September 1959. See 179 F.Supp.95. The District Court found that Motorola’s refusal to take 2. These Armstrong licensees included Westinghouse Electric Corporation, Hallicrafters Company, and the major companies - listed in note 1, supra. o * ° ° @* . — immarmenoTTEngerend RENE CIEE BROT NARRATOR irk ANAS yt SO . . 6a. a license from Major Armstrong was based on its opinion © that it was not infringing his patents and was not in re- _ liance upon any acquiescence by Major Armstrong. In- stead, he openly maintained that. all manufacturers of wideband FM apparatus should be licensed by him. There- fore, there. was no basis for Motorola’s claim of estoppel.. Our study of the record shows that. the District Court’s - findings may not be disturbed because they not only satisfy the ‘‘clearly erroneous’”’ rule but are supported by sub- stantial evidence. While actively engaged in war work, Major prio was justified in not suing any inftingers. During the period of World War II, ‘‘all reasonable postponement - and suspension of litigation was a public duty’’ (Alliance ' Securities Co. v. De Vilbiss Mfg. Co., 41 F. 2d 668, 669-670 (6th Cir. 1930); Harries v. Air King Products Co., 87 F. Supp. 572, 588-589 (E. D. N. Y: 1949), affirmed, 183-F. 2d 158, 159 (2nd Cir. 1950)). Moreover, Armstrong’s 1948 suit against RCA justified Armstrong’s refraining from suing Motorola.simulaneously. As stated in Montgomery Ward & Co. v. Clair, 123 F, 2d 878, 883 (8th Cir. 1941) : ' An inventor is not required to litigate the validity of his patent against every possible infringer. A suit . pending to sustain the validity of a patent is notice to all infringers of the insistence of the patentee upon his claimed rights. J ny Learned Hand enunciated this same proposition in (Clair v. Kastar, Inc., 148 F’. 2d 644, 646 (2nd Cir. 1945), © certiorari denied, 326 U. S. 762, where he also pointed out that the ‘‘infringer’’ should have brought an action for a — declaratory judgment. Here too Major Armstrong’s and : his lawyer’s 1941 correspondence with Motorola was suffici- ently threatening to give Motorola standing to seek a judg- ment of non-infringement. Cf. Sticker Industrial Supply Corp. v. Blaw-Knox Co., 367 F. 2d 744 wy gi 1966). . Ta . In Lebold v. Inland Steel Co., 125 F. 2d 369, 375 (7th Cir. 1941), certiorari denied, 316.U. 8. 675, Judge Lindley thoroughly explored the estoppel doctrine. As noted there, . “‘Estoppel arises only when one has so acted as to mis-- ' _ lead another and the one thus: misled has relied on the. ee " action of the inducing party to his prejudice.’? Here Major - Armstrong never abandoned his position that Motorola and other companies not licensed under his FM patents were -infringers. Also, Motorola did not rely upon any inaction of Major Armstrong but instead decided in late 1941 that . it was not infringing his patents and therefore would not take a license. Accordingly, the defense of estoppel must fail: None of the estoppel cases upon which Motorola re- ' . lies departs from the principles enunciated in the Lebold case. Since they are all distinguishable on their’ facts, they are of no avail to Motorola. SOS Validity of the Three Patents Motorola contends that the three patents in question are invalid. ‘Its first ¢laim is that the °069. patent is invalid as indefinite. A similar argument. was rejected in Armstrong v. Emerson Radio and Phonograph Corp., _ 179 F. Supp. 95, 128 (S. D. N. Y. 1959) and was also re- jected in the District Court here. Motorola asserts that the claims of ’069 are indefinite because ‘‘lacking a numerical value for the bandwidth.’’ The claims provide that the frequency swing of the transmitter shall be ‘‘substantially greater in extent than the frequency range of good audi- bility”, and that the receiver shall be fully responsive to such swings but substantially nonresponsive to lesser fre- quency variations caused by disturbances. In other words, the claims of the ’069 patent called for operation in a band- width several times greater than the conventional and optimum bandwidth known in the prior art. : ¢ . . . . i. e *. ¢ ‘ . _- sd . ’ ‘ a —_——— ee Se ee a RT Oa maT OTE ON re te > rete Sar _ - 8a _ Until Major Armstrong’s discovery, the court’s expert, — Dean Town, stated that to reduce noise, the bandwidth of circuits was decreased. Major Armstrong first discovered - that noise reduction could be effected by a wide-band circuit _ system, and this was the teaching of the ’069 patent. Since the ) Awo claims of the. ’069 patent distinctly point out and distinctly claim the art of eliminating or suppressing noise in radio by the wide-band system, it was unnecessary to. -specify any particular variation in cg See 35 USC § 112. Armstrong is entitled to patent iiahitsbla on all band* _ widths at which his discovery will work well. . To restrict . ’ him to only one precise width would bétq destroy the value - of his patent, since anyone who wanted té evade it could do - go simply by manufacturing receivers that operate at any. - other bandwidth. Motorola contends that the ’069 patent was ‘anticipated by Armstrong’s prior art patent No. 1,941,447, under which . Motorola" was purportedly licensed by RCA and others. However, the uncontroverted testimony shows that the ’447 patent taught that to reduce noise, the bandwidth is made a8 narrow as possible. A receiver built under the °447 patent could not operate over a bandwidth several times _ the amplitude modulation (AM) bandwidth. Since the ’447 patent did not disclose the wideband F'M system, it did not anticipate the "069 patent and is of no support to Motorola. Motorola next assails the validity of the ’066 patent covering the synchronous heterodyne method for frequency modulation reception. This patent involved heterodyning or combining th ‘received PM wave with itself to reproduce the signal. the validity of:this patent was upheld in Armstrong/v. .. Emerson Radio and. clea a Corp., 179 ‘men a ¥ age at the trial” Motorola did not —— the fact es ¢ j eee mn E ! * a 4 . ” .s) that Major Armstrong had actually so used it. Armstrong’s..- amendment to his ’066 application disclosed that the ’066 circuit had been working in reception across the continent ' for some time; this too was undisputed by Motorola in the | , District Court. It is immaterial that patent ’066 did not a | disclose the particular receiver embodying his synchronous: A eR tree nn heterodyne method that later achieved commercial success, for the validity of a, patent is not impaired by the fact that. experimentation or the exercise of judgment is necessary to . obtain the particular results desired. Hiidreth v. Mastoras, 257 U. S.. 27, 34; Binks Manufacturing Co. v. Ransburg Electro-Coating Corp., 281 F. 2d 252, 256-257. (7th Cir. " 1960), certiorari dismissed, 366 U. S. 211. Motorola also relies on ‘prior references as disclosing the synchronous heterodyne method for FM reception. We agree with Judge Palmieri in the Emerson case and, with Judge Robson here that Horton patent No. 1,856,707 - (issued May 3, 1932) did not disclose the synchronous heterodyne method for FM reception and did not anticipate the.’066 patent. Also, it should be noted that the Board of Appeals of the Patent Office held that Armstrong was the prior inventor of the ’066 synchronous heterodyne method for FM reception and was entitled as against RCA to the instant claims commensurate with the full scope thereof. In that interference, proceeding, Crosby had disclosed a circuit that was essentially the same as Armstrong’s and ~» had also disclosed another circuit that ws essentially the same as the Foster-Seeley circuit employed by Motorola. In - deciding the interference in favor of Armstrong, the Board _ of Appeals held that the two forms of circuit were equiva-| lent. Since Motorola’s ‘ratio detector and Bona circuit are: _ essentially the same as the Foster-Seeley circuit, Motorola’s use of the Foster-Seeley circuit, the ratio detector and the Bond circuit is within the broad range of: equivalents to whieh the pioneer’ 066 patent was entitled. Hildreth v. ; | acsiaclanl gid U..8. 27, 36. | ‘00 ¢ Motorola contends that the 1066 bout is. invalid for \ overclaiming, on the ground that the District Court. con- . 8trued the claims to cover an entire receiver. Actually, the \ court only construed the claims to cover this synchronous \ terodyne system for the detector circuit of an FM re- iver, so that. Motorola’s contention must be rejected. Motorola urges that the reissue ‘patent 660 is invalid on the ground that it claims an invention which was not ed or defined in the original patent. It should be noted ° thatthe Board of Interference Examiners found that Arm- . strong’s proofs were persuasive that he had first used the - preemphasis and deemphasis system disclosed in the origi- nal patent as early as 1936. In this reissue patent, the receiver claims cover the structure and operation of a wideband FM receiver with deemphasis circuits and a wide _ admittance band. The only change iti the specification of . the reissue patent as comparéd with the original patent No. 2,215,284 was to substitute ‘‘improvement in both the fidelity and signal to noise ratio’’ for ‘‘increase in both the ie “a fidelity and noise level.’’ As found by the District Court,” the only significant difference between claims: 1, 2 and 3 of the reissue patent, as compared with claims 4, 5, and 6 whiclf appear in the reissue patent but not in the original patent, is that claims 1, 2 and 3 cover the transmitter and receiver ' in combination, or a method of transmitting and receiving, whereas claims 4, 5 and 6 cover a receiver, or a method of . reception for receiving an FM wave pre-distorted as: pro- vided in claims 1, 2 and 3. Therefore, the reissue patent does not claim a completely different invention” but satis- - fies: the terms of the then reissue statute (35 USC, former Sectiorf 64) providing that a patent for the same invention may be reissued to the patentee in certain circumstances. 8. po réissue of defective patents is now r governed by 35 USC 51, but the parties agree that both this prpvision and former 64 Tas aighal that the reissue be confined to the invention | ledosed in the original patent { lla. Here the receiver claims specify that the receiver be adapted for reception of a preemphasized wave, but such | wave would’be produced only by a transmitter operated as disclosed: in the original. patent. Ydths Motorola also relies on a J uly 1939 article by Messrs. . Fyler and Worcester, but their publication only respected | such information as had been derived by their employer, the General Electric Company, from Major Armstrong. In | addition, the Fyler and Worcester article was not. published more than a year before the original application for patent No. 2,215,284, and it may not be used to invalidate under 35 USC 102(b) the reissue patent resulting from the reissue _ application of October 21, 1940. Union Asbestos & Rubber _ Company v. Paltier Corporation, 298 F. 2d 48, 51 (7th Cir, 1962), certiorari denied, 369 U..S. 865. ° Infringement. _ The District Court concluded that all three patents in . question were infringed by Motorola. Judge Palmieri reached the same conclusion as to Emerson (179 F. Supp. at pp. 128-129). We agree with the conclusion that Motorola did infringe these patents. : | The bandwidth of the circuits of the Motorola FM broad- cast television sound and communication receivers ‘are _ adapted to operate in an FM system with a deviation ratio - of five or more for the audible signals to be transmitted and _ Teproduced. These are all wideband FM receivers, the’ bandwidth being about five times that required in conven- tional radio signaling. Since such increased bandwidth is in accord with the ’069 claims, Motorola clearly infringed the ’069 patent. ve & tvesge: sss In comprehensive findings, supported by references to the record and exhibits, the District Court pointed out how Motorola television sound receivers TS-4 and TS-5 are 12a _ especially adapted for use in the Armstrong wideband FM . system and have no practical use except to receive FM waves sent out by television sound transmitters. The effec- . tive bandwidth of each of these receivers is at least 50 kilo- cycles. We concur in ‘those findings and the a con- clusion of infringement. —. : In equally careful findings, the District Court. = shown how Motorola’s FM broadcast receivers HS87 and-HS89 are capable of receiving FM waves sent out by FM broad- _ east transmitters, and that each of such receivers has an -effective bandwidth of at least 150 kilocycles. Since these receivers were also especially adapted for use in the Arm- - strong wideband FM system and have no other practical use, the District Court correctly concluded that they also. violated patent 7069. _As to the Motorola. 25-50 Me and 152-162 Me ¥M com- munication equipment, the District Court noted that their effective bandwidth was at least 30 kilocycles. Since they too were found to be an application of Armstrong’s wide- band FM system, the District Court properly concluded . that they infringed patent ’069 covering the wideband FM _ system. As to both the ’069 and ’066 patents, it is signifi- ’ cant that the Western Electric Company paid royalties to Armstrong from 1946 to 1950 with respect to Motorola two- way FM mobile communication equipment purchased from Motorola and sold by Western Electric. Being a two-way system, this equipment clearly infringed the system. claims . of the two patents. With’ respect. to: all the foregoing spintiten, Motorola employed a radio frequency bandwidth ten times. the © | range of audible. frequencies carried by the band. This was the same range used in Major. Armstrong’s example — in his 069 patent and eee anemed Motorola’s ) infringement. | al st hal ° : lt : 13a _Motorola argues that the claims of patent ’069 involve a method of transmitting and_-reeeiving*FM waves, so that Motorola could not have infringed ’069 except in its two-way police communication system. In this connection, Motorola argues that listening with its receivers to a licensed Armstrong station puts Motorola’s . receivers within the licensed combination (i.e., transmitter and receiver). But if the listening is unauthorized, then the use of the Motorola receivers infringes the combination patent. Here Armstrong’s transmitter licenses granted no license for reception (except for monitoring by the licensee). Therefore it follows, even in accordance with . the understanding of Motorola’s briefs, that Motorola’s testing ‘of its receivers by unlicensed listening to the. FM broadcasts constituted direct infringement. Motorola - argues that its receivers could not violate the Armstrong system patents on transmitters and receivers. If this argunient had merit, Armstrong would not have succeeded in garnering so many prominent and patent-conscious manufacturers as receiver-licensees ! Section 271(a) of the Patent Act (35 USC § 271(a)) provides that ‘‘whoever without authority * * * uses any patented invention’’ is an infringer. Here Motorola’ tested ‘its receivers by tuning them to transmitters employing the Armstrong FM teachings. This constituted a ‘‘use’’ of the system patent. because the radio waves generated by the Arm- strong transmitters were received and converted into | | sound by the Motorola receivers. Motorola concedes that an unlicensed owner-user of an FM transmitter and re- ceiver would violate the. Armstrong system patents (apart from questions about their: validity and applicability). Section 271(a) of the Patent Act does not require owner- ship of the system before infringement can occur. The test under the Act is whether there has been use of the system. As shown, such use occurred when Motorola | * tested these receivers. oe 14a & As seen, Motorola became a direct infringer by testing - jits receivers commercially by tuning them to FM broad- east signals and listening to them. ‘Cf. Radio Corporation . ‘of America v. Andrea, 90 F.2d 612, 614 (2nd Cir. 1937). Motorola also became’ a contributory infringer by selling its receivers to unlicensed listeners of ,FM broadcasts, for whoever sells a component of a patented system, knowing that it is especially made for use in infringement of the patent and not. for ‘other use, is liable as a con- tributory infringer. Aro Manufacturing Co., Inc. v. Con- _ vertible Top Replacement Co., Inc., 377 U. S. 476, 482-493 ; 35 USC § 271(c).: Motorola attempts to assert that. it aid not have the requisite knowledge that is an element of contributory infringement, but the record belies this. In 1940, Motorola knew that Armstrong expected to receive royalties on a uniform basis from all manufacturers of FM apparatus. Armstrong had even sent Motorola: his form of license for home receivers.. Armstrong’s patents were of such importance that they were the talk of the industry, and Motorola knew that receivers like its own were licensed. ‘by Armstrong. Thus 35 USC §271(c) is satisfied. In addition, Armstrong’s two notices of infringement (dis- cussed infra under Notice of Infringement) satisfied the contributory infringement knowledge requirement. - As to the ’066 synchronous heterodyne method patent, the District Court found that certain Motorola receivers . ineluded a balanced detector circuit known as the Foster- - Seeley discriminator, that other Motorola Teceivers em- ployed a balanced detector known as the ratio detector, - and that still other Motorola receivers employed a bal- anced detector cireuit known as the Bond circuit. Motor- ola claims that the ’066 patent could not support claims that covered use: of circuits such as. the Foster-Becley" distelminati, the detector ratio, and the Bond circuit. , re A seat ts tu eee 15a iin. ‘such an argument was rejected by, the Board of Appeals of the Patent Office during the proceeding i involving claims 8, 9°and 10 of the ’066 patent in an interference with Crosby patent 2,229,640 owned .by RCA. The District Court was of ‘course entitled to consider this interference decision and to give it appropriate weight. Radio Corporation of America v. Radio Engineer- ing Laboratories, Inc., 293 U.S. 1, 7. Since the synchronous heterodyne method has been embodied by Motorola in all of its FM receivers, the conclusion that seen 066 had been infringed was proper. With respect to. reissue patent 660 covering a pre- emphasis and deemphasis system for use in FM broad- casting and television sound broadcasting, the District Court found that Motorola’s HS87 and HS89 FM broad- cast ‘receivers and its TS-4 and TS-5 television sound receivers were designed for use in a system having an amount.or degree of preemphasis and deemphasis dis- ‘closed in the reissue patent. ‘Therefore, the District Court correctly concluded that Motorola had infringed claims 1, 2, 4 and 6 of reissue patent ’660. As to the receiver claims (4 and 6) of reissue patent °660, Motorola has argued only that invalid claims cannot be infringed. Thus Motorola concedes infringement of such claims if, as we have already held, the claims were valid. ‘For the’ . reasons given above with respect to direct and contribu- tory infringement of patent ’069, as to reissue patent . ’660, Motorola was.a direct and contributory infringer under thé system claims 1 and 2 (transmitter and re- _ ceiver) and a direct infringer under receiver claims 4 and 6. 16a ' Patent Misuse. Motorola argues that Armstrong’s receiver licenses constituted a misuse barring any recovery on receivers. _ This argument was rejected below and in the Emerson case (179° F. Supp. at p. 128). Motorola advances two separate grounds to support its. misuse argument. One ground is that Armstrong’s licensing of receiver manu- facturers under the system patents attempted to extend the patent monopoly to an unpatented article, namely, the. receiver. We reject this ground because we. have ' already held that Motorola’s unlicensed: use of receivers does infringe the system claims. ‘Motorola’s other ground to. support its lew of . - thisuse is that'it was unlawful for Armstrong to. restrict the classes of consumers to ‘whom manufacturer-licensees could sell: - Motorola has stated no authority for the © proposition that unlawful license restrictions protect .a non-licensee (such as Motorola) from infringement lia- bility. However, under General Talking Pictures v. West- ern Electric Co., 304 U. 8S. 175, 305 U. S. 124, the license restrictions were lawful. There it was determined that: ‘the patentee may grant a license ‘upon any con- dition the performance of which is reasonably within. the reward which the patentee by the grant of the - patent is entitled to secure.’ The restriction here imposed i is of that character. The practice of grant- ing -licenses for a restricted use is an old one, see Rubber Company v. Goodyear, 9 Wall. 788, 799, 800; Gamewell Fire-Alarm Telegraph Co. v. Brooklyn, 14 F. 255. So far as appears, its legality has never been questioned.’’ (305 U. S. at p. 127.) There the Court noted that the parties had even stipulated : that it was a common ae to grant such licenses | (idem). _. Motorola’s analysis of later cases has not coneinesd , 17a us that thé General Talking Pictures case is no longer good law. In any event, it was certainly good law at the time that Armstrong was granting the licenses assailed by Motorola. Armstrong was certainly not guilty of any unclean hands by relying upon the then patent law in _ formulating its licenses. The licenses in that case were of greater anti-competitive effect than those here. Also the accused infringer,.The American Transformer Com- pany, was a licensee and surely in a better position to defend against a charge of infringement than a non- licensee such as Motorola. ‘The principal authority ad- vanced by Motorola is United States v. Univis Lens Co.,. 316 U. 8. 241, but that was a Sherman Act case in which the patentee had been using his patent to achieve resale price maintenance and therefore the case is not in point.‘ Notice of Infringement. } The District Court found that Armstrong’s letters of December 15 and 20, 1948, constituted notice of infringe- ment.’ Judge Palmieri reached the same- conclusion with ' respect to the December 20 letter in the Emerson suit ( 179 F. Supp. at p. 99). The letter of December 20 notified Motorola that it was infringing °066, ’069 and reissue patent ’660 ‘by practicing methods, and by making, using and selling — apparatus, embodying inventions claimed in said patents ‘ 4. “Motorola’s reply brief relies on Chicago. Metallic Manufac-. | turing Co. v. Edward Katzinger Co., 1389 F. 2d 291, 293 (7th Cir. Pt affirmed, 329 U. §. 394, but there, as in Univis Lens Co., the licenses in Philad Co. v. Lechler oratories, Inc., 107 F. 2d 747 (2nd Cir. 1939). Also, this Court did not pass upon the validity of the Katzinger patents. ptr : 5.’ The question whether Motorola received constructive notice Prior to December 20, 1948, by reason of patent marking on ‘apparatus sold by Armstrong’s licensees was reserved for ear- ing at the accounting and for determination by the District Court ieveatter (230 F. Supp. at p. 380), That question is not reached ere, , ai ’ - 18a and each of them.’’ This letter enclosed a longer letter or. statement dated December 15, 1948, concerning the . three patents. The four-page December 15 statement of Major Armstrong explained that the transmitter and receiver covered by patent °069 were complementary, » and that no FM receiver manufacturer could determine _. whether its receiver worked without utilizing a trans- . mitter and receiver, working together, according to the method and teachings of ’069. This letter predicted that the courts would protect Armstrong’ s invention from | dircet infringement or contributory infringement and stated his intention to enforce his three patents ‘‘against infringing manufacturers.’ _ The applicable statute (35 USC § 287) merely requires — ‘‘proof that -the ‘infringer was notified of the infringe-' ment and continued to infringe thereafter.’’ The present notice of infringement is sufficient under the statute. Smith v. Dental Products Co., 140 F. 2d 140, 151-152 (7th Cir. 1944), certiorari denied, 322 U. S, 743. There we held that the notice provision of-the statute (then 35 USC | § 49) was satisfied if the infringer were given the same information as the statute requires: for patent marking. The marking need only contain the word ‘‘patent’’ (or ‘‘nat.’?) and the number of the patent (35 USC § 287), and the December 20. letter of course contained this © information. Cf. Dunlap v. Schofield, 152 U. 8. 244, 247-248. Since these two letters show ‘‘that the alleged contribu- tory infringer knew [from the letters] that the com- ne bination for which his component was especially designed was both patented and infringing’’ (Aro Manufacturing Co. v. Convertible Top Replacement ®v., 377 U. S. 476, — _ +488), Motorola also cannot properly assert that it was - not. given any’ notice as to contributory infringement. “We have’ examined the other contentions raised by Motorola and find them without merit. Therefore, the . - judgment of the District Court is affirmed. amas Bets (19a Unrrep States Court or APPEALS For the Seventh Circuit Chicago, Illinois. 60604: | | “ “Monday, February 6; 1967, Before | : Hon: John §. Hastings, Chief J udge; | ‘Hon. Thomas BE. Fairchild, Circuit J udge; . . Hon. Walter J. Cummings, Jr., Circuit Judge. ¢ ’ EstHer Marion ARMSTRONG, ) Executrix, Appeal from the United Plaintif-Appellee; | States District Court for ~ No. 14830 vs. _ the Northern District: of ' Mororoxa, Inc., | Illinois, Eastern Division. . - Defendant-Appellant. | This cause came on to be heard on the transcript of the record from the United States District Court for the North. ern District of Illinois, Eastern Division, and was argued | by counsel. : cae On consideration whereof, it is ordered and adjudged by .- - this court that the judgment of the said District Court in _ this cause appealed from be, and the same is hereby, Af- ‘firmed, with costs, in accordance with the opinion of this Court filed this day. aS ie “wt 20a APPENDIX B. Esther Marion ARMSTRONG, Executrix, ° : Plaintiff, : : . Vv. . MOTOROLA, INC., Defendant. No. 54.C 19. United States District Court _N. D. IMnois, E. D. May 14, 1964. . . * . . CONCLUSIONS OF LAW AND MEMORANDUM. . _ OF DISTRICT COURT. © CoNnCLUSIONS OF Law. 4 This Court has jurisdiction over the parties and the subject matter. 28-U. S. C. §§ 1331, 1338. _ 2. The Executrix was properly substituted as plaintiff as a result of orders by. this Court; dated March 28, 1955, ‘and April 12, 1955. Pierce v. Allen B. DuMont Labora- tories, Inc., 297 F. 2d 323-(3rd Cir. 1961); Armstrong v. Allen B. DuMont Laboratories, 137 F. Supp. 659 .(D. Del. -.1955);. Armstrong v. Emerson Radio and Phonograph Corp., 132 F. Supp. 176 (S._D. N. Y. 1955), followel by | that Court in its later decision reported at 179 F. Supp. 95. — 8: The °069 patent is valid and Motorola has infringed claims 1 aad ‘2.thereof i the manufacture and sale of isin ° | 21a , broadcast receivers, television sound receivers and FM communication apparatus. For liberality of construetion and broad protection to be accérded to patents: on inven- tions of great merit and broad scope, see Rubber Company v. Goodyear, 9 Wall. 788, 76 U. S. 788, 19 L. Ed. 566 (1869) ; | Leeds & Catlin Co. v. Victor Talking Mach. Co., 213 U. 8. 301, 29 S. Ct. 495, 53 L: Ed. 805 (1909) ; Eibel Process Co. v. Mummesota & Ontario Paper Co., 261 U. 8. 45, 43 S. Ct. $22, 67 L. Hd, 528 (1923); Wright Co. v. Herring-Curtiss _ Co., 177 F. 257 (C. C. 1910), aff’d final hearing, 204 F. 597, aff’d 211 F. 654 (2nd Cir. 1914) and companion case Wright Co. v. Pawhan, 177 F. 261.(C. 0. 8. D. N. Y. 1910); American Stainless Stéel Co. v. Ludlum Steel Co., 290 F. 103 (1923), and the decision on the accounting 16 F; 2d 823 (S. D. N. Y. 1926); Permutit Co. v. Wadham, 13 F. 2d 454 (6th Cir. 1926), rehearfhg denied 15 F. 2d 20; Smith. V. Snow, 294 U. 8. 1, 55 S.Ct. 279, 79 L. Ed. 721 (1935). For plaintiff’s right to Tecover on theory of contributory ‘infringement, see Leeds. & Catlin Co, v. Victor Talking Mach. Co., supra; Stewart-Warner Corporation v. Le Vally, | 15 F’. Supp. 571 (N. D. Ill. 1936), affirmed Lincoln Engi- neering Co. of Illinois v.. Stewart-Warner Corporation, 91 F. 2d 757 (7 Cir. 1937), reversed on other grounds 303 U. S. 545, 58 S. Ct. 662, 82 L. Ed. 1008; Girdler Corpora . tion v. E. I. DuPont De Nemours & Co., 56 F.. Supp. 871 . (D. Del. 1944), affirmed per curiam 152 F.. 2d 757 (3rd Cir. . 1946); Detroit Lubricator Co. v. Toussaint, 57 F. Supp. 837-(N. D. Ill. E. D. 1944), Metallizing Engineering Co. v, | Metallizing Co. of America, 62 F. Supp. 274, 276-277 (S. D. N. Y. 1945); Florence-Mayo Nuway Co.'v. Hardy, 168 F. 2d 778 (4th Cir. 1948) ; Harris v. National Machine Works, 171 F. 2d 85 (10th Cir. 1948) ; 35 U.S. C. § 271(d) (3) 1952. See Memorandum Opinion of this Court dated June 14, 1961. ’ ; 4. The ’066 patent is valid and Motorola has infringed , a: 22a claims 8, 9-and 10 thereof by the manufacture and sale of FM broadcast receivers, television sound receivers and receivers for FM communication apparatus. my 5. The Reissue patent is valid. and Motorola has in- . fringed claims 1, 2, 4 and 6 thereof by the manufacture and -sale of FM broadcast receivers and television sound receivers. 6. Motorola had no license ro the Gg nts in suit by virtue of aify license that it may have had water the bead | patent. [7-9]. 7. Plaintiff ’s right to recover damages ‘is not "barred by laches. Amalgamated Dental Co. v. Lang Dental Mfg. Co., 200 F. Supp. 814 (N. D. Ill. E. D. 1961) ; Howe v, General Males Corporation, 167 F. Supp. 330 -(N. D. IL. | E. D. 1958) ; ; Pierce v. International Telephone & Telegraph Corp., 147 F.., Supp. 934 (D. N. J. 1957). Armstrong was ‘ justified in not filing suit during World War II. Alliance Securities Co. v. De Vilbiss Mfg. Co., 41 F. 2d 668 (6th ~ ir. 1930); Mills Novelty Co. v. Monarch Tool & Mfg. Co., 49 F. 2d'28 (6th Cir. 1931), certiorari denied 284 U. S. 662, - 52S. Ct. 37, 76 L. Ed. 561; Harris v. Air King Products Co., 87 F. Supp. 572, affirmed 183 F’, 2d 158 (2nd Cir. 1950). Armstrong was justified in not filing suit against Motorola while prosecuting an infringement suit against RCA. Montgomery Ward € Co. v. Clair, 123 F. 2d 878 (8th Cir. 1941); Clair v. Kastar, Inc., 148 F. 2d 644 (2nd Cir. 1945) ; Stearns-Roger Mfg. Co. v. Brown, 114 F. 939 (8th Cir. 1902); Timolat v. Franklin Boiler Works Co., 122 F. 69 (2nd Cir. 1903) ; United States Mitis Co. v. Detroit Steel & : Spring Co., 122 F. 863 (6th Cir. 1903); Clements Mfg. Co. v. Eureka Vacuum Cleaner Co., 70 F. 2d 701 (2nd Cir. - 1934); Texas Co. v. Globe Oil &- ‘Refining Co., 112 F. Supp. ) 455 (N. D. Ill. E. D. 1963). | ; ae - Plaintiff i is ssi gett to an ‘accounting of the actual Pneerere damages sustained by plaintiff and plaintiff's predecessor, Armstrong, as a result of the infringing manufacture and. sale by Motorola of FM apparatus, All matters relating to patent marking and other notice of infringement and to the award of costs, attorneys’ fees and interest are re-- served for hearing at such accounting and for determina- tion by this Court after such accounting shall be had’ Memorandum AccomPanyine Finpines or. Fact axp _ Conciusions or Law. ae In view of the extraordinary comprehensive Report, Court’s Exhibit 1, for identification, submitted before trial by the Expem Dean George R. Town, appointed upon . agreement of counsel, and the very detailed findings’ cover- ing the mass of evidence, which findings of fact and con- clusions of law are filed herewith, a separate opinion ‘on -. the merits would be superfluous and repetitious. Further- more, many of the points here made were covered in the extended opinion, of Judge Edmund L. Palmieri in Arm. strong v. son Radio and Phonograph Corporation, 179 F. Supp. 95 (S. D. N. Y.' 1959), involving the same patents and claims as are here in suit. This Court is also in accord with Judge Palmieri’s decision that there was no misuse of the ’069 patent or the other patents in suit and that the Reissue was lawfully reissued. The Court _ wishes, however, to record its appreciation for the expert assistance rendered by Dean Town to the Court. "APPENDIX 6... STATUTORY sieadguainine rte Links . Sections 112, 251 and anita) of the Patent Code of 1952 -* {85 U.S. C. §§ 112, “i 271(a)) eg i 2. Specification. The. specification shall contain a wexittin description of; the invention, and of the manner and process of making. and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with, which it,is. most nearly connected, to make and use. the same, and shall set forth the. best mode contemplated ‘by the inventor of carrying out his invention. 7 Gta ‘The specification shall concludé with one or more claims v particularly pointing out and distinctly claiming the sub-— . ject: matter: which the applicant regards as his invention. _ | iAm element in @ elaim’for @ combination may be éx- pressed as a means or step for performing a specified fune- tion without the recital of structure, inaterial, or ‘acts in - support thereof, and sucti claim shall be construed to cover ing structure, material, or acts ‘described im . the specification ‘and equivalents thereof. : | 4251. Reiseue of defective patents. _ Whenever any patent: ‘is, through error without any de. _ eeptive intention, deemed ‘wholly or partly inoperative or _ invalid, by reason of a defective specification or drawing, | ‘or by reason of the patentee claiming more or less than he : — ee shall, aie fee for a reissue for each of such reissued patent! | it J V8. 25a. on the surrender of such patent and the payment of the fee _ required by law, reissue the patent for the invention dis- cok ,, Closed in the original patent, and in accordance witha new = ‘and amended application, for the unexpired part: of ‘the - 1 / term of the'original patent. ‘No.new matter shall be intro-)', © duced into the application for reissué. | - ttdottaters pba naiy 1! O _The Commissioner may issue several reissued patents for distinct and separate parts of the thing patented, upon — demand of the applicant, and upon payment of the required “The provisions of this title relating to applications for patent shall be applicable to applications for reiséue Of a . patent, except that application for reissue may be made . ~ and sworn’ to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent. m ee ee ene No reissued patent shall be. granted enlarging the: scope of the claims of the original patent unless applied for — within two years from the grant'bf the original patent. ‘§271. Infringement of patent, | (a). Except as otherwise provided in this title, whoever _ without authority makes, uses or sells any patented invep- .tion, within the United States during the term ofthe patent | therefor, infringes the patent. - e: ‘2 Sections'83, and 64 of the predecessor statntes to Bee. tions 112, and 251 respectively’ (35 U. S. C. §33; B. 8, 4888; atid §64; B. 8. 4916) provide; 3.33; B.-S. 4888. Application for patent; description; * Before any inventor or discove rer shall receive sive a patent : nt for ‘his ‘invention ‘or discovery he ‘shall make ‘application - _ therefor, in writing; to the Commissioner of ‘Patents ’and —_er-discovery more than he had a right to claim as new, if S » egal, ives, for the unexpired part of the term — . 4a shall. file in'the Patent Office a written description of the same, and of the manner and process of making, construct- | ing; compounding, and using it in such full, clear, concise, and exact terms as to enable any. person skilled in the art or seience to which it appertains, or with which it is most . nearly connected, to make, construct, compound, and use the same;,and ‘in case of a machine, he shall explain the _.. principle thereof, and the best mode in which: he has con- agek templated applying that principle, so as to distinguish it _ from other. inventions ; and he shall particularly point out . and distinctly claim the part, improvement, or combination which he claims as his invention or discovery. . The specifi- cation. and claim shall be signed by the inventor. No plant patent shall be.declared invalid on the ground of noncom- -pliance with this section if the description is made as com- : piste as is reasonably possible. si at 5 64; BS. 4916. "Reissue of defective patents. : ‘Whenever any patent is. wholly or partly inoperative or invalid, by reason of a defective or insufficient specification, _or by reason of the patentee claiming as his own invention the error has arisen by inadvertence, accident, or mistake, and without any frandulent‘or deceptive intention, the com- - ;miadioner shall; on’ the surrender of such patent and the : aca i ag agate bag cause a patent for the entio and in accotdanee with the corrected speci- ‘ation, to he reisened:to the patentee or to his assigns or ‘y of the original patent. Such surrender shall take effect _ upon the issue’ ¢f the reissued patent, but in so far as the __ elaims of the original and reissued patents are identical, ei orrende; shall not affect any action then pending nor ae J eee ' f e ne : ‘ ‘ ‘4 rahi , r ey ‘s wi . fi original patent shall constitute a continuation hereof and’ ” have effect continuously. from. the. date of the original patent. The commissioner may, in his discretion, cause Cts several patents to be issued for distinct and separate parts = ' + _ of the thing patented, upon demand of the applicant, and’ | upon payment of the required fee for a reissue for each of ©. such reissued letters patent. The specifications and claims ? _ ‘in every such ease shall be subject to revigion and restric- _ _ tion in the same manner as original applic ions are. Every — patent so reissued, together with the corrected specifica- tions, shall have the same effect and operation in law, on es _ the trial of all actions for causes thereafter arising, as if —> ‘the same had been originally filed in such corrected form; — but no new matter shall be introduced into the specification, nor in case of a machine patent shall the model or drawings be amended, except each by. the other; but when there is neither model nor drawing, amendments may be made upon * proof satisfactory to the commissioner that such new mat- ster or amendment was a part of the original invention, and was omitted from the specification by inadvertence, acci-’ a4 dent,.or mistake, as aforesaid. - . . ) —$$——— Ee “te ‘ . - \ “* 7 ee | — 7 je. 5 4 fig sracncnbasonipecearaeb peesaxeinins ws ~~ P . i F : ’ A od y ereatnnanaettnere ae c x ; ~ i ; *e 5 Fate at . fy F ; CLAIMS 1 AND 2 OF Bans NO. 1,941,069, _ “1. “Phe [method of eliminat- a bs fayetees tee climinat- . ing ia radio signaling disturb- ing in radio signaling disturb- saan. pried the nature of a ances i the pature of a pater gcnny hp a gg a cian ess Seheeetlage 'Easamttthe for producing a sto be transmitted, su sub- stantially greater in extent than. the frequency range of - good audibility, — “'b): means at the receiver for Sicsirongyas the ‘received cur- for substantially _ eliminating : the frequency Variations of the ‘received signal into amplitude _ variations, . said wdeyee being variations of the signal but substantially not. responsive y to the lesser variations in fre- “quency of the spectrum of the disturbances to- be eliminated nor. to variations. in amplitude of said disturbances. | aE, eee ee mae. Age SER 2G as 2 e; ed a Nee - oy “NO. 21,660, 2 cS ee ee ee ee ER ‘ La SONS a eS ix NRE OE 2 aoe BL = 5 at & Bee ; : e x ; naan? Pied wangmitted variation’ in frequency of the 3 _rents,. current limiting means — : “amplitude. ‘variations, and a+ fully responsive to ‘the wide -— FS cee) 29a - = (a) which sinalite in ‘ing the high frequencies of the band to a substantially greater degree than the low frequen- cies thereof, varying. the fre- quency of the wave to be trans- mitted by. the amplified cur- rents to produce a wide band of frequency variations, trans- such wave, (b) receiving the wave and - amplifyifig the received cur: . Tents, passing the amplified currents through a detecting _ device having an - admittance ~—band substantially wider- than: . said ‘wide band of aden, variations and ‘the’ detecting ‘device the fre. a quency variations into a ‘band . ' of currents ‘of variable ampli- ae tude whereby distortions _ which arise inthe translation in the detecting | device of the band to a substantially greater . _ degree than. the high frequency: ° currents thereof. aft oom for trans- = snodudated'isitvial: in-such manner ‘that the ratio of: oeeoe to, the amplitudes: the corre- ‘signaling currents is greater fr the higher tequet- : eles of the than, for the lower p Hester WEB ce ick kaa coc {which method] consists in re: : ceiving the wave and amplify: ing the received currents, pas- _Sing “ the---amplified currents through a’ detecting’ device having ‘an~ admittnes: ~ band substantially. ‘wider than the width of the wide swing ‘of the said wave ‘and translating in the detecting’ device ‘the fre: quency variations into signal- ing currents ‘of variable ampli: tude, whereby distortions ‘which arise ‘in’ the ‘translation in the detécting device of the frequency ‘variations into cur- ; e rents of variable am minimized, ‘and } ‘the ‘signaling currents of the lower frequencies to ‘a substantially greater dégree than the signal- | oe Seer Se er hagas he quencies. ° 4 A [receiver] ‘adapted 2. in such manner’ that the ratio — receive a wide swing modulated “wave of. the deviations of the wave _ to the ampli sof the corre-. te hs ng currents t} we : eal thereof, , | emilee : “are - = wave «iat gubstentially constant . gaid [receiver]. comprising means for receiving -the wave and: amplifying the received currents, converting means coupled. to said last-named means for causing the frequen- ey variations: to create. cur- rents of variable amplitude - vt « JJ ° . © ey . ’ / A . . ‘ \ . . é : ° ‘ ¢ +o. 4 ’ A \- . iA f ‘' . SIE Be oil Be > 0g * 8 ; e , ° . ‘ mine ay r., - . . < . . . ‘ . 4 . ' s + 2 . , Fe . . . “ * P ff ‘ ‘ © - . ° .