
    MILLS NOVELTY CO. v. RUDOLPH WURLITZER CO. LESLEY & SCHOEN v. SAME.
    (District Court, N. D. Illinois, E. D.
    January 26, 1926.)
    Nos. 1483, 1484.
    1. Patents <@=>328.
    Sandell patent, No. 852,848, claim 1, ior coin-receiving automatic music-playing' device, held valid and infringed.
    2. Patents <@=>328.
    Lesley and Schoen patent, No. 1,198,861, claims 3, 4, and 5, for coin-receiving automatic music-playing device, held valid and infringed.
    3. Patents <@=>328.
    Lesley and Enz patent, No. 1,198,860, claims 10 and 11, for self-closing player-controlling switch for use in coin-receiving automatic music-playing device, held valid and infringed.
    In Equity. Patent infringement suits by the Mills Novelty Company and by Lesley & Schoen against the Rudolph Wurlitzer Company. Decrees for plaintiffs.
    Dyrenforth, Lee, Chritton & Wiles, of Chicago, 111., for plaintiffs.
    Charles S. Burton and Thomas H. Sheridan, both of Chicago, 111. (Robert H. Parkinson, of Chicago, 111., of counsel), for defendant.
   CARPENTER, District Judge.

In the first suit, defendant’s two devices are charged to infringe claim 1 of the Sandell patent, No. 852,848, and of these the newer device is charged also to infringe claims 2 and 3 thereof. In the second suit, both devices are charged to infringe claim 11 of the Lesley and Enz patent, No. 1,198,860, and the first device is charged also to infringe claim 10 thereof, and claims 3, 4, and 5 of the Lesley and Schoen patent, No. 1,198,861. The new device is a modification produced after suit was filed.

At the hearing, defendant practically conceded the validity of the Sandell patent, arguing only noninfringement, in view of limitations imposed by the prior art. The three patented devices and defendant’s two devices, although quite complex and differing in many details, have the same basie principle of action. Upon the introduction of a coin, a stop member automatically moves away from its normal position, and a player-controlling switch closes, starting the playing of a piece of music. If additional coins are put in, the stop member moves by steps, one step for each coin, farther and farther from normal position. At the end of a musical selection, which may be of any length, a perforation in the music sheet, through electric or pneumatic connections, causes the stop member to move backwards one step towards normal position. The stop member thus moves one step from normal for each coin, and one step towards normal for each piece played. When a piece has been played for each coin, and the stop member has returned to normal, the player-controlling switch is thereby caused to open and the music-playing machine stops.

If, as plaintiff asserts, this plan of operation was Sandell’s contribution to the art, defendant’s devices infringe, since, in a broad sense, they are reversals of Sandell’s mechanism. Sandell’s stop member is positively moved one step by each coin, while defendant’s devices have coin-controlled escapements, which permit the stop members to be moved, by a spring in defendant’s first device, and by gravity in the new device. The stop perforation in Sandell’s music sheet permits the stop member to be moved back by gravity one step for each piece played, while defendant’s perforation positively causes the return of its stop members.

Thus Sandell’s stop member is. forced away from normal by coins and allowed to return, while defendant’s is allowed to move away and forced to return. The difference is immaterial to the broad invention, unless made vital by the art, although it may be conceded that defendant’s devices embody some advantages over Sandell. The applicability of the meter art cited to the controlling of a music-playing device which must play pieces of varying lengths in succession, and must play a full piece, whatever its length, for each coin, is not obvious. Hence the meter art does not impose on the Sandell invention the limitations contended for. The stacked coin devices have no bearing on the invention, since they lack San-dell’s mechanical elements, his plan of operation, and many of its advantages.

The Whitlock prior use defense is the one most seriously urged. Whitlock tried and abandoned his first device, whieh lacked the present invention, and may be ignored. He then built a number of devices, somewhat like Sandell’s except as to automatic operation, installed them on a mechanical harp, whieh he was making, and sold some, but not many, to the public. They were apparently unsatisfactory, were recalled, and replaced by his third device, whieh was of the stacked coin type, and is unimportant here. The Patent Office, in interference proceedings, has held that, when devices whieh are sold to the public fail in use, are recalled, and are replaced by devices of a different kind, they constitute in law a mere abandoned experiment, rather than á completion of the invention. The equity and common sense of the Patent Office rule is clear.

Plaintiff, too, satisfactorily antedates any date clearly established for Whitlock’s device No. 2. It follows that the prior art does not narrow the Sandell invention to the extent urged, and that plaintiff in the first suit should have a decree as prayed.

The patents in the second suit disclose narrow improvements on Sandell’s broad invention, which produce a simpler, more positive, and somewhat more satisfactory embodiment thereof. Defendant’s first device is a very close copy of the Lesley and Schoen device, differing from Sandell’s more primitive structure in the very same respects in which Lesley and Schoen have improved upon it. Infringement by this device is clear, and defendant’s close simulation demonstrates such merit in the improvements of Lesley and Schoen as strongly to indicate the presence of invention therein. The art certainly does not anticipate this patent.

Defendant’s new device, designed pendente lite, avoids the palpable infringement of its first, but is charged to retain the feature of claim 11 of the Lesley and Enz patent. Lesley and Enz employ, in the comprehensive combination of Sandell, a self-closing player-controlling switeh, and provide a projection or part on the stop member which directly strikes the switch to force it open when the stop member is in normal position, and which, when the stop member moves, under the influence of a coin, away from normal, withdraws from the switeh, rendering it active, as the claim states, to close. Both devices of defendant have this feature, which is believed to be sufficiently pointed out in claims 10 and 11 sued on. (Claim 10 is narrower, defining the stop member as rotatable, and is applicable only to defendant’s first device, whereas claim 11 is applicable to both.) The provision in the combination of a self-elosing switeh, which ,-is rendered active by the withdrawal of the stop member, was specifically new with the patentee, and results in simplification and positive action. Inasmuch as defendant entirely redesigned its device after suit was brought, apparently to avoid infringement so far as was commercially feasible, its retention of this feature is persuasive at least, and significant of its merit in the combination.

Plaintiff may present a decree in both cases.  