author: CLARK, District Judge.

text:
    RUBYETTE CO. v. VINELAND PRODUCTS CO.
    District Court D. New Jersey.
    March 24, 1931.
    Louis Rudner, of Trenton, N. J., of counsel (Chas. E. Townsend, of San Francisco, Cal., and Edward L. Katzenbaeh, of Trenton, N. J.), for plaintiff.
    Hervey S. Moore, of Trenton, N. J. (Munn, Anderson & Munn, and T. Hart Anderson, all of New York City, of counsel), for defendant.
   CLARK, District Judge.

The principal case gives some evidence, at least, that all the products of the California vineyards are not used in accordance with the terms of section 29 of title 2 of the National Prohibition Act (27 USCA § 46). The litigation is twofold: Trade-mark and/or trade-name, with its usual concomitant unfair competition, and under a patent for the process used in preparing the produet to which the name has been given. This product is a dried and skinless grape put up in small jars or bottles and artificially colored. We understand that these grapes are intended more for garnishment than for nourishment.

To. this finished article the plaintiff company has applied the names “Graettes”: “Rubyofte,” “Emrellette,” etc.; the prefixes being related to the particular artificial coloring used. Such application has been adequately protected by trade-mark registration. The defendant company, by concession, is also selling dried and skinless grapes put up in small jars or bottles and artificially colored. The trade-mark which they have chosen and registered is “Deeorettes.” The court does not feel that the guise and garb of their, merchandise is such that any imitation in an invidious sense is intended. The very nature of the product makes for similarity and for difficulty in differentiation.

An examination of the cases wherein either the registration of a name as a trademark or an injunction against the use of such name is sought leaves the court with an impression of judicial timidity. These eases are to be found collected in USCA, title 15, under section 85, note 32 and section 99, notes 10 to 13, and also in the Federal Dig-est, volume 14, section 59, subsection 5. Manifestly the selection of a fancy or arbitrary trade-mark is limited only by phonetics and the imagination of the chooser. Unless, therefore, it appears that his particular selection is a result of coincidence and has been followed by the growth of a valuable business, based thereon, we can see no reason for an attitude of strict construction. Judge Learned Hand (nomen elarum), then sitting in the District Court for the Southern District of New York, put the matter, with his usual penetration to essentials, in the case of Lambert Pharmacal Co. v. Bolton Chemical Corporation, 219 F. 325 (D. C. 1915). He said at page 326 of 219 F.: “In choosing an arbitrary trade-name, there wqs no reason whatever why they should have selected one whieh bore so much resemblance to the plaintiff’s; and in such eases any possible doubt of the likelihood of damage should be resolved in favor of the plaintiff. Of course, the burden of proof always rests upon the moving party, but having shown the adoption of á similar trade name, arbitrary in character, I cannot see why speculation as to the chance that it will cause confusion 'should be at the expense of the man first in the field. He has the right to insist that others in making up their arbitrary names should so certainly keep away from his customers as to raise no question.” This court expressed somewhat similar views at the time of the trial. It gathered then that the defendant company did not insist very earnestly upon its use of the word “Decorettes,” and that this branch of the ease is being formally rather than substantially presented.

Although the patent phase of the litigation was, on the other hand, ably and thoroughly briefed and argued, the defendant company seemed to the court to emphasize the less fundamental issues. It contented itself with a formal denial of validity and introduced in evidence only the prior art patents cited as references in the file wrapper. If this course was adopted as a manner of court strategy, we feel that it is a mistaken one. The plaintiff company sells on a national scale, and it is not unlikely that another infringement either has or will occur in another eireuit. The view of this court and of this circuit might, therefore, receive final approval or disapproval in the Supreme Court of the United States — a consummation devoutly to be wished for, and the lack of which has given rise to serious complaint against the procedural paa;t of our patent system.

The patent in suit, No. 1,721,929, dated July 23, 1929, claims a process for peeling fruits. Two claims are set forth as typical and an accurate description thereof.

“1. A process for peeling fruits consisting of immersing the fruit in hot soda water, then wilting the fruit, then placing it in a lye bath, and then washing the lye therefrom.”

“5. A process for peeling fruits having tough skins, such as grapes and plums, consisting of scalding the skins of the fruit until the skins thereon are softened and porous, then permitting the fruit to wilt and then subjecting the skins to the action of lye.”

This court is somewhat reluctant to refer again to the proceedings in the Patent Office, as it does not wish its heretofore expressed views to assume the appearance of an obsession. The file wrapper in this ease is, however, so significant that a statement of its contents cannot be avoided. The application was forwarded on June 8, 1926. On September •2d thereafter reference was made by the Patent Office Examiner to the patents to Judge (No. 850,655, April 16, 1907), to Thompson (No. 1,389,796, September 6, 1921), to Moore (No. 1,518,537, December 9, 1924) and to Pyle (No. 1,444,386, February 6, 1923). All of these patents are process patents, and three of them relate to removing the skin of fruits and/or vegetables. The method of the earliest to Judge (April 16,1907) consisted in the subjection of the fruit to a caustic soda or other skin disintegrating solution followed by spraying to remove the loosened skin and then a steam bath for washing and blanching. The patent to Thompson (September 6,1921) called for an initial softening of the skin by heat and its subsequent removal in an “aqueous saline solution.” Last of the three, the patent to Pyle (February 6, 1923) shows a succession of lye baths, each one followed by washing. The patent to Moore (December 9, 1924) is, on the other hand, for drying rather than peeling fruit, and calls for submerging in an alkaline solution in order that the skin may more entirely exude moisture during the subsequent drying process. The Patent Examiner suspended final judgment on the application pending the disclosure of the concentration of the preliminary skin softening bath.

On May 21, 1927, applicant’s solicitor submitted some unsubstantial amendments and an argument with respect to the Judge patent which, attempted to distinguish between peaches, apricots, pears, and grapes and plums and' stated that the patent did not disclose any wilting of the skins.

On November 10,1927, a different Examiner responded to the amendment and argument citing two additional references, Monte (No. 858,095, June 25, 1907) and Pearson (No. 1,401,437, December 27,1921). Continuing our description of the cited references, Monte is for a process of peeling fruits and/or vegetables. Although only three months' subsequent, it is certainly very similar to that of Judge. It provides for the subjection of the fruit and/or vegetable to a bath “in' a disintegrating solution for the purpose of loosening and breaking the skin and then its passage into the range of action of hydraulic sprays for the removal of the same.” The patent to Pearson (December 27, 1921) differs from those heretofore cited in that it is for a product, i. e., a dipping apparatus. The nub of its anticipation as far as the plaintiff’s patent is concerned appears in the following quotation from the specifications: “The apparatus is particularly adapted to dipping bunches of grapes, prior to drying, but it is to be understood that it is equally applicable to all articles which require dipping in a bath or solution. The rapid and economical drying of grapes by artificial heat requires that the grapes be dipped in a lye bath, to partially disintegrate the skins prior to being placed in the drying chamber.” The Patent Examiner summarizes these references and rejects the application in the following language: “Claims 1, 3, 4, 5, 8, are rejected as met by Judge or Monte in view of Pearson. It is held that to apply a peeling process such as is pertinently described in Judge and Monte to the fruit prepared by the Pearson process does not constitute invention.” .

By letter of December 29,1927, applicant requests reconsideration by the Examiner of his rejection previously referred to. As his argument is substantially that presented in this court, we feel justified in quoting him in part: “These claims all include the limitation of wilting or drying the fruit prior to it3 treatment in the lye or skin removing solution and it is this feature which differentiates the applicant’s present invention over the prior art and which makes it possible to produce the product which he is now making in accordance with this process, the product being a grape in substantially its normal condition with the skin removed.” This argument seems to have been persuasive, for on May 7, 1928, we find the Examiner allowing the claims chiefly insisted upon. In reply to this good news, applicant’s attorneys made the mistake of suggesting a minor amendment, and in doing so apparently allowed the Patent Office opportunity for further se.arch, for in the letter of May 25,1928; we find the following:

“Additional reference made of record: Dunkley 1,655,690 Jan. 10,1928 146/219
“The examiner regrets that the above reference has not previously been cited. Claims 3, 4, 5 are rejected as fully met thereby.”

This last Senagambian in the Patent Office files was again a process for peeling fruits and/or vegetables. It indicated that the torch of Judge and Monte was being carried on. It provided a process for peeling fruits, etc., by subjecting their surface to hot caustic soda solution, the combination to heat, and subsequently subjecting the surface again to hot eaustie soda solution. (It should be noted that the claims actually allowed in this last communication seemed unsatisfactory, and therefore we assume did not in the applicant’s opinion embody the invention).

After taking the summer to think the matter over, the applicant replied on September 7,1928, with an elaborate contention in refutation of this unexpected action by the Patent Office. He again attempted to distinguish between the hard and soft pulp fruits and/or vegetables, and emphasized the wilting which intervened between the first and second dip-pings of his patent. It took nine months (September 7th to May'20th) for it to bear fruit, but its final flowering, to mix the metaphor, the grant of a patent on May 20,1929, or three years after the first application, must have been most satisfactory to the persistent and still alleged inventor. In this, as in the other eases we have examined, the final allowance of the patent does not deign to state any reason for the sudden change of mind on the part of the Patent Office. The court, and incidentally the public, is thus left with a series of excellent arguments why the patent should not be granted and the stark fact that it has been granted.

The only.other prior art patent offered by the defendant is one No. 1,544,282, dated June 30, 1925, to the alleged inventor (Otto J. Steinwand) of the principal ease. This indicates that he had interested himself in the art two years prior to his first application for the principal patent. The defendant offers this both as anticipation and as evidence with respect to his contention of unclean hands to be dealt with later. The process there is for 'a fruit butter or jam, and consists in the dipping of fruits first in warm water and then in a lye solution. Not even a second thought seems to have produced this patent “in the office.” It would be interesting to examine the course of its proceedings therein.

The reasoning of the Patent Office Examiners in their tentative rejection of the patent of the principal ease has quite convinced this court of its invalidity by reason of prior anticipation. Our mind has not been changed, as the Patent Office Examiners’ apparently was by the rebuttal of the plaintiff’s solicitor, which we may say seems to have been in substantially the same terms as that previously considered by the Examiner. We cannot grasp the patentable distinction between the artificial heating of the Dunkley patent and the natural or solar heating, called wilting, of the Steinwand patent. Furthermore, in view of the admittedly old process of removing the skin from fruits by alkaline baths and the also scriptural age of raisins (or wilted grapes), we do not feel that the second Stein-wand process is invention, even in the absence of some or all the anticipating patents.

At the argument (Record, p. 38) we were kindly furnished with a citation to the case (in this circuit) of Brogdex Co. v. American Fruit Growers, Inc. (D. C.) 21 F.(2d) page 110; Id., 35 F.(2d) page 106 (1929 C. C. A.). The patent there involved was for a process for preventing the decay in citrous fruits by washing them in a borax solution. Counsel stated, and we think correctly, that this ease was pertinent to and might even he controlling of the issue in the principal case. Fortunately for the peace of mind of this court, and unfortunately for the plaintiff, the Brogdex Case has been reversed by an opinion handed down by the Supreme Court of the within the month. American Fruit Growers, Inc., v. Brogdex Co., 51 S. Ct. 328, 75 L. Ed.-. It is curious to note that the anticipating patent set forth at some length in Mr. Justice MeReynolds’ opinion is not mentioned in the opinions of either of the lower courts.

As heretofore indicated, the defendant principally relied on the defenses of unclean hands and noninfringement. The legal facets of these wide general subjects were both interesting and interestingly presented. In view of oür decision of validity, it is unnecessary to rule upon them definitely. As a higher court may take a different view on the question, of validity, we, however, suggest them briefly.

The “grimy,” so to speak, conduct with which the plaintiff is charged consisted in falsely marking his product. The conceded fact is that the bottles of “Rubyettes,” etc., have on them a circular neck band bearing the legend “Patent No. 1,544,282, other patents pending.” The patent referred to will be recognized from the body of this opinion. It was the earlier patent to Steinwand for a fruit butter, jam, or filler, and, of course, had absolutely no reference to the patent in suit. As soon as this marking was brought to the attention of distinguished counsel who argued this case, it was, of course, removed. He seemed to us to argue that, because it was removed upon his most excellent advice, therefore, its previous appearance before his advice was taken was innocent. Or in other words, from the ability of the advisers followed the necessity for the advice. It occurs to the court that, rather than this deduction, that of the gnat and the camel is appropriate. The first Steinwand patent is for a jellied mass, and we do not feel that any very profound consultation was needed to assist the plaintiff in distinguishing between such jellied mass and the wilted grapes of their subsequent product.

The cases in this narrow branch of the “clean hands” doctrine show a tendency to emphasize the effect of the reprehensible conduct on the public. As the doctrine is based on the personal standing of the particular plaintiff to call upon a court of grace and mercy, we cannot quite see how the outward effect of his conduct is pertinent. The test seems to us subjective and not objective, and our interest in the heart of the plaintiff rather than in the stomachs of his customers. As a matter of fact, we cannot imagine anything more calculated to deceive the public than the unwarranted assertion that a product was patented or the result of a patented proeess. Furthermore, the argument that the public is not deceived seems to depend on the assumption that its individual members would, upon seeing the label, send to the Patent Office for the patent indicated there, and, upon comparing it with their pantry shelf, learn the bitter truth. If that is their duty, we have a new field for the operation of consumers’ leagues.

The defendant finally contends that his process does not infringe that of the plaintiff because it does not duplicate every step therein. It is agreed that defendant purchases the product known as “Thompson’s Bleached Seedless Raisins” in the open market and then subjects the said raisins to a lye bath. In other words, the defendant buys a wilted grape and removes the skin by the time-honored use of an alkaline solution. On simple principles of the law of property we think plaintiff’s action quare fregum elausit (called infringement in the realm of mental property) fails. He owns a proeess for wilting and treating grapes with lye. He does not own a proeess for treating wilted grapes with lye. The knowledge of grape wilting might be a reason for not granting a patent for the combination of wilting and bathing. It is certainly not one for enjoining those who take advantage of that prior knowledge as a step in their proeess. To say otherwise would, it seems to us, be the issuance of a patent in the form of an injunction.

Settle decree upon motion.


source: Caselaw Access Project

author: ANDREW M. J. COCHRAN, District Judge.

license: Public Domain

text:
    CLARK v. UNITED STATES.
    District Court, E. D. Kentucky.
    Feb. 17, 1931.

      Berry B. Miller, of Louisville, Ky., for plaintiff.
    Sawyer A. Smith, U. S. Atty., of Covington, Ky., and George R. Brown, Jr., Regional Atty., for the Bureau of Louisville, Ky., for the United States.
   ANDREW M. J. COCHRAN, District Judge.

This cause is before me on final hearing. It is an action by a World War Veteran on a war risk insurance policy. The plaintiff was inducted into the service May 27, 1918, and honorably discharged May 17,1919. He went overseas in August, 1918, and was in the Meuse-Argonne offensive. His policy was issued June 3, 1918. The claim is that it matured by his becoming totally and permanently disabled prior to August 1, 1919, at which time it would otherwise have lapsed by the nonpayment of premiums. The claim is that such disability was brought about by tuberculosis incurred whilst in the service.

When he entered the service he was a little over twenty-two years old and stout and healthy. The defendant’s witness Walker testified that he then “looked very strong.” Whilst in battle on October 6, 1918, he was gassed, and again October 20, 1918, he was shocked by the explosion of a shell. The effect of neither was to put him out of action. The gassing weakened him and affected somewhat his ability to walk for some time. The shock rendered him unconscious for over an hour, possibly as much as three or four. Seemingly from this time he suffered from a weak back. His testimony as to these experiences in battle is corroborated by that of two comrades. When discharged he had a cough which began whilst in service and shortly after he was gassed and continued ever since. It is described as a bad cough, a hacking cough, or a dry hacking cough. His back was weak. He had pains in his throat and breast and shortness of breath. He looked different, not healthy, did not seem in as good physical condition as before, his complexion was sallow, and did not have rosy cheeks as before. A physician of standing in the community where he lived, who had known him since 1906, not his family doctor, testified that he saw plaintiff a week or two after his return and he appeared to be suffering from tuberculosis, and that he saw him often afterwards and examined him in 1923; that from the time he first saw him his condition gradually got worse; every time he saw him he was a little bit worse; and that when he so examined him he was then suffering from active pulmonary tuberculosis, and that in his opinion he was thus afflicted when he came back from the army. Shortly after his return he began to work at coal mining under his brother and continued to do so for something like two and one-half months. His work was shooting and loading slate. Whilst at work he would snatch rest every now and then. He quit because he was unable to continue. He then went to shoveling coal into trucks for a wagon mine. This was in the fall of 1919, and he continued at this until spring of 1920: Goal was then selling at exorbitant prices and even the wagon mines were in their glory. He was paid 40 cents an hour. He quit because his back gave way. He then, May or June, 1920, worked as a section man on the Southern Railway, carrying fish and joint plates, shoveling slag and tamping poles for two weeks, when he was discharged because he could not do the work. Apart from gardening work, he does not seem to have worked any after this.

On October 29, 1920, he applied for compensation under the war risk legislation and was thereafter examined by the Veteran’s Bureau on different occasions. Such examination was had November 16, 1920, and it was diagnosed that he had ehronie bronchitis. The subsequent examinations and diagnoses were as follows: August 12, 1921, ehronie quiescent pulmonary tuberculosis, moderately advanced; February 9; 1922, ehronie pulmonary tuberculosis; August 24, 1922, ehronie pulmonary tuberculosis, and valvular heart disease, mitral insufficiency; October 17, 1923, chronic pulmonary tuberculosis arrested; and January 11, 1924, ehronie pulmonary tuberculosis moderately advanced. As a result of the previous examinations, compensation was allowed him $20 per month from December 13, 1920; $40 per month from August 12, 1921; and $80 from February 9, 1922. The latter amount was on account of total disability based no doubt on the examination of that date. Thereafter in that year he married, and on May 1, 1923, his wife gave birth to a child, and the allowance was increased from that date to $95 per month. June 29; 1924, possibly as a result of the examinations of October 17,1923, and January 11, 1924, the allowance was reduced to $71.25 per month. Some time prior to August 28,1924, the tuberculosis, evidently from his lungs, attacked his spine and involved the seventh and eighth and upper part of the ninth vertebras. Because of this he was sent to the Veteran’s Hospital at Dawson Springs, Ky., and remained there until November 15, 1925, nearly fifteen months. On September 6, 1924, shortly after his arrival, he was examined and it was diagnosed that he had pulmonary tuberculosis far advanced and that his spine was affected as above stated, such affection being known as Pott’s disease, and October 10th his compensation was restored to $95 per month dating from time of his entry. He was placed in a plaster of paris cast and remained there for possibly as much as six months. When it was removed there was a big lump on his spine. This was opened — pumped out and sealed up — and openings were made in other places for five consecutive times. He was then put in a straight-jacket, which he wore about six and a half months whilst there and a right smart little bit after his discharge from the hospital, On September 20, 1925, shortly before his discharge from the hospital, he was examined again, and this diagnosis was chronic pulmonary tuberculosis far advanced and tuberculosis of the spine. On his discharge he was given a letter of instructions by the director of Red Cross service at the hospital and the medical officer in charge, and in that letter they stated to him that he had “a serious case of tuberculosis.” The straight-jacket which he had hurt him and the Bureau built another one for him. In 1926> whilst he was wearing this jacket and was engaged in chopping wood, because of the jacket a piece of wood struck him in the right eye, putting it out and causing total blindness in that eye.

Subsequent to his discharge from the hospital he was again examined by the Bureau on four occasions. The dates of examination and the diagnosis then made were as follows: April 5, 1926, Pott’s disease, old and pulmonary tuberculosis, advanced A, inactive; April 27,1927, pulmonary tuberculosis, arrested, and Pott’s disease, old and healed; November 3,1927, pulmonary tuberculosis, minimum arrested, and Pott’s disease, old and healed; and December 4, 1927, no tuberculosis found and Pott’s disease healed.

It would seem that as a result of these later examinations his compensation was reduced to $50 a month, which he is now receiving. Just when this reduction was made I am not advised.

Considering the case as thus made out by the evidence, I am driven to the conclusion that at the time of plaintiff’s discharge, and before the arrival of the time when his policy would elapse by the nonpayment of premiums, he had become totally and permanently disabled by reason of the presence of tuberculosis in his system which matured his policy. Much is made of the fact that in his discharge it is stated that at that time his physical condition was good to which he gave consent by subscribing his name thereto. But the examination was more or less superficial, and it is not unlikely that he did not realize the serious condition in which he then was. Evidently on his return he went on the idea that he was physically able to work, for he made three efforts at it, which brought home to him the fact that he was not. The attractive wage which the wagon mine operator was able to pay him out of his large profits kept him longer at work on this job than on the others. When he realized that he would have to quit, he applied for compensation, and based on its examinations the Bureau awarded his compensation on the basis of total disability. It is urged that the result of these examinations was not admissible in evidence, but I cannot conceive of any reason why.it was not. To me they seem the best possible evidence of his condition during the time covered by them. According to them the Pott’s disease in his spine had been cured and the tuberculosis in his lungs had been arrested. But it would be unsafe for him to attempt to follow any gainful occupation which he is adapted to follow. It might bring back on him the disease in an active form. The examinations of October 17,1923, and January 11,1924, showed that his pulmonary tuberculosis was then “arrested” or “apparently arrested.” But it was not long thereafter before it reappeared and attacked his back in a rather virulent form.

He is not able to follow continuously any substantially gainful occupation, and such has been his condition before and ever since his discharge from the army.

The plaintiff is entitled to judgment.


text:
    NICHOLS v. UNITED STATES.
    District Court, E. D. Kentucky.
    Feb. 19, 1931.

      Perry B. Miller, of Louisville, Ky., for plaintiff.
    Sawyer A. Smith, U. S. Atty., of Covington, Ky., and George R. Brown, Jr., Regional Atty., U. S. Veterans’ Bureau, of Louisville, Ky., for the United States.
   ANDREW M. J. COCHRAN, District Judge.

This eause is before me on final hearing. It is an aetion by a World War veteran on a war risk insurance policy. The plaintiff enlisted June 21, 1918, and was discharged May 29, 1919. His policy was issued February 8, 1918. The premium was paid until his discharge. The claim in the petition is that at that time he was totally and permanently disabled because of gastritis, pulmonary tuberculosis, rectal abscess, and general disability, and that by reason thereof the policy then matured" and did not thereafter lapse by failure to pay the premiums. It is to be borne distinctly in mind that the primary question in this case, as in all like eases, is whether plaintiff was then so disabled. Subsequent disability has no relevancy except in its bearing on the then disability and on the right to payment of subsequent instalments of insurance.

The plaintiff was a painter and decorator before his enlistment and went overseas; when and what he did after so doing not appearing. He testified that whilst in training he suffered stomach or bowel trouble; that after he went overseas in the latter part of 1918 he drilled, but should not have done so; that he was assigned to some lighter duty; that the doctors said he had bellyache and gave him “C. C.’s”; that his stomach or bowel trouble continued while he was overseas and because of it he was weak all the time; that he coughed of a morning and took cold;, that he did not notice any discoloration in his sputum; that he was corporal first and then a sergeant; that he did a lot of drilling overseas; that he was in the infirmary several times, just for a day and back; that he was with the company all the time; that he was sick at the time of his discharge and weighed less than normal. This was all his testimony as to his physical condition at the time of his discharge^ He made a declaration at that time in regard thereto. In answer to the question as to whether he had reason to believe that he was then suffering from the effect of any wound, injury, or disease, or that he had any disability or impairment of health, incurred or not in the military service, he said “No.” He testified that he made this declaration because he wanted to get home. Four or five doctors were lined up and he went through them a flying. They examined him with a stethoscope and found no disability. His testimony as to what happened after he was discharged was this. He went to the home of his mother in Somerset in this district; that he did not try to do any work the first two or three months as he did not want any, as he had $100 to $150; that he was in bed part of the time; that his family physician examined him and gave him treatment; that his money ran out and he had to go to work; that about September, 1920, he went to New Castle, Ind., and there found work which consisted in running a small drill press; that he was not able to hold out and do that work; that whilst there he had lumps in the pit of his stomach due to gas and consulted a doctor once about it, the result of which was not stated; that he worked there about three or four or five months; that he went from there to South Bend, Ind., and worked in an automobile factory marking off blocks with chalk for machinery for $3 or $3.50 a day; that he was not able to attend to work every day and work regularly; that he worked there a month and a half or two months and left because he was sick and could not work; that he returned to Somerset and thereafter consulted his family physician and afterwards another doctor located there; that he was hospitalized in Cumberland Sanartorium at Somerset for eight or nine months and was discharged because he became intoxicated ; that he has not been able to work since leaving South Bend; that he tried to paint his house and had to quit and have it done; that he then, i. e., at the time of his testifying, had a tubercular condition of his bowels and had to wear surgical dressing to protect his clothes; that the drainage from them was on an average an ounce and a half a day which required frequent changing of his dressing; that thirty minutes after stooling he has burning pains and has to go to bed; that such has been his condition since 1923; that in 1923 he went to the veterans’ hospital at Dawson Springs, Ky'., and was there operated on for the tubercular condition of his bowels; that it was about six months before they could get his bowels to drain; that he was at Eoek Glen Sanatorium for about fourteen months; that from there he went to the National Soldiers’ Home at Dayton, Ohio, and stayed there six months and then went again to Dawson Springs where he stayed about three years.

Plaintiff’s family physician at Somerset testified that his physical condition was good at the time of his enlistment; that he could not say when he first saw him after his discharge, but that he treated him along at different times; that on December 27, 1920, plaintiff came to his office and wanted medicine, saying his stomach bothered him; that he examined him and ascertained that he was afflicted with gastritis, for which he had been treating him some time, and that he was not then able to do any kind of work without aggravating the trouble; that gastritis was an irritation or inflammation of the mucous membrane of the stomach and that it may superinduce or be connected with colitis, an irritation or inflammation of the mucous membrane of the colon, though he would not say that it would cause it; that gastritis was chronic; that plaintiff said he had been bothered with it before he came out of the service; that it lowers the vitality of the body generally by the inability of the stomach to digest food and causing lack of appetite which condition work would tend to make worse; that in his judgment plaintiff had then been so afflicted for two or three years; that he examined plaintiff again on February 4, 1921, when he found his condition to be the same as before; that he again examined him in 1922 and found then he had active pulmonary tuberculosis and also tuberculosis of the rectum or tubercular colitis; and that if he was examined on or about August 7, 1923, and found to have such an advanced case of pulmonary tuberculosis and tuberculosis of the bowels or colitis as to totally and permanently disable him, and such condition had continued to the time when he was testifying, in his judgment these tubercular conditions dated back as long as four or five years. The other local physician testified that he examined plaintiff November 15, 1930, and his diagnosis was chronic gastritis. He found no evidence of tuberculosis, and that his prognosis was that he would improve under proper treatment and diet. The plaintiff was then complaining of shortness of breath and pain in the stomach and bowels with nausea and vomiting. This examination was made on behalf of the Bureau. He further testified that in his opinion, if plaintiff was examined on or about August 7, 1923; and found to have such an advanced ease of pulmonary tuberculosis and tuberculosis of the bowels or colitis as to totally and permanently disable him, and such condition had continued to the time he was testifying, these tubercular conditions had existed for some time, though the time could not be definitely fixed, but possibly for four or five years.

The captain of his company testified that after they went overseas plaintiff was on sick report at different intervals, to which first sergeant called his attention; that he was unable to go to the drill field regularly or to participate in extreme maneuvers and heavy marching and he assigned him light duty; that he saw him in Somerset nearly a year and a half after his discharge and he had all the appearance of a very sick man, he seemed just about able to get along and such appearance has continued since. A comrade testified that practically the whole time in the winter and early spring of 1918 plaintiff was sick and going to doctors for some trouble with his stomach; that he lost weight; that he was not able to drill more than once in a while; that he was put on lighter duty because he was not able to do full duty; that he got sick one night and had to go to thé hospital for treatment; that his condition was very serious; that he had more or less cramping or gas on the stomach; and that he was more or less going back to the hospital all the time. An acquaintance, who worked with him at New Castle and South Bend, Ind., testified that he saw him first a few' days after he came back from the army and he was thin; that whilst so working he looked sick and could not eat or sleep to do any good; and that after they went to South Bend he could not do the job and in a few weeks went home. His mother testified that when plaintiff came home from the Army his health was bad; that he was in bed for part of the time for the first few months; and that he tried to work, but was not able to and could not hold out.

This is all the evidence introduced on behalf of plaintiff. No evidence was introduced on behalf of defendant. The usual testimony of physicians who made examinations on behalf of the Bureau are lacking. Seemingly the examination made by the local physician who was not plaintiff’s family physician was made on its behalf. The findings and ratings made by the Bureau on an application for compensation were introduced in evidence by stipulation at plaintiff’s instance. Question may possibly be made as to their competency. In the case of United States v. Golden (C. C. A.) 34 F.(2d) 367, 370 it was said: “The doctors making the ‘ratings’ are of course competent witnesses, just as doctors examining for other purposes are; but it is their testimony that is competent, and not the Bureau’s ‘rating’ predicated thereon.”

That case involved no question as to the competency of such evidence as bearing on the plaintiff’s physical condition at the time of his discharge. The plaintiff there had alleged the ratings in his petition as basis for recovery on his insurance policy. They were immaterial to that end, and it was rightly held that such allegations were improper and should be stricken from the petition. It was admitted that the testimony of physicians who Ijave made examinations on an application for compensation is competent. It is competent it would seem not only as to the then exact physical condition of the applicant, but as to the extent to which it disabled him. This would seem to be so, notwithstanding the difference between disablement which is a basis for compensation and that which is essential to a recovery on an insurance policy. In the one ease it is a disablement from earning a living, i. e., a reduction in earning capacity. In the other it is disablement from following continuously a substantially gainful occupation. It seems to be that reduction in earning capacity has a bearing on ability to so follow such an occupation, and such reduction at a certain date may have a bearing on such ability at a previous date. At any rate it would seem that the findings of the Bureau on an application for compensation based on the examination of its physicians as to the physical condition at the time of the examination is competent, particularly in a ease as here where the testimony of the physicians making the examinations is withheld. The findings and ratings of the Bureau in this case have certain abbreviations, which I cannot make out. I gather therefrom these findings. The .plaintiff was disabled from the time of his discharge. Until November 14, 1920; it was less than 10 per cent, partial; from that date to April 7, 1921 it was 10 per cent, temporary partial; from April 7, 1921, to May 30, 1921, it was 75 per cent, temporary partial; May 30, 1921, to August 7, 1923, it was temporary total; and from August 7, 1923, to October 25, 1928, the date of the findings and ratings it was permanent and total. The finding was that on August 7, 1923, plaintiff had active pulmonary tuberculosis, chronic, far advanced, and seemingly it is that such condition was incurred in or aggravated by service. It was further that he had fistula in ano, discharging, tuberculous, which also was incurred in or aggravated by service. I gather further therefrom that the tubercular rating dates from the time of the discharge.

I see no escaping the conclusion that at the time of plaintiff’s discharge he was afflicted with tuberculosis. I do not think that this is negatived by the fact that plaintiff’s condition was diagnosed by the Somerset doctors in November and December, 1920; as chronic gastritis. Nor is it affected by plaintiff’s declaration at the time of his discharge. He may not have realized his condition and he may then have been feeling better in view of his prospect of getting home than he did whilst he was in the service The characterization of the obtaining of this declaration as an “entrapment” was entirely unjustified. The government has a right to obtain from him a statement as to his then condition, and there was no reason why he should not tell the truth in regard to the matter.

As plaintiff at the time of his discharge was afflicted with tuberculosis he was then totally and permanently disabled, and he is entitled to judgment.


author: SCHOONMAKER, District Judge.

text:
    In re IGNELZI.
    No. 15282.
    District Court, W. D. Pennsylvania.
    Nov. 10, 1930.
    Maurice Chaitkin, of Pittsburgh, Pa., for bankrupt.
    G. Dixon Shrum, of Pittsburgh, Pa., for Gilpin & Hittner.
    Lewis Alpern, of Pittsburgh, Pa., for receiver.
   SCHOONMAKER, District Judge.

This ease was heard on a certificate to review an order of the referee in bankruptcy directing the receiver to return to Gilpin & Hittner, Ine., certain soda fountain fixtures claimed to have been lent to the bankrupt on a bailment.

The reclamation petition was filed in this court by Gilpin & Hittner, Ine., alleging that the said soda fountain fixtures had been leased to the bankrupt on a bailment contract. The receiver answered, denying that the contract was one of bailment, but rather one of conditional sale. This petition and answer were then referred to Watson B. Adair, referee in bankruptcy, to take testimony and make such order as might be proper in the premises. The referee heard the testimony, found that a bailment-eontraet existed, and ordered the return of the property to the petitioners, Gilpin & Hittner, Ine. The receiver excepted to this order, and the ease now comes before the court on the referee’s certificate to review.

It appears from the testimony in the' case, and the referee has found, that Ignelzi, the bankrupt (then opening a drug business in Pittsburgh), and Gilpin & Hittner, Ine., dealers in iee cream, made an oral contract whereby Ignelzi was to handle Gilpin & Hittner’s ice cream. By the terms of this oral contract, Gilpin & Hittner agreed to purchase a new soda fountain for Ignelzi, install it in his store, the title to the fountain to remain in Gilpin & Hittner, with the understanding that iee cream would be sold to Ignelzi at $1.35 per gallon, and that 35 cents per gallon of the purchase price of the iee cream would be applied as rental on the fountain until such time as the amount of rental so paid would equal the amount which Gilpin & Hittner paid for the fountain, at which, time they were to turn over the fountain to Ignelzi for the sum of $1, and it would then become the property of Ignelzi. This arrangement was to continue as long as Ignelzi dealt with Gilpin & Hittner. If Ignelzi discontinued the purchase of ice cream from Gil-pin & Hittner before the final purchase of the soda "fountain fixtures, then Gilpin & Hittner would remove the soda fountain and fixtures*, or make an arrangement to dispose of them to Ignelzi. Ignelzi gave notes to Gilpin & Hittner to cover the value of the soda fountain purchase and the rentals to be paid. With this finding on the part of the referee, there could be no other result than to declare the contract to be one of bailment and to return the property to the claimant.

The receiver contends that there was evidence from which the referee should find that the contract was one of conditional sale, namely, the first giving of notes for the full price that Gilpin & Hittner paid for the fountain, and then the accepting of notes thereafter less the deduction of the amount of rental already paid thereon; the reduced notes from time to time being given to cover the then valuation of the soda fountain equipment. M. A. Ignelzi, the father of the bankrupt, who was present at some of the negotiations, was asked who was to own the fountain, and he replied: “Mr. Gilpin bought it for him.” The bankrupt testified that the 35 cents per gallon extra to be purchased by him was to be a payment on the soda fountain.

Now, this agreement was entirely an oral agreement. The referee had the witnesses before him, and found from the oral testimony that the arrangement was a bailment. We believe that the testimony of Mr. Gilpin would have justified that finding, and we fully eon-cur in the findings of the referee that giving notes would not turn a bailment into a conditional sale. In the case of Walton y. Tepel, 210 F. 161,163, the Circuit Court of this circuit, Judge Buffington writing the’ opinion, held that even the giving of a note representing the final optional purchase payment did not of itself convert the bailment into a conditional sale, saying: “Manifestly, such notes are given, not to annul a contract of bailment, but to provide for its step by step fulfillment.”

Then, too, all the surrounding circumstances indicate that the contract was one of bailment. Gilpin & Hittner were not engaged in the soda fountain equipment business-; they were ice cream dealers; they purchased the soda fountain equipment to be used by Ignelzi while be 'bought their ice cream. Ignelzi was to pay a 35-eent rental on the fountain, and the arrangement was to continue as long as he used the Gilpin & Hittner ice cream. If that relation terminated, Ignelzi was to return the fountain equipment to Gilpin & Hittner, or exercise his option to purchase at that time, paying the balance of its value after deducting the rental payments of 35 cents per gallon.

The referee has noted the decisions upon which he rests his conclusion that the oral agreement was a bailment and not a conditional sale. We think they fully justify his findings. The order of the referee will be confirmed.


author: SCHOONMAKEB, District Judge.

text:
    In re MILLIRON CONST. CO.
    No. 15036.
    District Court, W. D. Pennsylvania.
    Nov. 13, 1930.
    Pentz & Pentz, of Du Bois, Pa., for Du Bois Nat. Bank.
    Arnold & Smith and Liveright & Smith, all of Clearfield, Pa., for trustee D. E. Hibner.
    Lisle D. McCall, of Du Bois, Pa., for wage claimants & general creditors.
    Alter, Wright & Barron, of Pittsburgh, Pa., for People’s Pittsburgh Trust Co.
   SCHOONMAKEB, District Judge.

This case came on to be heard on a certificate to review an order of the referee in bankruptcy refusing the petition of the Du Bois National Bank, trustee, to have paid to it the sale proceeds of certain personal property sold by the trustee in bankruptcy which the Du Bois National Bank claimed was subject to the lien of a certain mortgage executed by the corporation on August 18, 1927, mortgaging certain real estate in the city of Du Bois, county of Clearfield, and state of Pennsylvania, which mortgage contained the following provision: “Together with all the corporate and other franchises, rights, licenses and privileges, all equipment such as concrete -mixers, steam roller, steam shovels, trucks, automobiles, portable railways, locomotives, cars, tools of every kind and character and description, in accordance with inventory made, sworn to and filed with the trustee by the Construction Company, and all lands, buildings and equipment and tools of every kind and character and description that may be hereafter purchased or possessed by the Construction Company.”

The property claimed by the Du Bois National Bank, trustee, as subject to the lien of its mortgage, was purely personal property consisting of concrete mixers, steamroller, steam shovels, trucks, automobiles, and tools used by the now bankrupt corporation in its business of highway contractor in the building of public highways in the states of Pennsylvania, New York, and Ohio. None .of the personal property involved had any fixed relation to the real estate mortgaged, and none of it was necessary to any business carried on upon the real estate, the real estate being used merely as a place to house and repair road-building machinery and equipment, when not in use upon the business of the corporation in building roads and public highways.

The Du Bois National Bank contends that this mortgage was authorized by the Pennsylvania Act of May 21, 1889, P. L. 257 (15 PS § 341), authorizing corporations to borrow money and secure the indebtedness by mortgage upon the real estate and machinery, or on their real estate aloné. The trustee in bankruptcy contends that there is no statutory authority for the execution of this mortgage as against the road-building equipment which the Du Bois National Bank, trustee, is claiming subject to the terms of this mortgage.

As we approach this case, we do so understanding that it is against public policy in Pennsylvania to sustain chattel mortgages and sales which leave the property in possession of the debtor as against execution creditors. Roberts’ & Pyne’s Appeal, 60 Pa. 400; Klaus v. Majestic Apartment House Co., 250 Pa. 194, 95 A. 451 (221).

It is well-settled law that a trustee in bankruptcy stands in the position of an execution creditor. Therefore this mortgage cannot be sustained as against the trustee in bankruptcy unless there is some Pennsylvania statute which directly authorizes the mortgaging of this property. We can find no such act.

The Act of May 21, 1889, P. L. 257, cited by the counsel for the Du Bois National Bank, does not confer upon the corporation authority to mortgage its road-building equipment; that act merely authorizes the mortgaging, in connection with real estate, chattels that may have been placed on the premises for permanent use in the necessary operation of a plant thereon. It certainly cannot cover road-building machinery in use at various points along - the highways of Pennsylvania, New York, and Ohio. This act was thoroughly discussed by the Pennsylvania Supreme Court in the ease of Klaus v. Majestic Apartment House Co., supra, in considering a mortgage placed by a hotel company upon its real estate and personal property, where that court held that the Act of May 21, 1889, conferred no authority upon the hotel company to mortgage' its furniture and equipment.

Counsel for the Du Bois National Bank, trustee, contends that this ease should be ruled by the Pennsylvania authorities holding that a chattel placed in. an industrial establishment for permanent use and necessary for the operation of the plant becomes a fixture and as such a part of the real estate whether physically attached thereto or not. Titus v. Poland Coal Co., 275 Pa. 431, 119 A. 540; Colvin v. Crown Coal & Coke Co., 90 Pa. Super. Ct. 560. We cannot see that these cases are applicable to the facts of the instant case at all. In the cases relied upon by the bank, the business of the corporation was transacted on the real estate. In the instant case, the road equipment and machinery was not used on the real estate, but throughout the highways of Pennsylvania, New York, and Ohio, where its business of highway construction company was carried on. These cases are not applicable to the facts of the instant ease.

The order of the referee dismissing the petition of Du Bois National Bank, trustee, will therefore be sustained.


author: CAMPBELL, District Judge.

text:
    JONES v. FREED-EISEMANN RADIO CORPORATION.
    No. 3674.
    District Court, E. D. New York.
    Sept. 7, 1929.
    Decree affirmed in 47 F. (2d) 174.
    Cavanagh & James, of New York City (Maxwell James, of New York City, of counsel), for plaintiff.
    Pennie, Davis, Marvin & Edmonds, of New York City (Willis H. Taylor, Jr., of New York City, of counsel), for defendant.
   CAMPBELL, District Judge.

This is an action in equity for the alleged infringement of patent No. 1,658,804, issued to the plaintiff for Capacitive-Coupling Control System, dated February 14, 1928; and patent No. 1,658,805, issued to plaintiff for Capacitive-Coupling Control System, dated February 14, 1928.

The original application was filed December 15, 1922.

The alleged divisional application of patent No. 1,658,804 was filed September 21, 1926.

The alleged divisional application of patent No. 1,658,805 was filed March 15, 1927.

The said alleged divisional applications for the patents in suit were not filed as a •result of a requirement for division by the Patent Office, but were optional divisions.

The defendant, Freed-Eisemann Radio ■Corporation, is the manufacturer of FreedEisemann Neutrodyne radio receivers, and ■has been continuously since December 5, 1922, utilizing the Hazeltine Neutrodyne patents under which it has been licensed.

The instant suit is being defended by and .at the expense of the Hazeltine Corporation, the owner of said Hazeltine Neutrodyne patents.

The two Jones patents in suit relate to the neutralization of capacity-coupling, in whole or in part, of vacuum tubes employed in the circuits of a radio receiver.

The first of the patents in suit was not issued on the first alleged divisional application, but on the second, as the first alleged divisional application was filed December 13, 1923, and resulted in patent No. 1,641,438, the specification of which is substantially identical with the original Jones application, filed December 15, 1922.

The first patent in suit, No. 1,658,804, was not filed until September 21, 1926, about three years and nine months after the filing date of the parent application, and about three years and seven months after the FreedEisemann Neutrodyne appeared on the market; but during the interval between March 16, 1923, and September 21, 1926, plaintiff filed twenty-one patent applications, one of which, filed March 6, 1926, now patent No. •1,620,261, relates to an alternative to the method of the parent application, filed December 15,1922.

The second patent in suit, No. 1,658,805, was not filed -until March 15, 1927, about four years and three months after the filing date of the parent application, and about four years after the advent of. the FreedEisemann Neutrodyne on the market; but during the interval between September 21, 1926, and March 15,1927, plaintiff filed seven patent applications.

The structure of the transformer coils P, A, and S, and the coupling and circuit connections of Defendant’s Exhibit W, as originally built and operated as early as December 7,1922, is substantially identical with the circuit arrangements of the Freed-Eisemann alleged infringing receiver, Plaintiff’s Exhibit 8, and there was no change in the design of the sets after the Jones Meleo Supremo radio receivers came on the market.

Any suggestion which the plaintiff intended to convey that such a change was made was without any knowledge to support it, because if his testimony, with regard to his knowledge of the defendant’s receiver, be accepted as true, we must believe that although there was delivered to him, by the defendant, during July 1923, a Freed-Eisemann N R 5 Neutrodyne receiver' for the express purpose of inspection, and that he was familiar with various neutrodyne receivers on the market during the period 1923 to 1926, he never examined any of the coupling transformers of such neutrodyne receivers until about April, 1928. Therefore, of course, he could not tell if any such change had been made.

All during this period the Hazeltine licensed manufacturers were making and selling neutrodynes, having arrangements which are described by the claims of the patents in suit, as now interpreted by plaintiff.

The claims in suit are of a different character and scope than those presented in the plaintiff’s original case of December 15, 1922, and the parent application did not suggest that Jones regarded the features now alleged to be covered by the claims in- suit of importance, or that he meant to claim such features, because it was not until the amendments of October 29, 1927, and December 29, 1927, that we find the plaintiff giving importance to couplings less than unity, substantially less than unity, separately and closely, equally, and that range of couplings that can be obtained with air cored transformers, although such features might have been described and claimed in the first divisional application of December 13,1923, now patent No. 1,641,438, and it was not until the trial that there appears to have been any contention raised as to the importance of the so-called reflected feed-back phenomenon.

The original application of Jones, filed December 15, 1922, was involved in an interference in the Patent Office with the “plate circuit neutralization” patent of Hazeltine, No. 1,533,858, owned by the Hazeltine Corporation.

The Patent Office tribunals unanimously awarded priority of this important invention to Hazeltine, and accorded to him the benefit of his filing date of December 28,1920.

Patent No. 1,533,858, to Hazeltine, was originally filed December 28, 1920, and issued on April 14,.1925, on a divisional application filed in response to a requirement of the Patent Office on December 28, 1923.

The parent patent No. 1,489,228 was issued on April 1, 1924, at which time the drawing and specification, which were identical with those of patent No. 1,533,858, became available to the public.

The plaintiff is not corroborated by Priess, the only person to whom it is contended that he disclosed the work he said he did in 1917; in fact, Priess testified that plaintiff made no such disclosure, and that as late as 1919, the usual form of neutralizing arrangements was not known to him, Priess.

The invention of plate circuit neutralization by Hazeltine was considered of sufficient importance by the Navy Department to keep a complete file with reference thereto, and yet not even one of the superior officers of Jones, the plaintiff, has appeared to testify that Jones made any report to him of work done by Jones along these lines in 1917, much less that Jones made any disclosure to him, and there is nothing found in any files of Jones’ work along these lines in 1917.

Freed, the president of the defendant, showed Jones, the plaintiff, a sketeh of Hazeltine’s plate circuit neutralization arrangement, as embodied in a receiver, on December 10, 1922 (Exhibit A).

The plaintiff says the sketeh (Exhibit A) is incomplete, but he also says that Freed told him, on December 10, 1922, that he (Freed) had seen a model apparatus embodying the Hazeltine circuit, that such apparatus did not operate satisfactorily at first, and that Freed, by moving a connection, succeeded in securing better results. There can, therefore, be no question that Freed, prior to December 10, 1922, had constructed a model apparatus embodying the Hazeltine circuit, which operated, and had shown a sketeh to the plaintiff before plaintiff filed his application for the parent patent.

This was five days prior to the plaintiff’s filing date of his parent application of December 15, 1922.

The fact of the execution of the license agreement on December 18, 1922, between plaintiff and defendant, which was subsequently returned to the plaintiff, does not warrant the reflections east upon the testimony of Freed in plaintiff’s brief, as that very agreement shows that the possibility of conflict with Hazeltine was considered.

The position taken by the plaintiff in the past does not seem to be consistent with his present position, especially the insistence of plaintiff’s counsel that Jones solved the problem of a workable tuned radio-frequency receiver, in the patents in suit.

In his testimony in the action entitled Westinghouse Eleetric & Manufacturing Company and Radio Corporation of America v. Royal-Eastern Supply Company and Amseo Products, Inc. (D. C.) 9 F.(2d) 397,' tried and decided in 1925, before the amendments of October 29,1927, and December 29, 1927, were made to the applications for the patents in suit, the plaintiff accorded to Hazeltine the title of “the inventor of the Neutrodyne type of receiver”; but on the trial of the instant suit qualified that tribute, on the ground that at that time he did not know all the facts he knew now, and that he had found out a great deal after that suit; and he also said that by using the term “Neutrodyne type of receiver” he was referring to the general type of eapaeitively-tuned amplifier circuit, as distinguished from the inductively-tuned type.

In the same ease Jones testified, on cross-examination, that he was not the first to have an “inductively-tuned circuit coupled together in a radio-frequency amplifier system,” nor the first “to have them in cascade arrangement,” nor the first “to have means for controlling or eliminating feed-back in a radio-frequeney system.”

Jones also testified in the same ease: “In the inductively-tuned system, my contribution was the invention and design of units which would effectively tune and amplify and with regard to the feed-back devices, the feed-back elimination devices, they were devices which would really eliminate the feed-back”; and that he “was the first to design and put on the market a tuned radio-frequency set of the Melco Supreme type.”

In the same ease, it seems to me that Jones testified to the same fact as Hazeltine did in the instant suit, with regard to Fig. 3 of the patent No. 1,087,892 to Schloemilch and Van Bronk, when Hazeltine said, and I agree with him: “This figure shows a stage of tuned radio-frequency amplification, and the arrangement of the circuit is such that the addition of the neutralizing means would put it in essentially the same form as the Neutrodyne receiver.”

Hazeltine, in the instant suit, also testified, with reference to Fig. 2 of patent No. I, 173,079, to Alexanderson, as I believe correctly :

“This figure in the Alexanderson patent to which you have referred is even more closely arranged in the way that-the Neutrodyne receivers are arranged, with the exception of the. absence of neutralizing means. It is multistage and the coupling system includes a transformer with a tuning condenser connected across the secondary, just as is the practice in all the Neutrodynes.”

Judge Thacher, in deciding the ease entitled Radio Corporation of America v. E. J. Edmond & Co. (D. C.) 20 F.(2d) 929, 931, in discussing the Alexanderson patent No. 1,172,079, after speaking of self-oscillations produced by feed-back from the plate circuit to the grid circuit of each audion said:

“Modem methods for the control of regeneration and the undesirable self-oscillations which result therefrom were unknown in the art when the patent in suit issued. These improved methods have perfected Alexanderson’s system of geometric tuning.”

As I understand the plaintiff’s contention, broadly stated, it is that the first patent in suit centers about the coupling relations between the coils, primary, auxiliary, and secondary designated throughout the trial as P, A, and S, in electron discharge tube circuits, and the second patent about tuning.

In view, however, of Schloemilch and Van Bronk patent, No. 1,087,892, and Alexander-son patent No. 1,173,079, tuning was old either in single stage or in multistage arrangement, as shown in those patents, and this opinion is strengthened by the testimony of Jones, in the Amsco Case, and Hazeltine and Wheeler, in the instant suit, and also because all neutrodyne receivers employed the arrangement of the Alexanderson patent, Fig. 2, plus plate circuit neutralization. Therefore, there was no invention -in .tuning, as broadly claimed by the plaintiff in the second patent in suit.

As I have hereinbefore stated, the plaintiff is not corroborated as to any work he says he did in 1917, relating to the invention here in suit, or to neutralization of capacity-coupling in general, by whatever name it is called, and therefore no further consideration will be given thereto.

This brings us to the development work the plaintiff says he did in 1922.

He is not corroborated by Priess, whom he called as a witness, as Priess said he had no recollection of receiving a letter which plaintiff says he sent to him, dated October 24, 1922, and containing a paragraph relating to some work done by plaintiff, entitled “Tube Capacity Coupling,” which plaintiff says is work he did in October, 1922.

Plaintiff says he visited Priess in October, 1922, in connection with some litigation in whieh Priess was involved, and that before going to Boston he visited the witness Danziger at his house.

The witness Danziger says that at that time the plaintiff thought of a circuit for neutralizing the capacity of the vaeuum tube, and drew for Danziger such a circuit.

Danziger drew a circuit in testifying here (Exhibit 40) to show the circuit Jones had at that time drawn for him, which shows a eapaeitively-tuned neutralized stage.

Danziger, when testifying in the Hazel-tine interference, drew a circuit (Exhibit C C) to show the same circuit hereinbefore referred to, that Jones on the oeeasion of the aforesaid visit had drawn for him, which showed an inductively-tuned arrangement.

The explanation made by the witness Danziger of this inconsistency, “I might have recalled it is possible to use either the inductively-tuned or the capacitively-tuned,” is not impressive.

The witness Danziger testified in this suit that the arrangement- of Exhibit 40 (Danziger Sketch 1) is the one the plaintiff tried out immediately after his return from Boston.

In the interference, the witness Danziger testified that the arrangement the plaintiff set up immediately after his return from Boston was an inductively-tuned arrangement (Exhibit CC, Danziger Sketch 2).

On being asked on the trial of the instant suit whether he wanted to change his answers to the questions, the answer of Danziger was, “Why, the experiment I was mostly interested in was the matter of tube neutralization, and as far as my testimony is concerned, I think that is the only part of it that I care to testify to exactly,” which does not impress me as being the kind of corroboration required.

The witness Danziger also said that both types of tuning were tried out, “exactly which one was tried before the other I could not say”; and he also said that he did not know how much prior to March, 1923, it was that the plaintiff set up either an experimental or other arrangement employing capacitive-tuning.

The testimony of the witness Danziger with reference to reflexing and Exhibit 20 shows that his recollection is not sufficiently certain and accurate to furnish corroboration of the plaintiff’s testimony.

None of the notebook entries, either in bound book or on loose pages, of the plaintiff, referred to on the trial in connection with Exhibit 17, were ever signed, initialed, or dated by any individual but the plaintiff himself, with the exception of page 18 of plaintiff’s bound notebook, which under date of December 9, 1922, contains a calibration, in the handwriting of the witness Danziger, and under date of December 13th, contains an entry in the handwriting of the witness Danziger, and initialed by him.

Plaintiff testified it was not his practice at that time to have his laboratory notes witnessed by anybody.

The plaintiff testified that he entered into an agreement with the Mortimer Radio Corporation, under date of October 26, 1922, the agreement being in the form of a letter from Mr. Price to Mr. Jones, dated that day, in which, among other things, it is provided that the plaintiff was to design, for the Mortimer Radio Corporation, a three-tube receiving set, wherein “the back coupling due to tube capacity” was to be removed.

Plaintiff says he thereupon, immediately proceeded to start to work on the design of such a set, and on that day made an entry in his loose-leaf notes (Exhibit 17), page 1, of the circuit arrangement to be used.

The plaintiff said the circuit shown on page 1 of the loose-leaf notes, dated October 26th, indicated an inductively-tuned arrangement for the first radio-frequency amplifier tube, and a capacitively-tuned arrangement for the second radio-frequency amplifier tube, and a capacitively-tuned circuit for the input of the detector tube, and that the circuit represented a wiring diagram of an actual set-up of apparatus that he had made on October 23,1922, and with which he had been experimenting between October 23 and October 26, 1922.

The witness Danziger could not identify the said arrangement of page 1, nor say whether it was capacitively-tuned or inductively-tuned, but did say: “There is no tuning element shown there. * * * It does not show any tuning.” And he later said that the circuit shown on page 1 is not a circuit of any particular set-up, but a circuit of something that was being planned.

This certainly could not be called corroboration.

The letter dated November 2, 1922, which was sent by the plaintiff by registered mail to Mr. Danziger, and deposited thereafter unopened in the plaintiff’s safe deposit box, is relied on by plaintiff to fix the date of disclosure of the capacity eliminator. The envelope was opened at the time of the plaintiff’s testimony in the Hazeltine interference.

The letter in question was accompanied by a second sheet inclosed therewith, and dated the same day, which stated the purpose of sending the disclosure with the letter was “to assist in establishing the fact that today is the actual date of the disclosure of the capacity eliminator.”

If November 2d was the date of disclosure, then it confirms Priess’ testimony that he had no recollection of receiving the letter alleged to have been sent to him by plaintiff, dated October 22d, and it also shows that plaintiff could have made no disclosure in his discussion with Price, on October 26,1922, of an arrangement for “removing the back coupling due to tube capacity.”

The paper dated November 2, 1922, entitled “Disclosure of Invention,” shows three figures substantially the same as Figs. 1 to 3 of the patents in suit, and contains the statement:

“The plate battery tap on the plate impedance is preferably at the exact center and the two halves of the plate impedance are preferably strongly coupled together and equally coupled to the secondary, so as to ensure having equal and opposite potentials on the points A and P with respect to the plate battery tap D.”

In other words, the plaintiff prescribed that the inductance of the primary coil P, and the inductance of the auxiliary or neutralizing coil A, shall be equal and alike in number of turns, etc., and that the two halves of the coils P and A shall be preferably strongly coupled together, and equally coupled to the secondary S.

A “coupling substantially less than unity” is not even suggested, but a strong or very close coupling of the coils P and A is recommended. On the trial the plaintiff attempted to reduce the force and effect of his words “preferably strongly,” but finally, after considerable questioning, in answer to a question ás to “What range of coefficient of coupling you mean between coils P, and A, when you say ‘closely coupled/ and also when you say ‘preferably strongly coupled/ ” he said, “I would say I would mean generally about the same thing.”

There is no suggestion in the disclosure that “the main feed-back coupling does not originate in the primary * * * but originates in the tuned secondary circuit and is reflected from this circuit into the plate or primary coil,” but that disclosure states:

“Fig. 1 shows the invention applied to a tube with an inductively coupled transformer in the plate circuit,
“Fig. 2 shows it applied to a tube with a. choke coil in the plate circuit.”

Nothing is reflected back from the choke coil shown in Fig. 2.

Although Jones’ counsel now urges that Hazeltine’s failure in 1922, as he terms it, was due to his failure to recognize this reflected feed-back phenomenon, we find that in neither the original application of Jones, filed December 15, 1922, nor in the Jones patent here in suit, is there any mention of this phenomenon. Therefore, it seems to me that Hazeltine succeeded and did not fail, even if he did not recognize the phenomenon of reflected feed-back, which seems to be an afterthought of the plaintiff, Jones.

Plaintiff also claims, as I believe without any foundation, that Freed constructed his model FF after Jones disclosed to Freed the invention of his patent in suit.

Exhibit W embodies a reflex arrangement, but-Freed did not secure from Jones the idea of eliminating reflexing in constructing defendant’s Exhibit FF, which did not utilize reflex, and was made up immediately following the construction of Exhibit W, and prior to the visit of Jones on December 10, 1922. This is shown not only by the testimony of Freed, but by the entry on page 18 of the plaintiff’s notebook, under date of December 11, 1922:

“At Oradell found definitely that reflexing spoils quality of loud signals and decided to eliminate it.”

From which it appears that Jones did not eliminate reflex until after Exhibit FF was made up, and Jones had conferred with Freed.

Exhibit 20 does not embody a reflex arrangement, and plaintiff alleges he delivered it to the Mortimer Radio Corporation on December 22,1922.

We will now turn to the work of Hazel-tine :

As I have hereinbefore stated, the Navy Department’s file of correspondence and disclosure to it by Hazeltine during the year 1919 is complete.

No mention of coupling substantially equal to unity is found in the disclosure accompanying Hazeltine’s letter of May 10, 1919.

Hazeltine forwarded to the Navy Department, under date of July 14, 1919, a draft specification which was almost in the' same form as the specification of the application filed December 28, 1920, claim 4 of the draft application being substantially claim 1 of Hazeltine patent, No. 1,533,858, and relates broadly to plate circuit neutralization.

Claims 11 and 12 of the draft application relate to multistage arrangements.

Claim 11 relates to plate circuit neutralization, and claim 12 to grid circuit neutralization, both in a multistage amplifier.

Claim 1 of Hazeltine patent, No. 1,450,-080, specifies close coupling only, and not a coupling substantially equal to unity.

Hazeltine’s patent, No. 1,450,080, was filed by the Navy Department on August 6, 1919, and his applications for patents Nos. 1,489,228 and 1,533,858 were filed by his attorneys, the former on December 28, 1920, and the latter being a division of the former, required by the Patent Office, on December 28, 1923.

The corroboration of Hazeltine’s testimony as to his work, prior to the filing of his application on December 28, 1920, is complete and convincing.

The next work of development by Hazel-tine of which we are informed began on July 31, 1922, when, as shown in his notebook, he first began to outline and design a suitable arrangement for a tuned radio-frequency amplifier receiver, employing more than one vacuum tube.

He first worked with a receiver employing super-regeneration, but about the end of August was engaged in designing a simple regenerative receiver, which did not employ super-regeneration.

Plaintiff’s receiver, Exhibit 20, may be characterized as a simple regenerative receiver. It has regenerative control in the form of adjustable condensers, which may be adjusted for balance, in which case it is not regenerative, or they earn be adjusted to give regeneration.

The performance of that type of receiver is much better when regeneration is employed.

It is unnecessary to detail each of the steps taken by Hazeltine, as they are recorded in his notebook, the important steps being dated and witnessed by men who identified their initials on the trial.

On August 29, 1922, occurred the visit of Harold A. Wheeler to Hazeltine, at his laboratory at Stevens Institute of Technology, Hoboken, N. J., when Wheeler sketched the circuit now pasted in Hazeltine’s notebook, on page 398, and initialed and dated by Hazel-tine, at which time Hazeltine showed Wheeler the drawings of his application filed December 28,1920, now patents Nos. 1,489,228 and 1,533,858, and Wheeler agreed that his method was the same as that of Fig. 2 of the said Hazeltine patents.

At the same meeting Hazeltine showed Wheeler a radio-frequency amplifier, which is the receiver of Hazeltine patent No. 1,658,-638.

It appears from Hazeltine’s notebook and the testimony that Hazeltine had been continuously working on a form of tuned neutralized radio-frequency amplification, up to and including August 30,1922.

A circuit diagram appears in Hazeltine’s notebook, under date of September 6, 1922, cheeked, signed, and dated by Dreyer and Poole, which relates to a receiver which had been tried out and gave excellent results.

The following entry by Hazeltine, dated September 8, 1922, appears right below the one last mentioned:

“In the above circuits it was found that the neutralizing coil A could be adjusted so that it neutralized capacity coupling just as with the model arrangement as described on page 398.”

On page 414, under date of November 3, 1922, appears a diagram drawn by Hazeltine, of a neutralized tuned radio-frequency amplifier, having plate circuit neutralization, and being multistage. This arrangement was disclosed to Wheeler on the same day, and he signed his name thereto.

On page 429, under date of December 3, 1922, there is an entry relating to the proper angle at which to place coils for the purpose of avoiding magnetic coupling therebetween, which was utilized in Exhibit W, and has been covered by Hazeltine’s patent No. 1,577,421.

Rodman had difficulties with an untuned radio-frequency amplifier, caused by oscillations, and consulted Hazeltine. He says that Hazeltine told him, in June or July, that he (Hazeltine) had invented a method or circuit which would solve Rodman’s problem, but that his attorneys did not think it should be disclosed at that time.

Rodman kept after Hazeltine pretty consistently.

In the latter part of November, 1922, Hazeltine, at his attorneys’ office, drew a sketch of his invention for Rodman, who was president, and Freed, who was secretary, of the I. R. M., an association of manufacturing companies.

Rodman had an appointment to meet Hazeltine at Freed’s office, on December 5,1922, but missed him. He saw Freed, however, who showed him the sketch Exhibit V, which Freed says Hazeltine left with him on that day, and which Rodman says incorporates the schematic diagram and general layout of parts which was to be employed in the first model receiver.

Freed built the receiver in accordance with Exhibit V, and Hazeltine, Rodman, Freed, and Dreyer identify Exhibit W as the' receiver which was built by Freed.

The receiver was completed and Hazel-tine, Freed, Rodman, and the others, received signals on it on the evening of December 7, 1922, but were not able to properly control oscillations. Rodman was very well satisfied with the results that had been obtained.

Hazeltine took Exhibit W to his laboratory and certain changes were made, the unsatisfactory semicircular plate neutralizing condensers were removed' and replaced by twisted pieces of wire, and on December 8 or 9, 1922, Hazeltine satisfactorily operated the receiver, in the presence of Freed, Rodman, and others, and it neutralized so that no difficulty was encountered with oscillations.

Hazeltine modified the circuit arrangement in Exhibit W from the way it had been constructed by Freed, following Hazeltine’s sketch Exhibit Y, so that the tap-off connection, which made use of a portion of the secondary coil as the neutralizing coil, was changed from the tap-off or intermediate point to the end of the secondary coil, utilizing the twisted wire as neutralizing condenser.

This tap-off arrangement is fully disclosed in Hazeltine’s patent, No. 1,577,421, granted March 16,1926/

This is the tap -off connection used in the alleged infringing device, and is exactly the same as that shown on Exhibit Y, except that in the alleged infringing device the primary winding extends a little beyond the tap portion of the secondary.

Hazeltine says that the original tap-off connection of Exhibit W employed couplings between the primary and auxiliary and secondary, respectively, of 75-80 per cent, and 70-75 per cent.

Exhibit W as originally constructed by Freed employed the same circuit connections as those employed in the alleged infringing device, and a schematic circuit arrangement of the tuned radio-frequeney amplifier portion of the alleged infringing apparatus is shown in Fig. 2 of Hazeltine’s application, filed April 7,1924, now patent No. 1,577,421, granted March 10, 1926.

I see no reason- for any discussion of the slight change made at Christmastime, or the demonstration in March, as the invention was complete long before that time. Neither do I see any need for a discussion of the newspaper articles referred to in the evidence, and emphasized by plaintiff, except to call attention to the fact that plaintiff never made any oral or written complaint of the article in the New York Tribune of Sunday, March 4,1923, whieh characterized the Hazeltine receiver as the one whieh revolutionized the radio-frequency amplifier.

As has been shown, the work of Jones lacks corroboration except for the disclosure of November 2, 1922, and his receiver was not completed and delivered to the Mortimer Radio Corporation until December 22, 1922.

As has been hereinbefore stated, Jones in his disclosure of November 2,1922, prescribes that the inductance of the primary coil P, and the inductance of the auxiliary or neutralizing coil A, shall be equal and alike in number of turns, ete., and also prescribes that the two halves of the coils P and A shall be preferably strongly coupled together and equally coupled to the secondary S; but this was not new, because equality of coupling between P, and S and A, and S is shown in the Hazeltine patents, Nos. 1,450,080,1,489,228, and 1,533,-858, when the coils Li and Lz are equal and very closely coupled, and this was pointed out in Hazeltine’s disclosure of May, 1919, and the specification of his patent filed in August, 1919.

This suit is based on claims 1, 2, and 4 to 11 of the first Jones patent, No. 1,658,804.

Claim 4, whieh plaintiff contends is typical of the single stage claim embodying plate circuit neutralization, reads as follows: •

“4. In combination, an electron discharge tube with its grid and plate electrodes, a grid or input circuit, a plate or output circuit, a transformer having primary and secondary coils the primary coil of which is in said output circuit, and means for compensating for energy retransfer from the plate to the grid circuits including a condenser connected to the high potential side of the grid circuit and a coil connecting said primary coil with said condenser and coupled to said primary coil with a coupling substantially less than unity, the said coil and the said primary coil being separately and equally coupled to the transformer secondary coil, the said coil and the condenser having values such that the product of the created potential and the capacity of the condenser is substantially equal to the electrostatic charge carried to the grid from the plate-across the grid plate capacity,”

Claim 11, whieh plaintiff contends is typical of the multistage claim embodying either plate or grid circuit neutralization, reads as follows:

“11. A neutralized multistage amplifier comprising a plurality of stages, each stage having an electron discharge device containing a grid and a plate circuit and mechanism in each stage for neutralizing the capacity coupling between the grid and plate circuits of such stage due to the capacity between the grid and plate electrodes, said neutralizing mechanism for eaeh stage comprising a coil connected between one of the electrodes and the filament system and an auxiliary coil and a neutralizing capacity connected in series between the other of these electrodes and the filament system, said auxiliary coil being coupled electromagnetically with a coupling substantially less than unity to the first coil, and both said first coil and auxiliary coil of each stage being coupled separately and closely to a coil of the next adjacent stage.”

In each of the claims of this patent it is specified that the primary coil and the auxiliary coil are coupled together, with a coupling substantially less than unity. The coupling of the auxiliary coil to the secondary coil, and the primary coil to the secondary coil, being shown in the claims of the patent in suit as follows:

Claim 1, as separately and closely.
Claim 2, as closely and equally.
Claim 4, as separately and equally.
Claim 5, as separately and equally.
Claim 6, as separately and closely.
Claim 7, as separately and equally.
Claim 8, as separately, closely, and equally.
Claim 9, as separately and closely.
Claim 10, as closely and equally.
Claim 11, as separately and closely.

As I have before stated, there was no suggestion by Jones of a coupling less than unity, or substantially less than unity, until the amendments made in 1927, which were made to distinguish over Hazeltine patent, No. 1,533,858, which was cited as a reference.

The claims of the original application, with the exception of claim 4, which related to a specific arrangement of a neutralizing condenser, as shown in Fig. 5, disclosed nothing over Hazeltine and were all rejected by the Patent Office Examiner, on Hazeltine patent No. 1,533,858, the rejected claims all being directed to plate circuit neutralization, either in conjunction with tuning, or in conjunction with the various permutations and combinations utilizing separate, equal and close couplings; that is, each claim recited two of these three limitations in combination, and permutations were made of the different possible combinations, and some of the claims described both tuning and this relationship of equal, close, and separate coupling.

Claims 5,12,13, and 14 were amended to describe couplings less than unity, but these were again rejected by the Patent Office Examiner, on Hazeltine patent, No. 1,533,858, stating:

“While it is true that the Hazeltine disclosure deals with very close coupling, it is also true that unity coupling is impossible to attain, and the expression ‘less than unity’ does not distinguish over the above mentioned patent.”

The remaining claims, which theretofore had been limited to a coupling “substantially less than unity,” were allowed.

Claims 5,12,13, and 14 were then amended to read, “a coupling substantially less than unity.”

If there is any difference in the mind of the plaintiff between the meaning of the words “less than unity,” and “substantially less than unity,” he certainly did not explain it in terms of percentage range, under questioning which was long sustained and even participated in by the court.

The nearest approach to the real meaning of the words to him appears in the following answer of the plaintiff:

“I do not think you can ever reduce it to a percentage. Where two coils are purposely pulled apart so as to make the coupling depart a great deal from unity coupling, then I would say that is substantially less than unity.”

In making the amendment above described to the specifications and claims, Jones pointed out that he meant by a “coupling substantially less than unity,” that range of coupling that can be obtained with air cored transformers, and then said, “As understood, this does not mean that applicant is limited to all air cored transformers.”

Hazeltine patents, Nos. 1,489,228 and 1,533,858, show air cored transformers in Figs. 5 and 6.

In Hazeltine Corporation v. Electric Service Corporation (D. C.) 18 F.(2d) 662, Judge Thacher discussed the matter of coupling at some length. Hazeltine patent No. 1,489,228 claims broadly an arrangement wherein the coupling between the primary (P) coil and the neutralizing (A) coil is specified as “substantially equal to unity.” Hazeltine patent, No. 1,450,080, specifies particularly in the claim there in suit that the coils P and A are “elosely coupled.” The apparatus alleged to infringe the Hazeltine patents in that ease had a coefficient of coupling of 72 per cent, between the P coil and the A coil, and Judge Thacher held this degree of coupling to be close and within the scope of Hazeltine patent, No. 1,450,080, but that it was not a coupling which could be characterized as “substantially equal to unity.”

Jones says that Judge Thaeher’s ruling is in accord with his viewpoint of “close coupling” and “coupling substantially less than unity.”

The alleged infringing device in the instant suit employs a coupling of 70 per cent.

In Hazeltine Corporation v. A. H. Grebe & Co., Inc. (D. C.) 21 F.(2d) 643, the coupling was of the order of 80 per cent, (actually 77 per cent.).

In Hazeltine Corporation v. E. A. Wildermuth, 34 E. (2d) 635, 638, recently decided by the Circuit Court of Appeals of the Second Circuit, a suit based on Hazeltine patent, No. 1,533,858, which was originally filed December 20, 1920, and issued April 14, 1925, on a divisional application filed in response to a requirement of the Patent Office on December 28, 1923, the respective disclosures of Hartley, Hazeltine, and Rice are fully discussed, and the court says with reference to close coupling:

“The claims relied upon are in no way limited by close coupling. It is contended that the only distinction between Hazeltine and Rice is the closeness of coupling; that Hazeltine’s patent cannot be expanded by ignoring the express limitations of close coupling, which it is said is the essential feature to the Hazeltine method. In narrowing his claims [while in interference with Rice and] in distinguishing his invention from Rice, who had a grid circuit neutralization, Hazeltine did consent to close coupling in so far as the grid circuit neutralization claims were concerned, but broadly he secured a patent for the plate circuit neutralization over and above Rice, who is the nearest in the prior art.”

And after referring to the original and divisional applications aforesaid, further said:

“The claim that the only distinction between Hazeltine and Rice is the closeness of the coupling, and that the patent here in suit was expressly limited to close coupling, and cannot be expanded beyond it, is without force in the light of the history of these applications and the patents resulting therefrom. When Hazeltine’s applications were originally filed, he was uninformed about the Rice invention; he had broad claims for the use of electro neutralization, and to avoid Rice’s grid circuit he consented to the close coupling improvement over Rice.”

And again, in speaking of Hazeltine patent, No. 1,533,858, said:

“The subject-matter of the claims of the patent in suit is plate circuit neutralization. This is claimed broadly, without limitation to the degree of coupling in the claims herein relied upon. ¡Close coupling is usable with plate circuit neutralization, as well as with grid circuit neutralization, and according to Hazeltine it is the preferred form of neutralization. . The plate circuit neutralization, as defined in claims 1, 2, and 5, is not disclosed in the Rice patent, and therefore belongs broadly to Hazeltine. And the particular preferred embodiment of plate eir-r cuit neutralization with close coupling is defined in claim 3. It is not relied on here. Therefore close coupling is not the only difference between Rice and Hazeltine, for, as we have said, Rice did not diselose plate circuit neutralization.”

Hazeltine’s research prior to July 14, 1919, resulted in his invention of plate circuit neutralization. .

This is conclusively shown by the evidence in the instant suit, and nothing was offered in the instant suit to support any claim the plaintiff might make to be the inventor of plate circuit neutralization, other than his own uncorroborated testimony as to his work in 1917.

The alleged infringing device in the instant suit employs plate circuit neutralization and not grid circuit neutralization, and therefore if the limitation in all of the claims of the first patent in suit,' “coupling substantially less than unity,” has any definite meaning as to the degree of the closeness of coupling, it cannot, in so far as the alleged infringing device is concerned, distinguish over the Hazeltine patents hereinbefore referred to, and the work of Hazeltine and Wheeler in July and August, 1922.

Equality of coupling was shown by Hazeltine in his disclosure of May, 1919, and in the specification of August, 1919, because if the coils Li and Lz are very closely coupled, they must, as the plaintiff says, be equally coupled to the secondary.

In the alleged infringing device of the instant suit, however, the coils P and A are not equal, and the neutralizing capacity is not equal to the tube capacity to be neutralized. That there may be substantially equal coupling coefficients in the alleged infringing device has no engineering significance.

As to separate coupling, I accept the testimony of Hazeltine that it does not apply to the alleged infringing device, but relates to an arrangement such as is shown in Exhibit EE. If I accepted Jones’ interpretation as applied to the alleged infringing device, then I would be obliged to hold that Hazeltine patents, Nos. 1,450,080, 1,489,228, and 1,-533,858, disclose separate couplings of P to S, and A to S.'

With regard to close coupling between the P and S coils, and the A and S coils, it is shown in all of Hazeltine’s work and various patents since May, 1919.

Prom a careful reading of the original application of the plaintiff, filed December 15, 1922, of which the patents in suit are claimed to be divisions, I am convinced that the terms “coupling less than unity” and “coupling substantially less than unity” are afterthoughts, not supported by the original application, but inserted by amendment in an attempt to distinguish from Hazeltine’s application.

As I have hereinbefore shown, the alleged infringing device had been on the market for over five years before the amendments in question were made, and this fact was well known to the plaintiff; and the plaintiff by such amendments, even if they had a meaning which would cause them to read on the alleged infringing device (which I do not believe), cannot interfere with the intervening rights acquired by the defendant. Chicago & N. W. R. Co. v. Sayles, 97 U, S. 554, 24 L. Ed. 1053; Eagleton Mfg. Co. v. West Bradley & Casey Mfg. Co., 111 U. S. 490, 4 S. Ct. 593, 28 L. Ed. 493; Westinghouse Electric & Manufacturing Co. v. Jeffrey-De Witt Insulator Co. (C. C. A.) 22 P.(2d) 277; Dwight & Lloyd Sintering Co. v. Greenawalt (C. C. A.) 27 P.(2d) 823; National Electric S. Co. v. Telefunken Wireless T. Co. (D. C.) 209 P. 856; Marconi Wireless Tel. Co. v. National Electric Sig. Co. (D. C.) 213 P. 815.

The first patent in suit, No. 1,658,804, is invalid; but even if I am in error in this opinion, I am convinced and find that the defendant does not infringe that patent as to any claims in suit.

This suit is also based on all the claims of the second Jones patent, No. 1,658,805.

While both the plaintiff and his counsel said that the line of division between the first and second patents in suit is tuning, the fact is that plaintiff actually secured broader claims in conjunction with tuning, in the second patent in suit, than were allowed in the first patent in suit.

Claims 1, 7, 8, 9, 14, and 16 contain the limitation of “a coupling less than unity.”

Claims 2, 3, 4, 5, 6,10,11, and 12 contain the limitation of “a coupling substantially less than unity.”

Claim 13 provides: “The said coil and auxiliary coil being coupled to said air cored inductance coil to produce opposite reaction charges on said plate electrode and said neutralizing capacity.”

The coil first referred to as “said coil” being the primary .coil.

Claim 15 provides: “The said coil and auxiliary coil being coupled together closely and being coupled to said air cored inductance coil to produce opposite reaction charges on said one of the electrodes and said neutralizing capacity.”

Again, the coil first referred to as “said coil” is the primary coil.

What has been said about couplings in the discussion of the first patent in suit applies with even greater force here, because' some of the claims are broader; but aside from that, Jones was not the first, as between Hazeltine and himself, to have either a single stage or multistage tuned neutralized amplifier arrangement, in the light of Eigs. 5 and 6 of the Hazeltine patent, No. 1,533,858, and in the light of the work of Wheeler in July, 1922, and Hazeltine during August and September, 1922.

Plaintiff’s brief comments on Wheeler’s work in July, 1922, and gives but two reasons why it is contended that such work fails to anticipate the patents in suit, and as neither of them relates to tuning, it is evidently conceded that Wheeler used tuning.

In view of what I have heretofore said, it appears to me to be of no moment whether in Wheeler the coupling between the primary and auxiliary coils P and A, as the plaintiff says, were not substantially less than unity, in any case; but in view of the testimony of the plaintiff in the instant suit, I cannot see how it can be said that the couplings of these coils were not close to the coil S, or the secondary circuit as a whole.

While reliance on the Wheeler testimony is not necessary in the instant suit, in the face of the other evidence, I can find no evidence warranting the contention of plaintiff that Wheeler abandoned his work; nor does it seem to me that more could be required of Wheeler, to make a complete disclosure of any invention he had made, than what he did in taking it up with his friend and adviser, Mr. Stewart, and in making the complete disclosure which he did to Hazeltine, including the diagram or sketch in Hazeltine’s notebook.

Both of the claims 13 and 15 read directly on Fig. 6 of Hazeltine patent No. 1,533,858, and on Hazeltine’s work done during August and September, 1922, and Wheeler’s work in July, 1922.

Accepting the contention of plaintiff and his counsel that the line of division between the two patents in suit is tuning, then the second patent in suit, No. 1,658,805, is invalid for lack of invention over the first patent in suit, No. 1,658,804, and also because it is anticipated by Hazeltine patent, No. 1,533,858, which in Fig. 6 shows a tuned neutralized radio-frequency amplifier arrangement, which he states:

“The alternative arrangement of Fig. 2 may be applied to the neutralization of the capacity coupling in a radio-frequency power amplifier as illustrated in Fig. 6.”

And also because, as I have hereinbefore held, it did not involve invention to apply “plate circuit neutralization” to the tuned radio-frequency amplifier arrangement, either in single or multistage, as shown in Schloemileh and Van Bronk patent, No. 1,-087,892, and Alexanderson patent, No. 1,173,-079.

The second Jones patent in suit, No. 1,-658,805, is invalid.

A decree may be entered in favor of the defendant against the plaintiff, dismissing the complaint with costs.