Music Trade Review
Issue: 1906 Vol. 42 N. 8 - Page 40
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THE MUSIC TRADE REVIEW
DECISION IN JONES PATENT SUIT.
Court Declares This Process of Duplicating
Records Anticipated—Case
Appealed to
Higher Court—Judge Hazel's Opinion.
Monday Judge Hazel, in the United States Cir-
cuit Court, New York, handed down a decision in
the Jones patent suit brought by the American
Graphophone Co. against the Universal Talking
Machine Manufacturing Co. and the American
Record Co., declaring the patent invalid, that the
process of duplicating records claimed by the in-
vc ntor had been anticipated by the prior state of
the art.
J. O. Prescott, of Hawthorne, Sheble & Pres-
cott, sales managers American Record Co., re-
ferring to the opinion, rpoke as follows to The
Review:
"This is one of the most important suits on
talking machine patents that has come before
the court in recent years. Particular interest at-
taches to this patent and the decision because
of the prominent position in the trade occupied
both by the complainant and the defendants, and
the varying effect on the trade in general by a
decision favorable to either of the parties in the
action. The so-called Jones patent covers many
essential features of the process used in the
manufacture of discs by all of the prominent man-
ufacturers in flat records in the business to-day.
Had the patent been sustained it is believed the
American Graphophone Co. could have forced the
various companies to discontinue the process.
But since, in Judge Hazel's opinion, the patent is
invalid, it doubtless opens the field of manufac-
ture to all comers, and will probably result in in-
ducing other concerns to take up the manufacture
of discs.
"From the early days of the talking machine
industry down to 1903, the cylindrical record was
most widely known and used, because the well-
known Bell and Taintor patent, covering record-
ing and engraving sound waves on wax-like ma-
terial, Was so broad in its scope as to effectually
discourage attempts to manufacture by this or
any other method necessitating the use of a cut-
ting stylus. This latter patent was controlled by
the American Graphophone Co. A few years
prior to the expiration of the Bell and Taintor
patent, Joseph W. Jones applied for a patent cov-
ering a process for the manufacture of discs of
the type at present so well known on the market.
It is alleged that the claims in this patent were as
broad in their scope as the Bell and Taintor in-
vention, and that had the Jones patent been sus-
tained it would have given the monopoly of the
disc business to the American Graphophone Co.,
to whom this patent was assigned, or to its
licensees, as the Bell and Taintor patent enabled
them to control the cylinder business.
covered, but which had not. been put in shape for
presentation to the court. They prevailed upon
Judge Platt to postpone the trial of the case
against the Universal Talking Machine Manufac-
turing Co. in order that their own case might be
proceeded with and their additional defenses de-
veloped, when both cases should be brought on
simultaneously for hearing.
"The entire summer of 1905 was spent in the ac-
tive taking of testimony, both by the American
Graphophone Co., and the American Record Co.,
and all defenses known to the latter concern, in-
cluding several not interposed by the Universal
Co., were set forth at length in the defendant's
record, when the cases were finally reached for
hearing before Judge Hazel in December last.
Judge Hazel's opinion, in surveying the situa-
tion, deals with the salient points, as follows:
Contrasted Much to the Advantage of the
United
States—Wherein
Machines and
Records Excel—European Trade in South
America.
A comparison of foreign talking machines with
those of domestic make by an expert on such
matters, who is spending some time in this coun-
try looking over the field, results very favorably
for the American product. In speaking of the
disc machines from an impartial standpoint, he
said: "The one great point of excellence first
noticeable is in the records. They are much
clearer and more even than the average foreign
production, and but for the fact that the vocal
selections are not in the native tongues of the
"This invention has for its particular object a
various European countries, the "folk songs" to
method of duplicating or producing copies of an origi-
which they have been accustomed, they would
nal sound record of the zig-zag type, whlcii was special-
ly adapted for use on a talking machine known as the
be far more popular abroad than their own prod-
gramophone, invented by Emile Berliner. At the date
>>f the patent in suit the phonograph, the invention of
uct. A good example of this is shown by the
Kdison ; the graphophone, the invention of Bell and
enormous sales of the high-grade operatic rec-
Taintor. and the gramophone, the invention of Kniiie
Jterliner, were known to the art and their distinguish-
ords in Italian. So far as the mechanism of the
ing characteristics well understood. Sound records of
the Berliner patent consisted of flat zinc records, having
best grade of European machines is concerned,
etched on their surface a number of infinitely small un-
dulatory grooves of uniform depth representing sound
motors, as a rule, are inferior to the American
waves. The sound record of the invention adapted for
product, although there are a couple of excep-
use on talking machines of which Edison and Bell and
Taintor were the inventors, consists of cylindrical tub-
tions to this rule. So long as there is any doubt
lets, having cut or engraved on their surface vertical
undulations of irregularities of varying depth. The
as to the validity of the Berliner patents, the
distinctive proposition of the patentee (Jones), as
European makers will not endeavor to compete
stated by him, was the process or method of duplicating
or multiplying a sound record having lateral undula-
for business in the United States, but will devote
tions of even depth. This object Involved the method
already known of producing the original or master
their attention to South America, which prom-
record, the subsequent steps of making a metallic ma-
ises to be a very profitable field. The large
trix by electrolysis, separating the same from the
original record and thereupon repeatedly pressing the
manufacturers are emulating the example of
matrix into a suitable yielding material so as to pro-
duce a vendable article.
their competitors in this country by making ex-
"The defenses interposed are anticipation, non-In-
haustive researches tending to the perfection of
fringement, want of patent ability in that the process
the talking machine in every detail, and the
described in the specifications is for a mode of opera-
I ion in which no elemental change is accomplished or most eminent students of acoustics and applied
chemical action effected. . . . That a sound record
«>f the type in question and the materials by which the
mechanics have taken the matter up."—The Talk-
result is obtained (except the graving element) sepa-
rately considered, were familiarly known, is not seri-
ing Machine World.
ously disputed. Nor was it contended that the patentee
was "a pioneer in making sound records. Whether the
different'steps of the process in suit were old must be
ascertained by an examination of the antecedent art.
Such art as understood by the patentee is stated In
the specification. . . . The elicited facts show that
Hie departure of the patentee from the process of Ber-
liner consisted of abandoning the eachiug feature and
adopting in its stead a method of cutting or engraving
in a substance of less resistance.
"The question is whether Jones discovered a radically
different method of duplicating sound methods of zig-
zag type. . . . I am unable to agree with the com-
plainant that cutting or engraving on a cylindrical or
wax record, as stated in the Edison and Gouraud pat-
ents (though it may not have been in hard wax) fol-
lowed by electroplating and using the matrix to dupli-
cate vertical undulations did not suggest the Jones
process. . . . The skilled artisan doubtless would
have had little difficulty In adjusting the various
elements so that a flat sound record of the type In
question could have been produced without experimenta-
tion or the trials of an inventor.
I think it not
only indicates that the process described might substan-
tially be used by the way pointed out by Jones, but also
that they contemplated the application of his inven-
tion to the disk record.
"Moreover, that it was old, at the date of the Jones
invention, to engrave or cut a sound record of uniform
depth directly upon a so-called master matrix, finds
support in the testimony of Berliner, Sanders and Levy,
witnesses for the American Record Co. . . . Referring
again to the evidence in the suit against the American
Record Co., the document filed In October, 1881. by Bell
and Taintor, in the Smithsonian Institute at'Washing-
ton, specifically refers to the feature of cutting or en-
graving both the vertically undulating and zig-zag pro-
"Among the manufacturers there was much
cesses and to the duplication of phonograms.
scepticism as to the validity of the Jones patent,
"The file wrapper and contents shows that the pat-
ent in controversy was rejected about eight times on
and their opinions were backed by large amounts
the ground of want of patentability, in view of the prior
of capital invested by several companies to manu-
patents to-- Edison, Berliner, Young, Rosenthal and
Frank, Bell and Taintor and Gouraud. Subsequently,
facture discs by processes similar to those claimed
however, the patent was granted by the Commissioner
of Patents, owing doubtless to the earnest and skillful
in the patent. The first action on this patent
arguments of the counsel.
was brought in 1901, in the name of the patentee,
"What the patentee accomplished is thought to fall
within the rule laid down in the following cases : Loco-
and was directed against the Universal Talking
motive Works against Medart, 158 U. S. 68; Smith
Machine Manufacturing Co. Later on ,the igainst Nicholls, 88 U.S. 112; Pennsylvania Co. against
Locomotive Co., 110 U. S. 400. Inasmuch as the proofs
American Graphophone Co. acquired title to the satisfy
me that the patent in suit is anticipated by the
prior- art, it follows that the bill must be dismissed
patent, and was substituted as complainant. From
with costs."
time to time during the following four years tes-
timony was taken at intervals by both parties.
"In May, 1905, the suit was brought for hear-
ing before Judge Platt. About five months pre-
vious, suit had also been commenced by the
American Graphophone Co. against the Ameri-
can Record Co., the latter ignorant of the suit
against the Universal Talking Machine Manufac-
turing Co., supposed it had been selected as a de-
fendant of a test case, until it learned in May,
1905, that the test case was about to be tried
against the Universal Co. They investigated the
defenses opposed by the Universal Co., finding
several "Which the American Record Co. had un-
FOREIGN AND NATIVE MACHINES
The Universal Talking Machine Manufacturing
Co. was represented by Horace Pettit, and the
American Record Co. by Edmond Wetmore, presi-
dent of the American Bar Association, and
Samuel Owen Edmonds. The defense was looked
after by E. K. Camp, Philip Mauro and C. A. L.
Massie. The American Graphophone Co. will ap-
peal the case.
George E. Pasmore, manager of the piano de-
partment a t Siegel-Cooper, who has been seri-
ously indisposed with the grippe, is on his way
to recovery, and will soon return to his active
business life.
NATIONAL PHONOGRAPH CO. CHANGES.
A number of changes have taken place in the
National Phonograph Co.'s force of salesmen dur-
ing the past two months, namely: C. S. Gard-
ner, who traveled in Pennsylvania and Ohio, re-
signed in December and his territory is now
being covered by F. J. Smith, of Newark, N. J.
Frank E. Madison, who represented the company
in Delaware, District of Columbia, Maryland,
Virginia, West Virginia, North Carolina, Tennes-
see and Kentucky, has been transferred to the
New York office and placed in charge of the
agreement department; a new man will shortly
be placed in his territory. H. K. Miller, formerly
an Edison dealer at Lacona, N. Y., has been as-
signed to the Pacific Coast States, under the
direction of the Chicago office. H. A. Turner, at
one time manager of the Ray Co. branches, will
cover Texas, Louisiana and Arkansas. J. W.
Scott, their New England traveler, has had Con-
necticut added to his territory.
A ruling of the Treasury Department made
January 31, on the exportation of music sheets
used for diaphragms in sound boxes, manufac-
tured in part of imported material, a drawback
will be allowed equal in amount to the foreign
music so used, less the legal deductions of 1 per
cent.
Anything'
tnd
Everything
In
TALKING
MACHINES
Wholesale
J a m e s L Lyons,""" IL< SS1S H "
THE MUSIC TRADE REVIEW
DECISION IN JONES PATENT SUIT.
Court Declares This Process of Duplicating
Records Anticipated—Case
Appealed to
Higher Court—Judge Hazel's Opinion.
Monday Judge Hazel, in the United States Cir-
cuit Court, New York, handed down a decision in
the Jones patent suit brought by the American
Graphophone Co. against the Universal Talking
Machine Manufacturing Co. and the American
Record Co., declaring the patent invalid, that the
process of duplicating records claimed by the in-
vc ntor had been anticipated by the prior state of
the art.
J. O. Prescott, of Hawthorne, Sheble & Pres-
cott, sales managers American Record Co., re-
ferring to the opinion, rpoke as follows to The
Review:
"This is one of the most important suits on
talking machine patents that has come before
the court in recent years. Particular interest at-
taches to this patent and the decision because
of the prominent position in the trade occupied
both by the complainant and the defendants, and
the varying effect on the trade in general by a
decision favorable to either of the parties in the
action. The so-called Jones patent covers many
essential features of the process used in the
manufacture of discs by all of the prominent man-
ufacturers in flat records in the business to-day.
Had the patent been sustained it is believed the
American Graphophone Co. could have forced the
various companies to discontinue the process.
But since, in Judge Hazel's opinion, the patent is
invalid, it doubtless opens the field of manufac-
ture to all comers, and will probably result in in-
ducing other concerns to take up the manufacture
of discs.
"From the early days of the talking machine
industry down to 1903, the cylindrical record was
most widely known and used, because the well-
known Bell and Taintor patent, covering record-
ing and engraving sound waves on wax-like ma-
terial, Was so broad in its scope as to effectually
discourage attempts to manufacture by this or
any other method necessitating the use of a cut-
ting stylus. This latter patent was controlled by
the American Graphophone Co. A few years
prior to the expiration of the Bell and Taintor
patent, Joseph W. Jones applied for a patent cov-
ering a process for the manufacture of discs of
the type at present so well known on the market.
It is alleged that the claims in this patent were as
broad in their scope as the Bell and Taintor in-
vention, and that had the Jones patent been sus-
tained it would have given the monopoly of the
disc business to the American Graphophone Co.,
to whom this patent was assigned, or to its
licensees, as the Bell and Taintor patent enabled
them to control the cylinder business.
covered, but which had not. been put in shape for
presentation to the court. They prevailed upon
Judge Platt to postpone the trial of the case
against the Universal Talking Machine Manufac-
turing Co. in order that their own case might be
proceeded with and their additional defenses de-
veloped, when both cases should be brought on
simultaneously for hearing.
"The entire summer of 1905 was spent in the ac-
tive taking of testimony, both by the American
Graphophone Co., and the American Record Co.,
and all defenses known to the latter concern, in-
cluding several not interposed by the Universal
Co., were set forth at length in the defendant's
record, when the cases were finally reached for
hearing before Judge Hazel in December last.
Judge Hazel's opinion, in surveying the situa-
tion, deals with the salient points, as follows:
Contrasted Much to the Advantage of the
United
States—Wherein
Machines and
Records Excel—European Trade in South
America.
A comparison of foreign talking machines with
those of domestic make by an expert on such
matters, who is spending some time in this coun-
try looking over the field, results very favorably
for the American product. In speaking of the
disc machines from an impartial standpoint, he
said: "The one great point of excellence first
noticeable is in the records. They are much
clearer and more even than the average foreign
production, and but for the fact that the vocal
selections are not in the native tongues of the
"This invention has for its particular object a
various European countries, the "folk songs" to
method of duplicating or producing copies of an origi-
which they have been accustomed, they would
nal sound record of the zig-zag type, whlcii was special-
ly adapted for use on a talking machine known as the
be far more popular abroad than their own prod-
gramophone, invented by Emile Berliner. At the date
>>f the patent in suit the phonograph, the invention of
uct. A good example of this is shown by the
Kdison ; the graphophone, the invention of Bell and
enormous sales of the high-grade operatic rec-
Taintor. and the gramophone, the invention of Kniiie
Jterliner, were known to the art and their distinguish-
ords in Italian. So far as the mechanism of the
ing characteristics well understood. Sound records of
the Berliner patent consisted of flat zinc records, having
best grade of European machines is concerned,
etched on their surface a number of infinitely small un-
dulatory grooves of uniform depth representing sound
motors, as a rule, are inferior to the American
waves. The sound record of the invention adapted for
product, although there are a couple of excep-
use on talking machines of which Edison and Bell and
Taintor were the inventors, consists of cylindrical tub-
tions to this rule. So long as there is any doubt
lets, having cut or engraved on their surface vertical
undulations of irregularities of varying depth. The
as to the validity of the Berliner patents, the
distinctive proposition of the patentee (Jones), as
European makers will not endeavor to compete
stated by him, was the process or method of duplicating
or multiplying a sound record having lateral undula-
for business in the United States, but will devote
tions of even depth. This object Involved the method
already known of producing the original or master
their attention to South America, which prom-
record, the subsequent steps of making a metallic ma-
ises to be a very profitable field. The large
trix by electrolysis, separating the same from the
original record and thereupon repeatedly pressing the
manufacturers are emulating the example of
matrix into a suitable yielding material so as to pro-
duce a vendable article.
their competitors in this country by making ex-
"The defenses interposed are anticipation, non-In-
haustive researches tending to the perfection of
fringement, want of patent ability in that the process
the talking machine in every detail, and the
described in the specifications is for a mode of opera-
I ion in which no elemental change is accomplished or most eminent students of acoustics and applied
chemical action effected. . . . That a sound record
«>f the type in question and the materials by which the
mechanics have taken the matter up."—The Talk-
result is obtained (except the graving element) sepa-
rately considered, were familiarly known, is not seri-
ing Machine World.
ously disputed. Nor was it contended that the patentee
was "a pioneer in making sound records. Whether the
different'steps of the process in suit were old must be
ascertained by an examination of the antecedent art.
Such art as understood by the patentee is stated In
the specification. . . . The elicited facts show that
Hie departure of the patentee from the process of Ber-
liner consisted of abandoning the eachiug feature and
adopting in its stead a method of cutting or engraving
in a substance of less resistance.
"The question is whether Jones discovered a radically
different method of duplicating sound methods of zig-
zag type. . . . I am unable to agree with the com-
plainant that cutting or engraving on a cylindrical or
wax record, as stated in the Edison and Gouraud pat-
ents (though it may not have been in hard wax) fol-
lowed by electroplating and using the matrix to dupli-
cate vertical undulations did not suggest the Jones
process. . . . The skilled artisan doubtless would
have had little difficulty In adjusting the various
elements so that a flat sound record of the type In
question could have been produced without experimenta-
tion or the trials of an inventor.
I think it not
only indicates that the process described might substan-
tially be used by the way pointed out by Jones, but also
that they contemplated the application of his inven-
tion to the disk record.
"Moreover, that it was old, at the date of the Jones
invention, to engrave or cut a sound record of uniform
depth directly upon a so-called master matrix, finds
support in the testimony of Berliner, Sanders and Levy,
witnesses for the American Record Co. . . . Referring
again to the evidence in the suit against the American
Record Co., the document filed In October, 1881. by Bell
and Taintor, in the Smithsonian Institute at'Washing-
ton, specifically refers to the feature of cutting or en-
graving both the vertically undulating and zig-zag pro-
"Among the manufacturers there was much
cesses and to the duplication of phonograms.
scepticism as to the validity of the Jones patent,
"The file wrapper and contents shows that the pat-
ent in controversy was rejected about eight times on
and their opinions were backed by large amounts
the ground of want of patentability, in view of the prior
of capital invested by several companies to manu-
patents to-- Edison, Berliner, Young, Rosenthal and
Frank, Bell and Taintor and Gouraud. Subsequently,
facture discs by processes similar to those claimed
however, the patent was granted by the Commissioner
of Patents, owing doubtless to the earnest and skillful
in the patent. The first action on this patent
arguments of the counsel.
was brought in 1901, in the name of the patentee,
"What the patentee accomplished is thought to fall
within the rule laid down in the following cases : Loco-
and was directed against the Universal Talking
motive Works against Medart, 158 U. S. 68; Smith
Machine Manufacturing Co. Later on ,the igainst Nicholls, 88 U.S. 112; Pennsylvania Co. against
Locomotive Co., 110 U. S. 400. Inasmuch as the proofs
American Graphophone Co. acquired title to the satisfy
me that the patent in suit is anticipated by the
prior- art, it follows that the bill must be dismissed
patent, and was substituted as complainant. From
with costs."
time to time during the following four years tes-
timony was taken at intervals by both parties.
"In May, 1905, the suit was brought for hear-
ing before Judge Platt. About five months pre-
vious, suit had also been commenced by the
American Graphophone Co. against the Ameri-
can Record Co., the latter ignorant of the suit
against the Universal Talking Machine Manufac-
turing Co., supposed it had been selected as a de-
fendant of a test case, until it learned in May,
1905, that the test case was about to be tried
against the Universal Co. They investigated the
defenses opposed by the Universal Co., finding
several "Which the American Record Co. had un-
FOREIGN AND NATIVE MACHINES
The Universal Talking Machine Manufacturing
Co. was represented by Horace Pettit, and the
American Record Co. by Edmond Wetmore, presi-
dent of the American Bar Association, and
Samuel Owen Edmonds. The defense was looked
after by E. K. Camp, Philip Mauro and C. A. L.
Massie. The American Graphophone Co. will ap-
peal the case.
George E. Pasmore, manager of the piano de-
partment a t Siegel-Cooper, who has been seri-
ously indisposed with the grippe, is on his way
to recovery, and will soon return to his active
business life.
NATIONAL PHONOGRAPH CO. CHANGES.
A number of changes have taken place in the
National Phonograph Co.'s force of salesmen dur-
ing the past two months, namely: C. S. Gard-
ner, who traveled in Pennsylvania and Ohio, re-
signed in December and his territory is now
being covered by F. J. Smith, of Newark, N. J.
Frank E. Madison, who represented the company
in Delaware, District of Columbia, Maryland,
Virginia, West Virginia, North Carolina, Tennes-
see and Kentucky, has been transferred to the
New York office and placed in charge of the
agreement department; a new man will shortly
be placed in his territory. H. K. Miller, formerly
an Edison dealer at Lacona, N. Y., has been as-
signed to the Pacific Coast States, under the
direction of the Chicago office. H. A. Turner, at
one time manager of the Ray Co. branches, will
cover Texas, Louisiana and Arkansas. J. W.
Scott, their New England traveler, has had Con-
necticut added to his territory.
A ruling of the Treasury Department made
January 31, on the exportation of music sheets
used for diaphragms in sound boxes, manufac-
tured in part of imported material, a drawback
will be allowed equal in amount to the foreign
music so used, less the legal deductions of 1 per
cent.
Anything'
tnd
Everything
In
TALKING
MACHINES
Wholesale
J a m e s L Lyons,""" IL< SS1S H "
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