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Leeds & Catlin Co. v. Victor Talking Machine Co., 213 U.S. 301 (1909)

Leeds and Catlin Company v.

Victor Talking Machine Company

No. 80

Argued January 15, 18, 1909

Decided April 19, 1909

213 U.S. 301


Where grave questions of fact are presented by the proof on which a preliminary injunction has been granted in a patent case, this Court will not go beyond the action of the lower court and decide those questions and the case on the merits.

A combination which produces by the cooperation of its constituents the result specified in the manner specified is a true mechanical device, and a valid combination.

Page 213 U. S. 302

A patent may embrace more than one invention, Steinmetz v. Allen, 192 U. S. 543, and it may embrace a process and the apparatus by which it is performed.

Where dependent and related inventions are patented separately, a foreign patent for either does not affect the other under § 4887, Rev.Stat., and the same rule applies if such inventions are embraced in one patent.

While a combination is a union of elements which may be partly new, or wholly old or wholly new, the combination is a means distinct from its constituent elements, any of which, if new and patentable, may be covered by separate claims in the same patent as the combination.

Separate claims in the same patent are independent inventions, and the infringement of one is not the infringement of the others, and the redress of the patentee is limited by the injury he suffers; nor is the validity and duration of valid claims affected by the invalidity or expiration of any other claim. Siemens v. Sellers, 123 U. S. 276, distinguished.

In this case, held that the foreign patent granted to Berliner for talking machines was not identical with certain claims included in his United States patent in suit, and therefore his patent as to those claims did not expire with the foreign patent under § 4887, Rev.Stat.

A patent of the United States for an invention extends under § 4887, Rev.Stat., for the duration of the definite term for which a foreign patent may have been granted for the same invention, and does not expire by the forfeiture of such foreign patent or through the operation of a condition subsequent according to the foreign patent, such as the payment of fees during the life of the patent.

146 F. 534, 148 F. 1022, affirmed.

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

The bill is in the usual form, and alleges the issuing of the patent and the existence of the necessary conditions thereof

Page 213 U. S. 303

under the laws of the United States. It also alleges the transfer of title to the plaintiffs in the suit and the infringement of claims 5, 32, and 35 by the defendant, petitioner herein.

Petitioner answered, denying some of the allegations of the bill, and, of others, denying that it had knowledge or information sufficient to form a belief. Explicitly denied infringement, and alleged anticipation of the invention described in the patent by a great number of patents and publications in this country and other countries, an enumeration of which was made. And hence it is alleged that, in view of the state of the art, Berliner was not the first inventor or discoverer of any material or substantial part of the alleged improvement and invention described or claimed.

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

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

Page 213 U. S. 304

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

Page 213 U. S. 310

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