The opinion of the court was delivered by: GALSTON
This is a patent infringement suit in which infringement is alleged of letters patent No. 1,507,016 and No. 1,507,017, granted on September 2, 1924, to Lee De Forest. The former relates to an audion oscillator; the latter to a feed-back circuit. In Radio Corporation v. Radio Laboratories, 293 U.S. 1, 55 S. Ct. 928, 79 L. Ed. 163, the patents were held valid. Accordingly, the sole issue is infringement.
A stipulation of facts entered into for the purpose of the trial discloses that the defendants have manufactured or assembled superhetrodyne radio receivers in their plant in the Eastern District of New York; that they purchased from authorized sources in the open market the vacuum tubes required for the receivers; that they placed those tubes in the sockets provided therefor, connected the receiver so supplied with tubes to the electric lighting circuit, and thereafter tested each receiver in thei plant; that in the course of such tests each receiver was used as a complete instrument and in the manner in which it was to be used by the ultimate purchaser, although the source of signals for the tests were oscillations locally generated in the defendant's plant rather than radio broadcast programs; also that defendants have sold, packed in a single carton (in this country for export), the receivers and the tubes separately wrapped.
It is agreed that when the tubes are inserted in the sockets of the receivers and the set is operated as intended by the defendants, claim 25 of patent No. 1,507,016 and claim 19 of patent No. 1,507,017 are infringed.
A preliminary injunction herein granted by this court was reversed by the Circuit Court of Appeals, Radio Corporation v. Andrea, 79 F.2d 626, 628; that court holding that the sale of the sets for export with the tubes out of the sockets was not an infringement. Judge Swan wrote: "No wrong is done the patentee until the combination is formed. His monopoly does not cover the manufacture or sale of separate elements capable of being, but never actually, associated to form the invention. Only when such association is made is there a direct infringement of his monopoly, and not even then if it is done outside the territory for which the monopoly was granted. This is the basis for the doctrine of contributory infringement, which permits the elements of a patented combination to be sold in this country with the intent that the purchaser shall make and use the invention abroad. * * * By their sales for export the defendants were guilty of neither direct nor contributory infringement."
Accordingly, there are but two questions now presented:
First, is the factory test defined in the stipulation an invasion of the plaintiff's monopoly right to the use of the patented inventions?
Second, did the defendants, through the purchase of the tubes from a source authorized by the plaintiffs, acquire an implied license to use the tubes in the combination defined in the claims of the patents?
It is contended by the defendants that the term "use" as employed in section 4884 of the Revised Statutes (35 U.S.C.A. § 40) means a use for the intended purpose of the invention; and that since the use indicated in the patents in suit, so the defendants contend, is for reception of broadcast signals, by merely testing the sets to determine operability they do not deprive the plaintiffs of any of their rights to use the inventions.
Apparently, there is not much authority on the subject. Plaintiff cites Robinson on patents, sections 893, 903, and 904.
Now it is abundantly clear that the only purpose for which the tests were made was to determine the operability and efficiency of the set. Clearly, the use was not experimental in the generally accepted connotation of that term. It was not a scientific research or an engineering inquiry. It was not pursued in the efforts to improve the set or any element therein; nor, of course, was the test one of curiosity or amusement. It was a step which the defendants apparently deemed necessary in the manufacture and sale of their product. That such sale for export was not an infringement, as was determined by the Circuit Court of Appeals, does not compel the conclusion that the intermediate steps were in themselves lawful.
The statute does not limit the monopoly right conferred. Logically, it would seem that any use of the invention is an invasion of the patentee's rights. It has been repeatedly held that to sustain a patent it is not necessary that the patent disclose that the inventor knew of or specified all the possible uses to which his invention could be put. Deitel et al. v. La Minuette Trading Co. (C.C.A.) 37 F.2d 41; Western Electric Co. v. La Rue, 139 U.S. 601, 11 S. Ct. 670, 35 L. Ed. 294. It should follow then that any use is within the exclusive right of the patentee, though, of course, one can well understand that the law, not concerning itself with trifles, would ignore a mere casual appropriation for amusement or even scientific purpose. Robinson on Patents, §§ 898, 903, 904. But in the present case the defendants' use was solely commercial. Indeed, it would follow from the assembling of the parts of the set and the adjustment of the tubes therein that the defendants infringe the patents. So much seems to be indicated in Judge Swan's opinion, for he uses this significant language: "No wrong is done the patentee until the combination is formed. * * * Only when such association is made is there a direct infringement of his monopoly," etc.
That brings us to the second question involved. The defendants purchased in the open market radio vacuum tubes known as type 6A7, which were required to make their receivers operable. Some of those tubes were manufactured by the Hygrade Sylvania Corporation, a licensee of the plaintiff, others by the RCA Radiotron Company, Inc., or RCA Manufacturing Company, Inc., affiliated with the plaintiff.
Claim 25 of patent No. 1,507,016 reads: "Means for producing sustained electrical oscillations comprising an oscillatory circuit having two electrodes in an exhausted receptacle and a second circuit coupled thereto having ...