Baldwin International Radio Co. Of Canada, Ltd. v. Western Electric Co., Inc., et al.

For this reason, though of opinion that the provisoes of KER sec. 34 of the Ontario Marriage Act, as they stood in 1930, were ultra vires of the Provincial Legislature, I agree that Crocket J. the appeal should be dismissed.

McClemont & McClemont.

E. Bayly.

BALDWIN INTERNATIONAL RADIO

* June 5,6,

COMPANY OF CANADA, LIMITED

APPELLANT; 7,8.

(DEFENDANT)

..................

....

AND

WESTERN

ELECTRIC

COMPANY,

INCORPORATED, AND NORTHERN

ELECTRIC COMPANY, LIMITED

RESPONDENTS. (PLAINTIFFS)

......................

J

ON APPEAL FROM THE EXCHEQUER COURT OF CANADA

RINFRET J.-The respondents are the owners of Canadian Letters Patent No. 287240 granting them the exclusive right and privilege of making, constructing, using and vending to others a certain " improvement in acoustic devices ". They brought this action for the infringement of their rights by the appellants.

In the Exchequer Court of Canada (1), the respondents succeeded and were held entitled to the relief claimed by them, together with their costs of the action.

(1) [19331 Ex. C.R.

The appellants now appeal and renew before this Court three of the objections which were unsuccessful in the trial court, to wit: Invalidity of Letters Patent on two grounds -absence of subject-matter, and anticipation; and denial that there was infringement on their part. A new ground not urged before the Exchequer Court is that the claims of the specification relied on by the respondents are insufficient and fail to meet the requirements of section 14 (c) of the Patent Act, because they do not distinguish between what was already old and what the patentee "regards as new" in the invention therein claimed by him. We will examine each of the appellants' several objections in the order in which they have been presented to us. Before we do so, however, it will be convenient to say a word of the device which forms the subject of the patent in suit.

The " acoustic device " covered by the patent is of the type familiarly known as a loud speaker. Its function is to reproduce sound, including musical notes and the human voice. It is known that sound, as heard by the human ear, consists of the vibration of the air. Sound waves are sequences of alternate compressions and expansions of the air in immediate contact with the ear. The object of the sound reproducer is therefore to catch the vibrations caused by the instruments or voices, translate them into electrical or mechanical impulses and transmit their back into sound waves at the other end of the receiver, or, in the case of loud speakers, bring them to the human ear in amplified form. For that purpose, both electrical and mechanical devices have been adopted. Here, we are concerned with an electrical device.

The respondent's device is described in the patent as follows:

volume of the sound passage beyond this point is not appreciably affected by the displacement of the diaphragm. Extending from this throat portion to the mouth of the horn, it is preferable to have the cross-sectional area BAWEN of the sound passage such that the area of the wave front of the transmitted sound progressively increases exponentially with respect to the distance travelled.

This description is immediately followed in the patent by the statement that

ELEcIC The invention may be readily understood by referring to the accomt lNC. panying drawing in conjunction with the following detailed description. e The drawing is a sectional view of a loud speaking receiver employ- Rinfret J. ing the feature of the present invention. An electromagnet having a hollow annular core 10, a winding and annular pole pieces 12 and 13 provides a magnetic field in which the coil 14 is positioned. The top portion 15 of the magnetic core is detachable to permit the assembling of the winding on the core structure and is secured to the lower portion of the core by the screws 16. The diaphragm to which the coil 14 is attached comprises a stiff, dish-shaped, piston portion 17, a flexible corrugated portion 18 and a flat portion 19 which is clamped between the housing structure 20 and the upper portion of the core structure. The diaphragm is separated from the portion 15 of the magnetic structure and the housing 20 by the clamping rings 21 and is held in a clamped position by screws (not shown) which pass through the flanged portion of the housing 20, washers 21 and the flat portion of the diaphragm and which are threaded into the upper portion 15 of the magnetic structure. The light rigid coil 14 is connected to the stiff, piston portion of the diaphragm, which is also made of light material, by means of a strip 30 of stiffened fabric material such as oiled silk coated with bakelite or shellac, or a strip of thin, lightweight metal. When assembled the coil 14 is positioned approximately equi-distantly from the pole pieces and The ends of the conductor of which the coil 14 is wound may be brought out in any suitable manner to the screws and which are electrically connected to the terminals 33 and 34 respectively. The housing structure 20 is connected to a suitable sound projector such as the exponentially tapered horn 26.

The metallic plug 23 in the form of a spherical meter is secured to the housing 20 by the projecting lugs 24 and the screws 25, thus forming converging sound passages which extend from the centre of the diaphragm and from its peripheral portion to a common annular sound passage, formed between the plug 23 and the housing 20. There are preferably three projecting lugs on the plug equally spaced about its periphery, although a greater or lesser number of lugs may be used if desired. The radius of the plug 23 is slightly smaller than that of the adjacent surface of the dish-shaped portion of the diaphragm and the housing structure is likewise suitably shaped so that the cross-sectional areas of the sound passages formed between these surfaces progressively increase from the centre of the diaphragm and from its peripheral portion toward the common sound passage. The cross sectional areas of these sound passages, moreover, are such that the air displaced from each of the converging passages flows into the common sound passage at substantially the same velocity. The meeting point between the converging sound passages and the common sound passage is effectively the throat portion of the sound projector since the volume of the sound passage beyond this point is not affected appreciably by the displacement of the diaphragm. We have in the above the material part of the " detailed description

Every sound, as shown by the record, has two basic elements: pitch, which is due to the number or frequency of the vibrations per second in the air; loudness or intensity, which is due to the amplitude of the vibrations. But, of course, each sound has a different tone quality which determined by the presence of what are called " overtones " or " harmonics ". The fundamental waves produce the pure notes. The overtones are the number of additional sound waves superimposed on the fundamental wave and which give the characteristic note of a given instrument, or the characteristic sound of the human voice. The frequency range, including fundamentals and overtones, is said to be from 25 for the lowest note to 20,000 vibrations per second for the highest note; but the useful range of pitch audibility is stated to extend from about 50 to about 9,000 per second.

The problem faced by the inventor, with the development of the talking moving picture, was the design of an instrument capable of reproducing sound covering the high range of pitch audibility so as to transmit to the human ear the exact characteristic of each instrument, or of each individual voice, and with sufficient loudness or intensity that it could be heard in all parts of the largest auditoriums. Such are the difficulties which the patent in suit claims to have solved satisfactorily.

The invention, so it was stated, was

This leads us to a consideration of the appellants' objections, first, that the patent lacks subject matter or, which is the same thing, that there was no invention in the respondents' device; and, second, that the device was anticipated in the prior art.

Whether there is invention in a new thing (art, process, machine, manufacture or composition of matter) is a question of fact "for the judgment of whatever tribunal has the duty of deciding ". (Ref. Lord Moulton's dictum quoted by Terrell on Patents, 7th ed., p. 71).

The evidence shows that, generally speaking, at the time of the invention, there were at least two main difficulties to overcome: a large range of frequencies could not be reproduced at all and, within their limited range, the several apparatus were unequal in their reproduction of the intensity of sound. The receivers on the market were entirely deficient in the higher frequencies, under which most of the important overtones lay, and there was lack of naturalness in the sound produced, so that the individual characteristics of the voice or of the instrument could not be satisfactorily identified, all the components of the sound failing to pass in their proper intensity. Moreover, the sound output in certain frequencies often became unduly enhanced, with resulting abnormal loudness or distortion of the sound commonly known in the art as " blasting ". As a consequence, the fidelity of the reproduction was imperfect and inadequate.

Bearing in mind the enormous extension of the moving picture business, it is easy to understand how important it was to increase the capacity of the apparatus in translating the range frequency and the amplitude of the sound waves and to improve the tone quality so as to make the reproduction satisfactory from the viewpoint of the practical purposes for which it was intended. We would gather from the evidence that many a skilled craftsman was at work endeavouring to overcome the difficulties and some hundreds of patents were taken out with regard to all sorts of diaphragms, driving mechanisms and sound boxes with the object of solving the problem.

Wente, the inventor of the respondents' device, produced an ingenious article, of which the utility is conceded, and which brought a markedly superior result. It increased the frequency range capable of reproduction; its transmission was louder and more even; it improved the accuracy of the tone quality and did away with distortion or " blasting ". It met with ready adoption and quickly went into wide commercial use.

We agree with the learned President that there is no lack of subject-matter in the patent in suit. We also agree with him with regard to the objection founded on the prior art. It is not possible to base anticipation on the evidence adduced by the appellants.

In order to decide an objection grounded upon anticipation, one must look at the description in the specification, so as to ascertain what the invention really is. The claims may add light to it, but they are not meant for that purpose, and their object is mainly to define the extent of the monopoly to which protection is granted. It may be that a patentee has discovered and described t new thing for which he made no claim, in which case he will have no " exclusive property and privilege ", but obviously his patent may not be displaced upon the ground of prior knowledge or use by others.

The description in this patent is set out in an earlier part of the judgment. It clearly shows tiat the invention consists in a combination. It is a combination of four elements: a diaphragm, a sound chamber, a plug and means for driving or actuating the diaphragm. The diaphragm is described as comprising " a stiff, dish-shaped, piston portion, a flexible corrugated portion and a flat portion which is clamped between the housing structure and the upper portion of the core structure ". The sound chamber has the plug secured therein so as to decrease the crosssectional areas of the sound passages therethrough. plug is so shaped as to conform with the concavity of the dish-shaped diaphragm, the radius of the plug being slightly smaller and so arranged as to form with the diaphragm converging sound passages extending from the centre of the diaphragm and from its peripheral portion to a common sound passage, which is effectually the throat of the horn. (N.B. It is common ground that the horn, although an obvious adjunct of the apparatus and although referred to in the specification, is not an element of the patented combination). The driving or actuating means, throughout the " detailed description ", are referred to as a coil and they are shown as such on the drawing. The specification states that " the light rigid coil " is attached or connected to the stiff piston portion of the diaphragm and that, when assembled, it is positioned approximately at equal distance from the pole pieces of the electromagnet.

We have here a group of co-acting parts achieving a combined result or, as was said in British United Shoe Machinery Company Ltd. et v. A. Fussell & Sons Ltd. (1), "a collocation of intercommunicating parts so as to arrive at (what may be called) a simple and not a complex result ". That satisfies the definition of a combination for the purposes of the patent law.

Having read the specification as describing a combination, it matters not whether, as contended by counsel for the appellants, the plug or the diaphragm or the coil driver or the sound chamber are old and were already known in the art as separate entities. On this branch of the case, viz.: anticipation, the only point is whether the actual combination is new. In the light of the evidence given at the trial, it appears that the particular diaphragm, the particular air chamber with the plug were never before used together in the way described; and it may be stated with certainty that not a single patent was referred to which anticipated the combination of elements constituting Wente's invention. It is idle to repeat that anticipation is not established by what the learned President so justly qualified the " imaginary assemblage " of separate elements gathered from glosses selected here and there in several and distinct anterior specifications.

None of the prior patents relied on conveyed the same knowledge or gave information equal, in practical utility, to that given by the respondents' patent. The result is that the objection based on anticipation was rightly dismissed by the Exchequer Court.

The designer of the appellants' device, in the course of his testimony, made some reference to a demonstration in Dr. Lee de Forest's studio, in New York City, in February or March, 1926.

On that occasion, he was shown an apparatus in the nature of a dynamic cone speaker and, as he thought, reproducing sounds in a very satisfactory way. In the same testimony a mere mention is made of another apparatus, the Panetrope R.C.A. 104, a performance of which was witnessed by him in a large auditorium in Salt Lake City in the year 1925. These were introduced in the evidence apparently to show that, at the time of Wente's invention, there were other types of .loud speakers on the market suitable for talking moving picture equipment. The evidence was addressed neither to the issue of subjectmatter, nor to that of anticipation.

It may be that it might have been developed.

As it stands in the record, it is entirely inconclusive. It gives no information whatever on the structure or on the operation of the apparatus and it is quite impossible to ask the court to make a finding on that kind of evidence.

We have so far reached the conclusion that the patent in suit, read as a patent for a combination, has subject-matter and utility and that it had not been anticipated. Before proceeding to consider the issue of infringement, it will be more convenient to examine the new point urged in this court by the appellants to the effect that the claims are insufficient and that the specification does not fulfill the requirements of section 14 of the Patent Act (c. 150 of R.S.C. 1927).

.

No evidence, no argument was addressed to the other claims; and the validity of the patent as a whole, upon the ground of insufficiency of the claims, was not put in issue. We think, therefore, the discussion must be restricted to claims 4 and 9. Here is the full wording of the two claims in dispute:

Claim 4:

Claim 9:

An acoustic device comprising a diaphragm having a dish-shaped portion and a flexible portion, a coil attached to said dish-shaped portion INTERfor driving said diaphragm, and means juxtaposed to one face of said . diaphragm for directing sound waves from the centre of the diaphragm outwardly and from the outer edge of said diaphragm inwardly to an annular passage, the face of said means conforming substantially to the face of the diaphragm juxtaposed thereto.

Co. The objection made by the appellants is that these claims et at. do not distinguish what is new from what was known or Rinfret J. used before. There is no doubt it was at one time the rule in Great Britain that the claiming clause must clearly distinguish that which was old from that which was new; although it may yet be a question whether the rule applied to patents other than process patents or patents for improvements of a known article and whether it was ever meant to apply to a patent covering a combination as such. The old rule, however, has been considerably modified and the new doctrine found expression, amongst others, in Halsbury, " Laws of England ", vis. Patents & Inventions, sec. 340, at p. 162.

In that section, we find the following: It may be expedient or even necessary to mention in the claiming clause of the specification something which, though not the invention itself nor per se proper subject-matter of letters patent, helps to explain the invention. If the claiming clause is drafted so as to claim this thing per se, the patent is clearly bad, for it claims something which is not the invention.

* * * (But) upon the authorities it is now established that if the claiming clause does in fact claim the invention and does not claim anything that is old per se, the patent is not avoided because in the claiming clause that which is old is not distinguished from that which is new.

It will be sufficient for our purpose in that connection to refer to the judgment of the Court of Appeal, in England, in the case of British United Shoe Machinery Company Ld. v. A. Fussell & Sons Ld. (1).

In that case, the inventor had applied for a new combination described in the specification and which claimed the whole combination as new. The objection was made that the claiming clause did not distinguish the old from the new. The earlier cases were considered and distinguished, and Harrison v. Anderston Foundry Co. (2) was followed. Moulton L.J. said that it was not a good objection to a claim for a combination that the patentee had not distinguished old from new; that, apart from the duty of a patentee to delimit his invention, (2) (1876) 1 App. Cas. 574. (1) R.P.C.

there is now no such duty on his part. He referred to a BALDWiN passage in Harrison v. Anderston Foundry Co. (1). passage is illuminative on the point we are now discussing: RADIO Co.

The first is an objection said to be founded upon the case of Fozwell v. Bostock (2), decided by the late Lord Westbury when Lord Chancellor. WESEN It is said to have been determined in that case that where there is a Eucratc patent for a combination there must be a discovery, oi explanation of the Co. INC. novelty, and the specification must show what is the novelty, and what the merit of the invention. I cannot think that, as applied to a patent Rinfret J. for a combination, this is, or was meant to be, the effect of the decision in Foxwell v. Bostock (2).

If there is a patent for a combination, the combination itself is, ex necessitate, the novelty; and the combination is also the merit, if it be a merit, which remains to be proved by evidence. So also with regard to the discrimination between what is new and what is old. If it is clear that the claim is for a combination, and nothing but a combination, there is no infringement unless the whole combination is used, and it is in that way immaterial whether any oi which of the parts are new. If, indeed, it were left open on the specification to the patentee to claim, not merely the combination of all the parts as a whole, but also certain subordinate or subsidiary parts of the combination, on the ground that such subordinate and subsidiary parts are new and material, as it was held a patentee might do in Lister v. Leather (3), then it might be necessary to see that the patentee had carefully distinguished those subordinate or subsidiary parts, and had not left it in dubio what claim to parts, in addition to the claim for combination, he meant to assert. The second objection to the first claim in the present case was founded on the doctrine of Lister v. Leather (3).

In the present case, however, no question of this kind appears to me to arise. The patentees claim, as I have said, for a combination under their first claim, calling it "the construction and arrangements of the parts of mechanism herein distinguished generally ".

And, after having made the quotation, Lord Fletcher Moulton adds (4):

Therefore what Lord Cairns said was,-If what you have claimed, and the monopoly which you have obtained, is for a combination, that combination is the novelty, and you have no obligation beyond accurately defining it. In my opinion that is the law as it now stands.

Lord Justice Buckley expressed the same view, and his judgment was that where a patentee claims what is substantially a new combination, he need not discriminate and identify that part of his combination which is new. He said (5):

The combination is the novelty, and to sufficiently describe the combination is sufficient to describe the novelty; but if the combination is not new, which is the case first put by Lord Selborne in Moore v. (1) (1876)

1 App. Cas. 574, at

(2) (1864) 4 DeG. J. & S. 298. 577-578.

(3) (1858) 8 El. & Bl. 1004. (4) 25 R.P.C. at 656.

Bennett so that there cannot be a valid patent for a combination, then even though the patentee misdescribes it as a new combination, Bow~ BAnwrx which by hypothesis it is not, the novelty must be in the subordinate integer. Foxwell v. Bostock (2) then applies. To describe it as a new combination is, in such a case, to misdescribe it. The invention in such a case is the improvement upon a particular part of an old combination, and the part must be identified by the patentee.

We do not think that section 14 of the Patent Act pre- ELcTRc scribes any different rule. The section requires that: The specification shall

Rinfret J. (a) correctly and fully describe the invention and its operation or use as contemplated by the inventor;

(b) set forth clearly the various steps in a process, or the method of constructing, making or compounding, a machine, manufacture, or composition of matter;

(c) end with a claim or claims stating distinctly the things or combinations which the applicant regards as new and in which he claims an exclusive property and privilege.

What is required, therefore, under our law, is that the applicant should give a full and correct description of the invention and its operation or use. If the invention is a new process, he should set forth clearly the various steps in the process; if a machine, manufacture, or composition of matter, the specification should explain the method of constructing, making or compounding the same. Then, in every patent, the claim or claims must state distinctly what the applicant regards as new and in which he claims an exclusive property and privilege.

If the invention be a new thing, or the improvement of a thing, he must so state; but where the invention consists merely in the new combination of old elements or devices, such combination is sufficiently described if the elements or devices of which it is composed are all named and their mode of operation given and the new and useful result to be accomplished pointed out (Compare: Bates v. Coe (3)). It is only if the applicant desires to claim invention for a subordinate element per se that it is necessary for him to claim the element separately, if he wishes to secure in it an exclusive property and privilege.

In the present case, we have already indicated the reasons why we thought the patent ought to be construed as a patent for a combination, and nothing mci e. We are dealing with a meritorious invention; and the respondents are (1) (1884) 1 R.P.C. 129.

(2) (1864) 4 DeG. J. & S. 298. (3) (1878) 98 U.S. 31.

less entitled to have their claims interpreted " by a mind willing to understand, not by a mind desirous of misunderstanding" (Lister v. Norton (1)).

Claims 4 and 9 must be read with reference to the entire specification; and it is sufficient if it appears from the claims so read what the patentee regards as his invention.

See Fletcher Moulton on EE

Patents, 1913 ed., p. 87; Terrell on Patents, 7th ed., p. 121. Here, the combination itself is the only thing which Wente regarded as his invention.

He correctly and fully described it in the description part of the specification.

He indi- .cated the method of constructing and making the new combination in the detailed description and in the accompanying drawing which forms an essential part of the patent; and, upon a fair construction of claims 4 and 9 construed with reference to the entire specification, there can be no doubt, in our view, of the exact nature of the invention which he claimed as new; and there exists no difficulty in ascertaining and defining what are the exact parts of his new combination and what his monopoly covers. It should be added that, had we come to the conclusion that the specification and drawing contain more or less than was necessary for obtaining the end for which they purported to be made, there was not the slightest suggestion that such omission or addition had been wilfully made for the purpose of misleading (Patent Act, s. 31).

The attack made by the appellants upon the patent of the respondents having failed, the only remaining point is that of infringement; and, in regard to it, we find no difficulty in following the finding made by the Exchequer Court. The appellants' device is substantially the same as the respondents' device. The diaphragm in one is dished in the opposite direction to the way it is dished in the other; but obviously the appellants cannot escape infringement upon such a flimsy pretence. There is a hole in the middle of the plug designed for the appellants' apparatus; but this slight difference is more apparent than real. In effect, as the evidence shows, the difference has no bearing on the nature of the device or in the method of its operation.

The trial judge found, and the evidence establishes, we think, that