Kellogg Switchboard & Supply Co. v. Michigan Bell Telephone Co. (2 F. Supp. 335, 1932)

TUTTLE, District Judge.

This suit originally involved five patents, one of which, No. 1,594,877, to Currier and others, was dropped before the case was brought on for trial. Another, No. 1,556,761, to Currier and others, was dropped at the time the trial in court opened (but after experts’ affidavits for plaintiff and defendants dealing therewith had been filed under order of this court). This leaves now to he dealt with patents No. 1,221,930 to Currier, No. 3,261,492 to Currier and others, and No. 1,283,400 to Currier.

These patents all have to do with the telephone art, and, in particular, with what is known as “straightforward” trunking. In a telephone system, the subscribers’ lines terminate in central offices where the desired connections between the lines are completed. If a subscriber served by one office desires connection with a subscriber served by another office, tho connection is completed by means of a “trunk” line extending between the offices. Very early in the telephone practice it was found necessary to provide trunk lines for such connections. In setting up such connections, the operator in the fix’st office who answers the incoming call is called an “A” operator, and the operator in the second office who completes the call to the desired subscriber, is called the “B” operator.

There have long been in the art two forms of trunking between manual offices, respectively known as “order-wire” tranfeing and “straightforward” trunking.

In order-wire trunking there is, between the “A” and “B” operators, a special order-wire circuit in addition to the trunks used for sotting up the subscribers’ connections, and by pressing an “order-wire key” an “A” operator may put herself immediately into connection with the telephone headset of the “B” operator so that she may pass the order. Upon receiving the order, the “B” operator assigns a particular trunk for use, and both operators thereupon use the assigned trunk for completing the subscriber's connection. The distinguishing features of such trunking are that the trunk to be used is selected by the “B” operator, and that the order for the connection is passed over a special circuit used only for that purpose.

In straightforward trunking 'no order-wire is used. The “A” operator selects the trunk to be used for the desired connection and passes the order to the “B” operator over that trunk; the latter thereupon using the same trunk to complete the desired connection. In this type of trunking the attention of the “B” operator is secured by the automatic lighting of a lamp, or other signal, adjacent the incoming terminal of the trunk in the “B” office, and sometimes also by automatic connection of the “B” operator’s telephone set to the trunk. The characteristics distinguishing straightforward trunking from order-wire trunking are that the trunk is selected by .the “A” operator and that the order is passed over the selected trunk.

At about the beginning of the present century, at a time prior to any date important in this- controversy, automatic or dial systems began to come into- use and constituted a very flourishing branch of the industry which, for a time, took a great deal of the attention of telephone engineers which might otherwise have been devoted to manual systems. In automatic systems, trunking between the offices is broadly of the straightforward type in the sense that the dial impulses, which control the automatic selection of the proper trunks and lines, take effect over the same trunk wires later used in the conversational circuit between subscribers.

Between the two branches of the telephone tree — the automatic on the one hand and the manual on the other — a good deal of grafting was done in both directions. It was after the beginning of the automatic development that work on the “straightforward” trunking began. From about 1902 the manual branch of the tree may be considered as having two branches, represented by straightforward trunking and order-wire trunking.

None of the patents in suit, and for that matter none qf thqse included in the prior art as presented here, is more than a “paper” patent. None of them discloses a structure of a kind which has gone into general commercial use, and none of them accounts for, or explains, the wonderful growth of the telephone system to its present state of commercial perfection. I do not find in the publications, bulletins, circulars, etc., of the defendants, anything which leads me to the conclusion, that the great development in telephone practice flowed in any way from any patent here in suit.

In dealing with patents ,of this kind care must be taken not to enlarge them unduly to cover things not clearly within their scope. Westinghouse Electric & Mfg. Co. v. Toledo, Etc., Co. (C. C. A. 6) 172 F. 371; Toledo Scale Co. v. Barnes Scale Co. (D. C., E. D. Mich., S. D.) 18 F.(2d) 965.

Long before the patents in suit, this art had developed to a point such that wires, batteries, relays, jacks, plugs, cords, trunk lines, etc., were so old and well understood by telephone engineers and mechanics, that •they constituted the brick and mortar of the telephone art from which the telephone mason was able to construct equipment for accomplishing various known functions such as busy tests, automatic connection of headsets, etc., at will, in accordance with well-known general principles, and with as little invention as there is when a mason takes his brick and mortar and constructs a building in the form he wants.

•The three patents in suit are closely related. The applications for the first two of these patents were filed on the same day,. July 27, 1914, and the drawings and descriptive parts of their specifications are the same. They differ only in their statements of invention and their claims. The plaintiff asserts in its bill of particulars that the first invention, which was Currier’s alone, was conceived about a year before the invention of the second patent, which is a joint invention of Currier and two associates. The third patent is again for a sole invention of Currier. It contains the complete disclosure of the first two patents, plus an added feature-known, in this case, as “barring.”- This invention is not alleged to have been conceived by Currier until December 21, 1914, about five months after the filing of the applications for the first two patents. The filing date of the third patent is June 11, 1915.

All three of the patents in suit are concerned with “automatic-listening” straightforward trunking; that is, each trunk circuit is so arranged that, under normal conditions when connection is made with it at the “A” end, that is, when it is “seized,” not only will there be a lamp lighted adjacent the-trunk to notify the “B” operator that a" call is incoming on that trunk, but also the “B”1 operator’s telephone set will be connected to-the trunk automatically by a relay so that the order may be passed to her by the “A” operator.

Other forms of straightforward trunking are “kev-listening” and “ jack-listening.” Both of these are the same as the “automatic-listening” form in that the seizure of a trunk at the “A” end normally lights a lamp-(known as a “guard lamp”) at the “B” end • to indicate that a call is incoming on that trunk. They differ from it in that the “B” operator’s telephone set is not ^automatically connected to the trunk at the same time, but as the result of the operation of a key by the “B” operator in response to the lighting of the lamp, or of her act of plugging the trunk into a listening jack in response to the lighting of the lamp.

Both key-listening straightforward trunking and automatic-listening straightforward trunking date hack nearly to the beginning of the century. Webster’s patent, Ño. 841,747 (Defendants’ Exhibit No. 24), which was applied for in 1902>, discloses key-listening straightforward trunking, and the stipulated use of automatic-listening straightforward trunking at Birmingham and Atlanta, to which I shall refer again later, began as early as 1903,

The First Patent.

The first patent in suit, No. 1,221,030, is now admitted by the plaintiff not to be entitled to credit for straightforward trunking broadly. The defendants construing claims 6 of this patent (the only one relied upon) to be for automatic-listening straightforward trunking broadly, admit infringement, but deny validity. The plaintiff admits that, if the claim be so read, it is invalid, and contends that it should be construed to cover automatic-listening straightforward trunking in which signals or indications of some kind are provided at the “A” ends of the trunks to show the “usability” of the trunk and to insure that the automatic connection will result “with certainty” if the trunk is seized. The “usability” and “certainty” which plaintiff refers to in this connection has to do at most with only about 2 per cent, of the calls put through in actual practice, namely, to cases of “reseizure” of trunks by “A” operators before the “B” operator has withdrawn the trunk plug after a conversation has been finished.

So the first problem is to deeide how the claim of this patent is to be interpreted. It reads as follows:

“6. A telephone system comprising telephone lines, a trunk circuit adapted for use in connecting said lines to other telephone lines, a cord circuit for connecting the said first lines with said trunk circuit, an operator’s telephone, means for automatically connecting said operator’s telephone to the trunk when connection is made with the tank by the cord when the connection is to be extended to a distant line, and a key for the cord having circuit connections whereby the operator may communicate with the trunk operator to order up the connection to a distant line.”

There are at least three things which lead mo to the conclusion that the claim means automatic-listening straightforward tanking broadly.

The first is the language of the claim itself. It would not occur to me, merely from a reading of the claim, that it was intending to describe anything but simply automatic-listening straightforward trunking. I find nothing in the words of the claim, nor in the specification of the patent, to indicate otherwise. Second, the history of the patent loads to the same conclusion. The statement of invention of this patent takes pains to distinguish from order-wire tanking, and points out as a feature of the invention an “order-wire key” for the “A” operator’s cord, so constructed that, when operated, it will connect the “A” operator to the “B” operator by way of the tank and one end of the cor'd, a.t the same time opening the cord conductors leading back to the calling subscriber so that he cannot hear the passing of the order to the “B” operator. The effect of this “order-wire key” is again referred to on page 4, lines 5 to 18, of the specification. All of the original claims, and all of the present claims, with the exception of claim G here relied upon, are limited to a trunking arrangement in which this splitting key is to he used for cutting off the calling subscriber. I do not believe that Currier thought he had invented straightforward tanking broadly, but the indications are clear that he thought he had improved that type of circuit by providing the order-wire or splitting key, which would prevent the subscriber from overhearing confusion or difficulties encountered during the setting up of the connection. It developed later that this was a step in the wrong direction, because experience proved that it is an advantage to have the calling subscriber overhear the order as it is passed to the “B” operator, giving an opportunity for correction of errors when they occur. Claim 6, hero relied upon, does not specifically state that the “key” for the cord is a splitting key, as slated in all of the other claims, but does specify that the “B” operator’s telephone set is automatically connected to the tank, a thing found only in one other of the claims, namely, claim 5. Claim 5 was one of: the originally presented claims, and was the only one allowed on the first action of the Examiner. Claim 6, inserted by amendment, was evidently drafted along the lines of claim 5, with a view to a similar allowance, and either purposely or by an oversight specified the key for the cord without stipulating that it should be a splitting key. There is nothing in the history of the ease to suggest at all, that the claim should be read, as the plaintiff desires, to imply signal lamps or other indieating devices for the trunks Which would advise the “A” operator as to whether a particular trunk was in a condition at the “B” board to make it immediately usable. Third, I am confirmed in this view of claim 6 by the fact that counsel for plaintiff and plaintiff’s expert themselves, regarded this claim as covering automatic-listening straightforward trunking broadly, at a time when the prior art, as illustrated by the early uses in the Bell System, had not been fully developed, and when it was apparently to the advantage of the plaintiff that the- claim should be thus broadly read.

To give to the claim the meaning advocated by the plaintiff would require that I do violence to its language. I would have to take the word “when” in line 82, which always in the English language means time, and construe it in such a way as to make it mean certainty. I would have to twist the whole language of the claim by a line of reasoning that I do not think is justified. I would have to construe claim 6 as covering something which Currier never claimed to have invented, and which, as I am convinced, he never thought he had invented. This I cannot do.

It is well settled that the claim of a patent, which “is a statutory requirement, prescribed for the very purpose of making the patentee define precisely what his invéntion is,” may not “like a nose of wax * * • be turned and twisted in any direction, by merely referring to the specification, so as to malee it include something more than, or something different from, what its words express.” White v. Dunbar, 119 U. S. 47, 51, 7 S. Ct. 72, 74, 30 L. Ed. 303. See, also, Great Western Manufacturing Company v. Lowe, 13 F.(2d) 880, where this court had occasion to express itself upon the same point, and Bettendorf Company v. Ohio Steel Foundry Company, 56 F.(2d) 777, 778, and 779 (C. C. A. 6).

So I find that claim 6 of this first Currier patent is a broad claim to automatic-listening straightforward trunking, and is' void because of anticipation by the prior public uses in Birmingham, Ala., Atlanta, Ga., and between Kansas City and St. Joseph, the facts with respect to which have been stipulated by plaintiff (Defendants’ Exhibits Nos. 39 and 40), and by the article of Friendly and Bums in the Proceedings of the American Institute of Electrical Engineers, and by the patent to Johnson, No. 1,185,331. Each of the prior uses mentioned involved the employment, in regular and successful commercial practice, of straightforward trunking circuits in which the “B” operator’s telephone set was automatically connected to the trunk upon its seizure by the “A” operator at the distant end. Similarly, the circuits of the Friendly and Bums article and of the patent to Johnson are straightforward trunking circuits in which the “B” operator’s telephone is automatically connected to the trunk when it is seized at the “A” end. The “key,” constituting the last element of claim 6, is found in the Johnson patent in the automatic switch for connecting the telegraphone to the cord and trunk; the telegraphone in this case substituting for the “A” operator so far as concerns the recording and repeating to the “B” operator of the number of the desired subscriber.

Accordingly, I hold this claim invalid.

The Second Patent.

Patent 1,261,492 purports to be the joint invention of Currier and others. As already noted, the disclosure of the drawing and the descriptive part of the specification are the same as in the first patent. The statement of invention, however, is different. It makes it very clear that the inventors believed their main contribution to be an arrangement such that each operator of a multi-office telephone system would do both “A” and “B” operator work. This involved equipping every operator’s position with the usual “A” operator “links” or cords for completing local calls and with both incoming and outgoing trunks for completing trunked calls (Specification p. 1, lines 32 to 43). The inventors’ theory was that in this way the operators could fill in the time when they were not busy on local calls by acting as “B” operators in completing trunked calls. As an auxiliary to this scheme, the inventors proposed to use busy signals on the outgoing jacks of all trunks so controlled as to enable trunked calls to be routed always to idle operators rather than to busy ones. To this end every outtrank jack is given a busy lamp which is lighted not only when the trunk itself is busy but also whenever the operator to whom the trunk leads is busy, either in setting up a connection as an “A” operator or in completing a connection trunked to her as a “B” operator (Specification p>. 1, lines 43 to 61). Such an aid in the distribution of trunked calls to idle operators would be of especial value and importance where every operator was doing both “A” and “B” work. With all operators equipped for making “B” connections, it might be expected that an idle one could usually be found if means for distinguishing between busy and idle ones were provided; and, perhaps more important, it was especially desirable that operators who were already busy with “A” work should not be interfered with by having “B” work thrust upon them. The specification of the patent states the advantages of the system as follows (page 5, lines 99 to 117) :

“ * * * jn or