21 F.(2d) 643 ence to the defendant's special construction. patent, No. 1,334,118, and Armstrong patent, There are four fact findings which have No. 890,593. a bearing upon the conclusion reached, and which are now made: (1) The trade is one with those who have an expert knowledge of valves and upon whom acts of deceit could not be successfully practiced, and our finding is that none of them were in fact deceived. (2) The defendant's make of valve was always conspicuously marked with his name as the maker, and the defendant never in fact imposed his make upon purchasers as the make of the plaintiff. (3) There is no likeness between the two makes of valves in their internal construction, but there is a similarity in outside form and general appearance which might be deceptive if the valves did not bear the name of the maker and the purchasers were not experts. There is no evidence that any purchaser bought the valves of the defendant in mistake for those of the plaintiff. (4) The finding that the defendant has been guilty of unfair competition is not made. The decided cases to which we have been referred are too numerous for listing, but none of them, to which we have had access, are in conflict with the conclusion reached. Among those cited are Proctor & Gamble v. Glove (C. C. A.) 92 F. 357; Ludlow v. Pittsburgh (C. C. A.) 166 F. 26; Morgan v. Ward (C. C. A.) 152 F. 690; Wesson v. Galef (D. C.) 286 F. 620; Standard v. Trinidad, 220 U. S. 446, 31 S. Ct. 456, 55 L. Ed. 536; Richmond v. Dr. Miles (C. C. A.) 16 F. (2d) 598. Conclusion of Law. 2. Patents 26(14)-Patent is not invalid because all elements are old, where they have not been used in combination. showing that all elements are old, where all Validity of patent is not to be defeated by elements have not been in combination, since law regards change as evidence of novelty, and acceptance and utility of change as further evidence of demonstration. 3. Patents 328-1,533,858, Hazeltine patent, claims 1, 2, 3, 5, 9, 12, 13, and 17, relative to neutralization of capacity coupling between grid and plate circuit of audion, held valid and infringed. Hazeltine patent, No. 1,533,858, April 14, 1925, relative to neutralization of capacity coupling between grid and plate circuit of auclaims 1, 2, 3, 5, 9, 12, 13, and 17, as against dion in radio, held valid and infringed as to contention that it embodied principles of Hartley patent, 1,183,875, and Colpitt's reissue patent, 14,380. 4. Patents 168(3)-Radio patent cannot be Interpreted to include degree of coupling excluded from it during proceedings in Patent Office. Patent No. 1,489,228, relative to special application of auxiliary neutralizing circuit to neutralizing capacity coupling between grid circuit and plate circuit of audion, cannot be interpreted to include degree of coupling which was excluded from it during proceedings in Patent Office. 5. Patents 82-Reference in application for patent, requesting benefit of certain statute, did not constitute "dedication" to public, where reference was stricken before patent was granted (Act March 3, 1883 [Comp. St. § 9441]). Request in application for patent for benefit of Act March 3, 1883 (Comp. St. § 9441), held not to constitute dedication to public, where patent was not issued under such act; reference 1. The bill should be dismissed, with costs thereto being stricken out before patent was to the defendant. No decree is now made, but the parties have leave to submit one in accordance herewith. granted. [Ed. Note.-For other definitions, see Words and Phrases, First and Second Series, Dedication.] 6. Patents 328-Where claims of radio patents are not coextensive, they may be secured by different patents. Claims of Hazeltine patents, Nos. 1,489,228, HAZELTINE CORPORATION et al. v. A. H. 1,450,080, and 1,533,858, relative to radio im GREBE & CO., Inc. District Court, E. D. New York. June 20, 1927. 1. Patents 328-1,489,228, claim I, Hazeltine patent, for device for producing permanent neutralization for all frequency in radio set, held valid and infringed. Hazeltine patent, No. 1,489,228, April 1, 1924, relative to special application of auxiliary neutralizaing circuit to neutralizing capacity coupling between grid circuit and plate circuit of audion, held valid and infringed as to claim 1, as against contention that it was invalid because it embodied principles of Rice provements, not being coextensive, law does not require that all be claimed in same patent, but they may, at option of patentee, be secured by different patents. In Equity. Infringement suit by the Hazeltine Corporation and others against A. H. Grebe & Co., Inc. Decree for plaintiffs. Pennie, Davis, Marvin & Edmonds, of New York City (William H. Davis, Willis H. Taylor, Jr., and R. Morton Adams, all of New York City, of counsel), for plaintiffs. Walter H. Pumphrey, of New York City (Thomas G. Haight, of Jersey City, N. J., of counsel), for defendant. MOSCOWITZ, District Judge. These two actions, brought by plaintiffs, Hazeltine Corporation (the owner of the patents) and Independent Radio Manufacturers, Inc. (the exclusive licensee), charge defendant, A. H. Grebe & Co., Inc., with infringement of the Hazeltine neutrodyne patents, No. 1,489,228, granted April 1, 1924, and No. 1,533,858, granted April 14, 1925. Plaintiffs charge that the so-called "synchrophase" radio receiver, manufactured and sold by defendant since July, 1924, embodies the Hazeltine neutrodyne invention, and is an infringement of claim 1 of patent No. 1,489,228, and of claims 1, 2, 3, 5, 9, 12, 13, and 17 of patent No. 1,533,858. Claim 1 of patent No. 1,489,228 reads as follows: "An electric circuit arrangement for neutralizing capacity coupling between the grid and plate circuits of an audion, due to the capacity between the grid and plate electrodes, comprising a coil connected between one of these 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 to the first coil and a coefficient of coupling substantially equal to unity and having a ratio of turns thereto equal to the ratio of the coupling capacity to the neutralizing capacity." Claim 1 of patent No. 1,533,858 reads as follows: "The method of neutralizing capacity coupling between the grid and plate circuits of an audion having a transformer in the plate circuit which consists in capacitively coupling the grid of said audion and a secondary of said transformer to cause equal capacity currents to flow to and from the grid whereby such current is prevented from flowing between the grid and the filament system." Claim 2, patent No. 1,533,858: "An electric circuit arrangement for neutralizing capacity coupling between the grid and plate circuits of an audion having a transformer in the plate circuit thereof, comprising means for capacitively coupling the grid of said audion and a secondary of said transformer whereby equal capacity currents due to a variation in the potential of the plate of said audion are caused to flow to and from the grid thus preventing such current from flowing between the grid and filament system." Claim 3, patent No. 1,533,858: "An electric circuit arrangement for neutralizing capacity coupling between the grid and plate circuits of an audion due to the capacity between the grid and plate electrodes, comprising a coil connected between the plate and the filament system, and an auxiliary coil and a neutralizing capacity connected in series between the grid and the filament system, said auxiliary coil being closely coupled electromagnetically to the first coil and having a ratio of turns thereto equal to the ratio of the coupling capacity to the neutralizing capacity." Claim 5, patent No. 1,533,858: "An electric circuit arrangement for neutralizing capacity coupling between the grid and plate circuits of an audion due to the capacity between the grid and plate electrodes, comprising a coil connected between the plate and the filament system, and an auxiliary coil and a neutralizing capacity connected in series between the grid and the filament system, said coils and said neutralizing capacity being so proportioned that variations in plate potential cause equal currents to flow through the coupling capacity and through the neutralizing capacity and prevent such current from flowing between the grid and the filament system." Claim 9, patent No. 1,533,858: "In a multistage amplifier, including in each stage an audion and an output transformer having a coil electromagnetically coupled to the primary of said transformer, and a capacity in each stage connected in series with said coil between the grid and the filament system of the audion in that stage, said filament system comprising all points having substantially the same alternating current potential as the filament." Claim 12, patent No. 1,533,858: "In a multistage amplifier, including an output transformer having a primary, and an audion in each stage, means for neutralizing the capacity coupling between the grid circuit and the plate circuit of each audion, comprising a capacity connected between the grid of the audion in each stage and a coil coupled to the primary of said output transformer of that stage." Claim 13, patent No. 1,533,858: "In a multistage audion amplifier, including an audion in each stage, means for neutralizing the capacity coupling between the grid and the plate circuit of each audion com 21 F.(2d) 643 prising a capacity connected between the grid of each audion and a point in the plate circuit of said audion of opposite alternating current polarity to that of the plate." Claim 17, patent No. 1,533,858: "A multistage audion amplifier, comprising an audion in each stage, means for neutralizing the capacity coupling between the grid and plate circuits of each audion, and means for preventing at all frequencies substantial coupling between any two stages thereof, except for the conductive coupling on which the amplifying action of the audion depends." [1] The defendant contends that claim 1 of patent 1,489,228 is invalid because it embodies the principles of the Rice patent, 1,334,118, and the Armstrong patent, 890,593. The subject-matter of the first patent in suit is a special application of the auxiliary neutralizing circuit to neutralizing the capacity coupling between the grid circuit and the plate circuit of an audion, characterized by the fact that the neutralizing coil is coupled to the coil in the neutralized circuit with a coefficient of coupling substantially equal to unity. The Rice patent, 1,334,118, has for its object the avoidance of the undesired production of oscillatory currents between grid and plate circuit. In order to accomplish this result, Rice proposed to neutralize the electromagnetic coupling by a second electromagnetic coupling in the opposite direction. Rice never had the idea of complete neutralization. Rice's purpose was to prevent oscillations in a regenerative amplifying receiver, whereas Hazeltine's idea was to eliminate all the regenerative or feedback effect between the plate and the grid circuit of an audion. In other words, Rice intended to avoid oscillation, but his receiver still remains a regenerative receiver, giving inferior selectivity and tone quality, and producing howls and squeals during the process of adjustment from one broadcasting station to another. Hazeltine, by providing close coupling between the coils in unequal turns, produced permanent neutralization for all frequency, a result that neither Rice nor the prior art disclosed. Judge Thacher in Hazeltine Corporation et al. v. Electric Service Engineering Corporation, 18 F.(2d) 662, decided: "Rice employed a fixed ratio of equal capacities and equal turns, and arranged his coils with loose coupling. Hazeltine provided close coupling between the coils and unequal turns, with capacities in the ratio stated, and at ained permanent neutralization for all frequencies, a result never attained before, and one which had, as the evidence discloses, an astounding effect upon the entire industry. Rice and Hazeltine were not very far apart, but the difference between them is the difference between success and failure." [2] The defendant's witness Morecroft testified that the nearest approach that can be found to Hazeltine is by taking the disclosure of Rice and using it with the close coupling of Armstrong. "The validity of a patent is not to be defeated by simply showing that all the elements of a patent are old, where they do not show all of the elements of the claim in combination, and this the defendant has not shown. To find in the prior art each element in isolation is not to anticipate the work of a patentee, who by an inventive act first evolves a new combination of these elements which by their conjoined functions produce a new result." Benthall Machinery Co. v. National Machine Corp. (D. C.) 222 F. 918; Western Electric Co. v. Millheim (C. C.) 88 F. 505. Professor Hazeltine, in discussing the reason for the parasitic oscillation in the Rice patent, stated "that, due to the lack of close coupling between those two halves of coil 4 (see Fig. 1), each current will produce in its half a certain voltage. It will produce in the other half a lower voltage. The voltage in any one-half due to its current is not annulled by the presence of the other current, and there will remain a residual voltage between the end of the coil and the tap. That residual voltage transfers energy from the plate circuit into the grid circuit, and, if it is sufficient, as it may well be in a practical case, will produce oscillations. The remedy for that which is in no way suggested by Rice is the close coupling between two halves of coil 4. With such close coupling the voltage induced in one half by the current in the other half would exactly balance the voltage due to the current in the same half. These two voltages balancing one another, if they occur separately, would actually result in zero voltage, and then we will have no feedback of energy and no production of oscillation." Not only does the testimony of Professor Hazeltine distinguish the Rice and Hazeltine patents, but Professor Pupin, of Columbia University, in an affidavit attached to the file wrapper of the Hazeltine patent, 1,489,228, stated the difference between the Rice and Hazeltine patents as follows: "From a superficial point of view it looks symmetry, consisting of the conductor, in which are located the impedance Z, the energizing batteries, and the lead to the junction of the coils L1 and L2; on one side of this axis of symmetry we have the coil L1 and the inherent or natural capacity C1, and on the other side we have coil L2 and the added capacity of C2. Correspondingly in the Rice figure, the secondary system is also divided into two parts by an axis of electrical symmetry, consisting of the conductor, in which are located the tuned circuits 6, 7, the telephone, the energizing batteries and the lead to the mid point of coil 4; on one side of this axis of symmetry we have the upper half of coil 4 and the inherent or natural capacity 12, and on the other side we have the lower half of coil 4 and the added capacity 13. "This is as far as the superficial similarity goes. Now comes the radical difference. In the Rice patent the electromagnetic coupling between the two halves of the coil 4 is not even mentioned. In the Hazeltine application the coupling is stated to be 'closed' and is indicated in the mathematical proportions of the application to be one hundred per cent. Hence the neutralization of a capacity coupling and the consequent elimination of feedback action aimed at by both inventors will be produced by Hazeltine alone. Rice secures only partial neutralization when he produces any at all. Whereas with the 'close' coupling of the Hazeltine arrangement the added capacity C2 can be adjusted once for all to give neutralization which is not disturbed by adjustments of the circuits. "Since Rice eliminates the feedback action only partially, when he eliminates it at all, it is obvious that oscillation of the vacuum tube will cease to be prevented as soon as the amplifying power passes beyond a certain definite lower limit; whereas Hazeltine, with complete neutralization of capacity coupling, may carry the amplifying power to any practicable extent without producing feedback action. Hazeltine also shows an arrangement not present in the Rice device, which is apparent from even a most superficial examination-Fig. 2 of the application. In this figure we have a coupling capacity between the grid and a coil electromagnetically coupled to a coil in the plate circuit-an arrangement which under certain conditions offers substantial advantages which is not even suggested in the Rice patent." Professor Morecroft, writing in the "Radio Broadcast" of March, 1924, stated that the credit of neutralizing the tendency of 21 F.(2d) 648 high frequency amplifiers to oscillate rightly that the Rice circuit was similar to Hazelbelonged to Hazeltine. Professor Morecroft continued: "This type of set (referring to Hazeltine) is now on the market under the name he has chosen for it, the neutrodyne. This new set has been much in favor because it requires no fussy adjustment of rheostats or regeneration to make it perform at its best. Ꭺ simple chart of condenser settings, once obtained for all the stations within the range of the set, enables one to tune in on them at any time and get them, if they are sending; no hair-splitting adjustment is necessary before the operator feels that the set is doing all it can to bring the desired signal." Morecroft, according to his own articles, realized the vast importance of Hazeltine's invention to radio. The invention of Hazeltine completely revolutionized the radio industry, by eliminating the bothersome noises and squeals. The Independent Radio Manufacturers, Inc., entered into an agreement with Hazeltine whereby they became the exclusive licensees under the Hazeltine patents and had the exclusive rights to use the words "neutrodyne," "neutroformer," and "neutrodon" for electric circuits, radio apparatus, transformers, and radio condensers. Between January 1, 1924, and May 21, 1926, the Independent Radio Manufacturers paid to the Hazeltine Corporation $1,329,000, representing 5 per cent. of the manufacturers' selling price of neutrodyne sets, which aggregated $26,000,000; $55,000,000 was paid by the ultimate consumer for radio sets manufactured by the Hazeltine licensees. tine, demonstrated a radio receiver with an amplifier made by combining two audion tube circuits, arranged essentially as in Rice, Fig. 1. According to Mr. Hazeltine, the cir cuit was not arranged essentially as in Rice, but was arranged so as to prevent parasitic oscillation. Professor Morecroft used Rice split coil 4 and the neutralizing condenser 13 in the grid circuit, but did not include in the circuit of his apparatus the tuning elements illustrated in the plate circuit of the Rice patent. The tuning element in the plate circuit of the Rice patent consists of coil 6 with a middle tap arranged in parallel with a condenser, so that the plate circuit may be tuned in accordance with the characteristic idea and mode of operation of the Armstrong regenerative receiver. Professor Morecroft put in the plate circuit of his apparatus a single coil 3, with no tuning condenser and no middle tap, and the coil "was made up physically with a very much smaller number of turns than would be used in such a coil as 6 of the Rice patent." Professor Morecroft modified the natural and proper arrangement of Rice, in that he distributed the turns of his coil 3 under the entire length of the coil on the next grid circuit with which coil 3 is associated. Hazeltine, in order to show that this arrangement was for the purpose of preventing oscillation, removed the load and oscillation occurred. The tests of Professor Morecroft showed that, in order to prevent parasitic oscillations in the Rice arrangement, specific modifications had to be made in the Rice arrangement. The Hazeltine invention was a great ad vance made in the art, an advance from the The Armstrong patent, 890,593, has for prior art that received the approval of the its object the prevention of the disturbing Patent Office and is entitled to the presump- effects of static induction in telegraph and tion of validity. "Knowledge after the event telephone wires. This object is accomplished is always easy, and problems once solved pre- by maintaining the catenary which is emsent no difficulties-indeed, may be repre- ployed in the suspension of trolley wires at sented as never having had any and expert a potential approximately equal, but oppowitnesses may be brought forward to show site, to that of the trolley wire. This patent that the new thing which seems to have elud- fails to disclose any of the benefits of neued the search of the world was always ready tralization disclosed in the Hazeltine patent. at hand and easy to be seen by a merely skill- [3] The Hazeltine patent, 1,533,858, relates ful attention. But the law has other tests to the neutralization of capacity coupling beof invention than subtle conjectures of what tween the grid and plate circuit of an audion, might have been seen and yet was not. It which capacity coupling results in undesirregards a change as evidence of novelty, the able reactions of the plate circuit on the grid acceptance and utility of change as a further circuit. Capacity coupling between grid and evidence even as demonstration." Diamond plate circuit sometimes produces oscillation. Rubber Co. of New York v. Consolidated To prevent these oscillations Hazeltine proRubber Tire Co., 220 U. S. 428, 31 S. Ct. vided an auxiliary circuit, electromagnetical444, 55 L. Ed. 527. ly coupled to one of two original audion Professor Morecroft, in order to prove circuits, called a first circuit, and capacitive |