Brief for the Respondent in Opposition — Altoona Publix Theatres, Inc. v. American Tri-Ergon Corp.

/ FILE COPY

IN THE

Supreme Court of the Anited States

OCTOBER TERM, 1934.

No. 255. 256

= =

——

ALTOONA PUBLIX THEATRES, INC.,

; Petitioner,

and

WILMER & VINCENT CORPORATION and LOCUST

STREET REAL ESTATE COMPANY,

Petitioners,

vs.

AMERICAN TRI-ERGON CORPORATION and

TRI-ERGON HOLDING, A. G.,

Respondents.

Ow Peririon ror a Writ or CEertTiIornaRI TO THE CIRCUIT

Court or APPEALS FOR THE THIRD CIRcuIT.

BRIEF FOR RESPONDENTS IN OPPOSITION.

‘ THOMAS D. THACHER,

HUGH M. MORRIS,

! §. MORTIMER WARD, Jr,

Counsel for Respondents.

GALLO & ACKERMAN, Inc., 142 Liberty Street, Telephones—Rector 2--5356-7

——— SD ee TRIP rote geet bach BPI AI 9 a ETS, , ba hi

— *?

LAGE 8 RIE TYSON OS NT NA LOI IOE SNE: OSE INE OSSETIA SE MICE 8 ot

Opinions Below

Jurisdiction ae ia

Question Presented

Statement ....

rArgument

The Decision Below is not in Conflict with Decisions

of this Court on the Question of Invention

The Decision Below is not in Conflict with the Deci-

sions of this Court in Railway Co. v. Sayles, 97

U. S. 554, and Pattee Plow Co. v. Kingman, 129

U. S. 294, Claims 9, 13, 17, 18 and 19, Finding

Ample Support in the Disclosure of the Original

Application

The Decision Below is not in Conflict with the Decisions

of this Court with Respect to what is a Patentable

Process

The Decision Below is not in Conflict with the Decision

of the Court of Appeals of the Sixth Circuit in

Fruehauf Trailer Co. v. Highway Trailer Co., 67

F. (2d) 558

There is no Uncertainty in the Rule of Law to be Ap-

plied under R. S. 4887 in Determining whether there

has been a Forfeiture of a Patent, and the Rule

of Identity of Claims was Correctly applied in the

Courts Below

Conclusion

Appendix ...

Claims relied on, as Granted, with Disclaimer

Applied

FEL LOU PMS ERS oF “PRISE

14

16

18

il

CASES OITED.

PAGES

Abercrombie & Fitch Co. v. Baldwin, 245 U. S. 198,

206-207 16

American Road Machine Co. v. Pennock & Sharp Co.,

164 U. S. 26, 41 10, 11, 12

Carnegie Steel Co. v. Cambria Iron Co., 185 U. S.

403 17, 19, 20

Cohens v. Virginia, 6 Wheat. 264, 399 21

Concrete Appliances Co., et al., v. Gomery, et al., 269

U. S. 177, 180 7, 10,13

DeForest Radio Co. v. General Electric Co., 283 U. S.

664, 678, 682 10, 13, 14

Diamond Rubber Co. v. Consolidated, 220 U. S. 428 .. 13

Eibel Process Co. v. Minnesota & Ontario Paper Co.,

261 U. S. 45, 64 12

Expanded Metal Co. v. Bradford, 214 U. S. 366 17

Fireball Gas Tank & Ill. Co. v. Commercial Acetylene

Co., 239 U. S. 156 22

Fruehauf Trailer Co. v. Highway Trailer Co., 54 F.

(2d) 691, 67 F. (2d) 558 18, 20, 21

General Electric Co. v. Cooper Hewitt Elec. Co., 249

}’. 61; Certiorari denied, 246 U. S. 668 16

Grinnell Washing Machine Co. v. Johnson Co., 247

U. S. 426, 432 10, 12, 13

Hailes v. Albany Stove Co., 123 U. S. 582, 587 18, 20, 21

Hailes v. Van Wormer, 87 U. S. 353 10, 12

Heller Bros. v. Crucible Co., 297 F. 39 16

Hobbs v. Beach, 180 U. S. 383, 391, 392, 395-397 13, 15

Holland Furniture Co. v. Perkins Glue Co., 277 U. S.

245, 253 16, 18

Home Bldg. & Loan Assoc. v. Blaisdell, 290 U. S.

398, 434 21

Hurlbut v. Schillinger, 130 U. S. 456, 463 20

-~ ——

iil

PAGES

Leeds & Catlin Co. v. Victor Talking Machine Co., 213

U. 8. 301, 322, 323 17, 22

Palmer v. Corning, 156 U. S. 342, 345 10

Pattee Plow Co. v. Kingman, 129 U. S. 294 wnnucssmeumnl4, 16

Powers-Kennedy Contracting Corp., et al., v. Concrete

Mixing & Conveying Co., 282-U. S. 175 vrennenenrmnlQ, 13

Railway Co. v. Sayles, 97 U. 8S. 554 14, 15

Risdon Locomotive Works v. Medart, 158 U. S. 68 ........16, 18

Robertson v. Blake, 94 U. S. 728 12

Rockwood v. General Fire Extinguisher Co., 8 F. (2d)

682; Certiorari denied, 269 U. S. 571 12

Siemens v. Sellers, 123 U. S. 276 22

Sterling v. Constantin, 287 U. S. 378, 400 21

Straus v. Crane, 235 F. 126 19

Telephone Cases, 126 U.S. 1 17

Texas & N. O. R. Co. v. Brotherhood Ry., etc., 281

U. S. 548 7

Thomson Spot Welder Co. v. Ford Motor Co., 265 U.

S. 445 7

Tyson & Bros. v. Banton, 273 U. S. 418, 432 mss 21

Weaver v. Palmer Bros., 270 U. S. 402, 414 21

Westinghouse v. Boyden Power Brake Co., 170 U. S.

537 16, 17, 18

IN THE

Supreme Court of the United St-tes

OCTOBER TERM, 1934.

No. 255.

lili

—_—o>

Auroona Pusirx THeatres, Inc.,

Petitioner,

and

Witmer & Vincent Corporation and Locust STREET

Rea Estate Company,

Petitioners,

vs.

American Tri-Ercon Corporation and Tri-Ercon

Houprne, A. G.,

Respondents.

= ==

ow

On Petition ror a Writ oF CERTIORARI TO THE CrrcuitT

- Court or APPEALS FoR THE THIRD CrRculr.

BRIEF FOR RESPONDENTS IN OPPOSITION.

OPINIONS BELOW.

The District Court’s opinion appearing in Vol. II of

the Record at page 1027, is reported in 5 Fed. Supp. 32.

The opinion of the Circuit Court of Appeals appearing in

2

Vol. II of the Record, page 1157, is not officially reported.

Both opinions have been separately printed by the Peti-

tioners for the conve-.ience of the court. The Circuit Court

of Appeals also rendered a supplemental opinion on Au-

gust 6, 1934 not officially reported but filed in this court

after the filing of the record.

JURISDICTION.

The jurisdiction of this Court is invoked under Sec. 240a,

Judicial Code, as amended by the Act of February 13, 1925,

43 Stat. 938 (Title 28, U. S. C. A., § 347).

QUESTION PRESENTED.

This is an ordinary patent suit for infringement and the

sole question presented is whether the patent is valid.

Infringement is not contested. The petitioners contend

that the patent is invalid for want of invention, because

of expansion of the claims beyond the original disclosure,

because the process claims are for the mere function of

a machine, because of a disclaimer filed before trial and

because of forfeiture under R. S., 4887 by reason of an

earlier German patent issued to the same inventors.

Respondents dispute all of these contentions, all of which

were resolved in their favor in both courts below.

STATEMENT.

The patent in these suits, #1,713,726, was granted on

May 21, 1929 (Vol. III, pp. 1-10, and printed in pamphlet

form herewith). It relates to photographic sound on film

recording and reproducing. It is owned by the American

Tri-Ergon Corporation, one of the Respondents. On Octo-

ber 10, 1932, the bills of complaint (Vol. I, pp. 9, 28) were

filed against Petitioners, who operate motion picture thea-

tres, charging infringement of said patent. A disclaimer

to the patent was filed before trial (Vol. ITI, p. 227, and

Appendix, infra, p. 23). Both suits were tried on the

3

same record and defended by R. C. A. Photophone, Inc.

(a wholly owned subsidiary of Radio Corporation of Amer-

ica), the licensor of the infringing machines. Validity was

contested but not infringement (Vol. II, p. 1049). The

type PS-16 machine, involved in the Altoona Public suit,

was held to infringe claims 9, 13, 17, 18 and 19, as

charged. The type PS-1 machine, involved in the Wilmer

& Vincent suit, was held to infringe claims 5, 7, 9, 13, 18

and 19, as charged (pp. 1049, 1090). No petition for a

rehearing was filed.

The Radio Corporation and Western Electric Company

are cross-licensors in the sound picture field (Vol. II, pp.

1024-25), and apparently have enjoyed a substantial mo-

nopoly in supplying sound picture machines to the industry

in this country (Vol. II, pp. 847-51). Western Electric

commenced in August, 1926 to pvt out sound picture ma-

chines. These embodied only sound on disk. One of the

patentees then brought one of their Tri-Ergon sound on

film machines here in December, 1926, and demonstrated

and discussed it with Western Electric engineers, after

which Western Electric carried on experiments with sound

on film (Finding 31, Vol. I, p. 1047). The first R. C. A.

sound picture machine of any kind was put out in October,

1928 (Finding 29, Vol. II, p. 1046). Machines put out and

licensed by each of these two companies have been

equipped for sound on film and Found on disk (Vol. V,

pp. 1411-17), but in the last few years sound on film sound

pictures have driven sound on disk sound pictures from .

the market (Finding 24, Vol. IT, p. 1045).

The record here contains over 2,900 pages. The trial

court heard many witnesses, fact and expert; witnessed

extensive demonstrations of Petitioners’ and Respondents’

machines and of many alleged prior art models, and after

an exhaustive review of the record, as shown from the

many findings of fact and conclusions of law considered and

passed upon (Vol. II, pp. 1037-1129)—it rendered its opin-

ion accompanied by said findings which should be read as

a part of the trial court’s opinion. They cover all of the

a ee

aa

4

points here presented by Petitioners, and are against them

in every particular.

The trial court found, among other things, that the pat-

ent in suit discloses apparatus and methods which made

possible the successful establishment of a new and impor-

tant art—sound on film sound pictures (Vol. II, pp. 1030

and 1045); that the invention made possible the first suc-

cessful photographic sound reproduction (p. 1079); that the

patentees were the first in the world to demonstrate pub-

licly sound on film either with or without pictures, which

they did in 1922 with a machine made according to the

patent (p. 1045); that the prior efforts of various other

scientists to produce sound on film were unsuccessful (p.

1084); and no sound on film machine was ever previously

put out (pp. 1045-6) ; that the features of the claims all co-

operate to produce the new and useful result of distortion-

less sound reproduction from sound on film (pp. 1078 and

-1030) ; and that none of the seventy odd patents cited, an-

ticipated or invalidated the claims (pp. 1077-78); that the

prior art sound on film patents were for inoperative, use-

less structures (p. 1080); that the old Edison cylinder and

disk gramophones with flywheel control, involved entirely

different problems and were superseded by centrifugal ball

governors useful there, but not satisfactory for and not

used in sound on film machines (pp. 1069; 1070-71; 1050);

that the claims are not merely for the use of a fly wheel in

a sound head (p. 1048)*; that the patent is entitled to a

“Not only are the claims for combinations of features, but

as to the flywheel itself there are many places in a sound on

film machine where a flywheel may be placed without opera-

tively controlling the film. By reason of the teachings of

the patent it is now known that the flywheel should be

associated with the cylinder—sprocket or roller—either at

or adjacent the optical slit (translation point) over a por-

tion of which cylinder the film passes so as to properly

contrel the film, and that it should not be associated with

some other part of the machine where it will not properly

function.

sews ~ ren 8. PTO CEERI DOR ORIN eR ot ——

5

pioneer status (p. 1078), and that all of the claims at issue

were valid and infringed (p. 1090).

The Circuit Court of Appeals (who also had the various

machines and models before it) in a comprehensive opin-

ion affirmed the trial court in its findings and conclusions,

in which it stressed the points that the prior art sound on

film patents were inoperative paper patents (p. 1162); that

these paper patents embodied many disturbing factors pre-

venting proper photographic sound on film, and that these

disturbing factors had never been segregated, diagnosed

and then collectively remedied, until the patentees did it

(p. 1160) ; that the suggestions and prophesies found in the

prior art were confusing and not helpful (p. 1162); that

each of the elements of the patent in suit coacts directly

with the others to produce a new and useful result, the

prevention of sound distortion (pp. 1162-3). Thus the in-

vention made possible the successful recording and repro-

duction of sound on film, which had not been attained be-

cause of many difficulties in eliminating the different dis-

turbing elements which reacted one upon another. The

apparatus designed was the first embodiment of successful

invention.

It is not possible to fix a film in a machine as Hdison

fixed his cylinders. The flimsy light film enters the sound

head from the motion picture machine at 90 ft. per minute

charged with complex vibrations. Each successive short

length of film at the optical slit must be instantaneously

and momentarily endowed with the property of a heavy

mass and brought into accurate focus with the fine line of

light and yet permitted immediately to pass on out of the

sound head. Applying the irertia control directly to a

film adjacent the translation point had not even occurred

to anyone. No one yet knew that irregularities in the film

perforations and the meshing of the sprocket teeth there-

with would cause distortion of the sound. No one had dis-

6

covered the sources of the difficulties, although scientists

had tried unsuccessfully for years to use light to translate

sound to or from film. Prophesies and speculations for

remedying one or another of the disturbing factors while

retaining others, got nowhere from a practical standpoint

because the ‘remaining disturbing effects left the result so

poor that the actual effect of the proposed remedy could

not be determined.

No one had successfully used film sound records of any

kind, nor sound modulated light in any practical art.

The uniformity of speed of the film, the arcuate bending

of the film and the focused line of light all coact at the

same point to determine the desired spacing, definition and

transparency of the light lines photographed for distor-

tionless swand recording—pitch and volume; and in repro-

ducing they all coact at the same point in determining

the character of each instantaneous, modulated fine line of

light directed upon the P.E. cell to produce distortionless

sound reproduction.

Petitioners’ assertions as to the facts in this case are

contrary to the findings below. Thus for example they seek

to build up a case of inconsistency with this Court’s opin-

ions by attempting to create the impression that. the gist of

the invention here was the use of a flywheel in an old well

known film phonograph, and by representing that the prob-

lem here was the same as in Edison’s old cylinder phono-

graph. The lower courts on the evidence presented have

found against them on each of these points and their only

references for sound on film are to paper patents which do

not anticipate.

There is no reason for granting this petition. This is

merely an ordinary patent suit in which Petitioners seek

to have this Court review all but one of their defenses

below. The questions presented are largely questions of

fact upon which both courts below have concurred in find-

ing for the Respondents. The issues relate to the validity

ROI ESS TE SO eT eI NT et tk he

7

of a patent. There is no conflict among*the Circuits on

that issue nor any conflict between the decision of the court

below and any cther court upon any question of law in-

volved, and no novel or unusual questions of law are

involved.

Petitioners assert that a brief which it has been sought

to file as amicus curiae, was tendered ‘‘on behalf of sub-

stantially the entire motion picture industry’’. This state-

ment is not supported by the record or by the brief sought

to be filed, and many important producers and exhibitors

of sound motion pictures did not join in the petition for

leave to file the brief (Vol. II, pp. 848-51).

So far as concerns the effect of this patent on the in-

dustry, the record further shows that up to a few years

ago, disk-sound pictures were in commercial use until

driven from the market by the superiority of the invention

here involved. The industry is free to go back to that ap-

paratus which this record further shows the infringing

machines are equipped to use (Vol. V, pp. 1411-i7).

ARGUMENT.

THE DECISION BELOW IS NOT IN CONFLICT WITH

“DECISIONS OF THIS COURT ON THE QUESTION OF

INVENTION.

The question of patentable invention is a question of

fact. Thomson Spot Welder Co. v. Ford Motor Co., 265

U. S. 445; Concrete Appliances Co. v. Gomery, 269 U. S.

177, 180. Both courts below decided this question against

the petitioners. Under the well-established rule this Court

accepts the findings in which two courts concur unless clear

error is shown, Tezas ¢ N. O. R. Co.v. Brotherhood Ry. éc.,

281 U. S. 548, or, in patent cases, unless the question of

fact I is been differently decided in two circuits. Thom-

son Spot Welder v. Ford Motor Co., supra; Concrete Appli-

ances Co. v. Gomery, supra.

~The claims in suit were sustained in the District

Court upon extensive findings of fact predicated upon evi-

See RY Pee tee ne .

8

dence much of which was conflicting and contradictory.

The Circuit Court of Appeals found no error justifying

reversal of the trial court’s findings or conclusions, and

upon a careful review of the record stated its own conclu-

sions upon the facts and the law, which are in accord with

those of the trial court. Upon the facts thus found the

decision of the court below is in accord with the decisions

of this Court upon the question of invention.

After describing the invention in its relation to the art,

the Court of Appeals reached the following conclusions:

‘‘The prior art does not disclose this combination

nor the result which it produced. The evidence shows

that the moving, talking picture art was looking for

something like this. The defendants point to some

seventy patents, some having one element of the patent

in issue, and some another, but none have this com-

bination and none produce the result of this combina-

tion. The patentees were the first to accomplish suc-

cessfully and commercially photographic sound on film

reproduction. The suggestions and prophecies found

in paper patents were confusing and not helpful.

‘‘This new combination of the patent was not ob-

vious to one skilled in the art for no one else had dis-

covered it, although many were working on it and it

required years of patient study and research before

the patentees were able to work out this combination

and method, although some of the individual elements

were old, one being found here and another there in

inoperative paper patents. The defendants were un-

able to produce a single anticipation among the sev-

enty or more paper patents upon which they relied.

‘‘The trial judge said that the combination and

methods of the claims of the patent in issue are not

found in any prior art citations and are new and useful.

A close study of the citations confirms this finding.

No one before the patentees was able to bring together

9

all the elements of the patent into a successfully op-

erative combination. Each of these elements coact di-

rectly with the others to produce a new and useful

result, the prevention of sound distortion. It is well

settled that a new combination, every element of which

is old, is patentable if it produces a new and useful

result, or an old result in a ‘new and materially better

way’, or an ‘old result in a more advantageous way’ ”’

(Vol. II, pp. 1162, 1163).

Referring to the many difficulties which confronted the

art, and which were overcome by the inventors, the Court

said:

‘‘These had never been segregated and diagnosed

and then collectively remedied, until the patentees did

it’’ (Vol. II, p. 1160).

The trial court expressly found that the claims are not

merely for the use of a fly wheel in a sound head, and that

the combination and methods of the claims in suit are not

found in any of the prior art citations and are new and

useful (Vol. II, pp. 1048; 1078).

‘For the facts in detail see findings of the trial court

(Vol. II, pp. 1037-1090). The Pedersen patent is covered

by Finding 71 (Vol. II, p. 1077), Finding 54 (Vol. I, p.

1056) and Conclusion of Law 9 (Vol. II, p. 1080). The

Ries Patent is covered by Finding 59 (Vol. II, p. 1068)

and Conclusion of Law 9 (Vol. II, p. 1080). The Edison

cylinder phonograph equipped with a fly wheel is covered

in Findings 60 and 62 (Vol. II, pp. 1069-71), and the

Dragoumis Patent by Finding 56 (Vol. II, p. 1062). As

to petitioners’ assertion that only the use of a fly wheel

performing its well known function is embodied in the

claims, see Findings describing the combination of the pat-

ent numbered 1 to 17; 23-a to 26, and 73 (Vol. II, pp.

1037-42, 1045-46, 1078) and particularly Findings 32, 37, 38

and 39 (Vol. II, pp. 1048-51) ; and also Conclusions of Law

2 and 4 (Vol. II, pp. 1078-9).

MIE rer) ~

RE OF pe —— cremnene Ae i ed oe

10

Upon the facts found by both courts below the patented

combination clearly involved invention under rules repeat-

edly enunciated by this Court. Hailes v. Van Wormer,

87 U. S. 353; Palmer v. Corning, 156 U. S. 342, 345; Grin-

nell Washing Machine Co. v. Johnson Co., 247 U. S. 426,

432.

The lower court cited these very cases (now relied upon

by petitioners) for the rule it followed. It recognized the

rule but also that the invention before it was distinctly dif-

ferent from the stove in the Hates case, each of the sepa-

rate elements of which had been well known and in public

use in stoves; from the sewer grate of the Palmer case

as to which the Court said: ‘‘A grate over a sewer is

one of the simplest of mechanical devices’’; and from the

washing machine which was merely the gearing together

of a common washing machine and a common wringer with

a control handle.

Thns the court below recognized and applied to the par-

ticular facts peculiar to this case the ‘‘settled’’ rule enunci-

ated by this Court governing the patentability of new and

useful combinations of old elements producing either a new

result or an old result in a better way. There was no mis-

statement of the established rule, and therefore no conflict

of decisions. Furthermore, the established principles were

correctly applied.

The decision of the court below is not in conflict with

any of the following decisions of this court which are relied

upon by the petitioners as conflicting:

American Road Machine Co. v. Pennock & Sharp

Co., 164 U. S. 26.

Grinnell Washing Machine Co. v. Johnson Co., 247

U. 8. 426.

Concrete Appliances Co., et al., v. Gomery, et al.,

269 U. S. 177.

Powers-Kennedy Contracting Corp., et al., v. Con-

crete Miaing & Conveying Co., 282 U. S. 175.

DeForest Radio Co. v. General Electric Co., 283

U. 8. 664.

_ Aare a itiaainial os)

SE DCN CT ean OREN PEER MATT OR EEE! FT “pow —

11

In American Road Machine Co. v. Pennock, et al., supra,

a patent for a machine for making, repairing and cleaning

roads was held void for want of invention. The claim of

invention was predicated upon increasing the weight of the

old well known hand-wheel fo: lifting the road scraper

employed in this class of machinery. The opinion, as we

understand it, goes no further than to hold that road

machine mechanisms had been operated by hand-wheels;

that such mechanism was a ‘‘common device’’ and had been

used in various machines, and a heavy wheel in ‘‘this class

of machinery’’ to secure ‘‘the well known result’’, was not

patentable. After an exhaustive review of the prior art this

Court concluded (164 U.S., p. 41).

‘*But the decision of the Circuit Court rested on the

want of invention, and in that conclusion we concur.

‘**The whole essence of the Taft invention’, says

appellant’s counsel, is the application of momentum to

carry the wheel along ‘sufficiently to enable the opera-

tor to take a new grasp (as explained by Mr. Breevort),

without clamping the wheel to prevent its running

backward’.

‘*Did increasing the weight of the hand-wheels in this

class of road machmes, in order to correct the tend-

ency of smaller wheels to reverse, involve patentable

novelty?

‘*We do not think so. The use of hand-wheels as

a substitute for straight levers in this class of ma-

chinery was old, and whether the wheels were light or

heavy (and heavy wheels were old), they alike per-

formed the service of rotary levers.’’ (Italics ours.)

Obviously there is no conflict between that decision and

the decision of the court below, unless, as petitioners seem

to contend, no use of a flywheel in any combination for

any purpose can be patentable, no matter what the char-

acter of the machine embodying it, or the arrangement,

12

purpose or result may be. Of course this is not the law,

and the Road Machine case did not so hold.

In Robertson v. Blake, 94 U. S. 728, the patentable

machine was certainly not the first commercially success-

ful stone crusher. It could not be compared in its rela-

tion to the art with the apparatus disclosed by the pat-

ent in suit. And yet in that case this Court found the

use of a flywheel in combination with a revolving shaft

and a movable jaw to be patentable invention. Even a

novel application of the force of gravity may involve inven-

tion. Eibel Process Co. v. Minnesota & Ontario Paper Co.,

261 U. S. 45, 64; Rockwood v. General Fire Extinguisher

Co., 8 F. (2) 682 (C. C. A. 2); (Certiorari denied, 269

U. S. 571).

Grinnell Washing Machine Co. v. Johnson Co., 274 U.

S. 426, was cited and relied upon in the court below in

holding upon the facts found that a combination of the

claims was a patentable invention. In that case this court

restated the rules, which it declared were authoritatively

settled by its own decisions for determining the patenta-

bility of combinations of old elements known to the art.

The opinion of the Court states (p. 432):

‘*Generally speaking, a combination of old elements

in order to be patentable must produce by their joint

action a novel and useful result, or an old result in

a more advantageous way.’’

It then quotes from Hailes v. Van Wormer, supra:

‘* «Tt must be conceded that a new combination, if

it produces new and useful results, is patentable,

though all the constituents of the combination were

well known and in common use before the combination

was made. But the results must be a product of the

combination, and not a mere aggregate of several re-

sults, each the complete product of one of the com-

bined elements’. * * *

13

‘Merely bringing old devices into juxtaposition, and

there allowing each to work out its own effect without

the production of something novel, is not invention’ ”’

(p. 432).

The applicable and controlling principles in the Washing

Machine case were properly applied to the facts found in

the court below and the case was cited as authority for

the application of the rule. (Opinion below, Vol. II, p.

1163.)

Other decisions of this Court sustaining the patentability

of combinations of old elements are Hobbs v. Beach, 180

U. S. 383, 391-392, cited by the trial court and Diamond

Rubber Co. v. Consolidated, 220 U. S. 428.

In Concrete Appliances Co. v. Gomery, 269 U. 8. 177, the

question of invention was stated to be one of fact depend-

ent upon consideration of the state of the art as applied

to the disclosure of the patent in that suit (p. 180). Norule

different from that of the Washing Machine case was

stated. The old rule was simply applied to the particular

device before the Court.

Powers-Kennedy Contracting Corp., et al., v. Concrete

Mixing € Conveying Co., 282 U. S. 175, was simply the

application of the same rule to another state of facts.

In DeForest Radio Co. v. General Electric Co., 283 U.

S. 664, Langmuir’s patent for a high vacuum discharge

tube used as a detector and as an amplifier in radio com-

munication and telephony, and for the process of making

it, was held invalid both for want of invention and because

of prior use. No new rule was stated. The Court simply

affirmed the findings of the trial court—that on the evi-

dence presented the Langmuir improvement was an ob-

vious thing and in prior use (pp. 682, 685).

This Court was careful to point out in its opinion (p.

678) that even though the improvement was accomplished

by a change so simple as to be brought about by reducing

the pressure in the well-known low vacuum tube by a few

14

microns, still it might be invention. But the trial court

having found that both the method and the result of such

a change were well known to the art (p. 682), this Court

concluded that the patent was void for want of invention.

Here the invention and its relation to the prior art are

entirely different from those in Petitioners’ cases; and the

courts below simply applied the settled rule of this Court

to a different state of facts.

THE DECISION BELOW IS NOT IN CONFLICT WITH THE

DECISIONS OF THIS COURT IN RAILWAY CO. v. SAYLES,

97 U. S. $54, AND PATTEE PLOW CO. v. KINGMAN, 129 U. S&S.

294, CLAIMS 9, 13, 17, 18 AND 19, FINDING AMPLE SUP-

PORT IN THE DISCLOSURE OF THE ORIGINAL APPLI-

CATION.

This, of course, is a question of fact. And fere, again,

the findings below in both courts were against the peti-

tioners.

Petitioners contend in substance that in the original ap-

plication it was not indicated that the following features

were part of the invention, i. e., (1) arcuate bending of

the film; (2) the use of a film feeding sprocket in addition

to the cylinder over which the film is passed; (3) the photo

electric cell; and (4) the optical slit. But the trial court

found as a fact that each of these four features was dis-

closed in the original application as filed.? As to all of these

features the trial court found that ‘‘The combinations and

methods of the claims in suit were adequately disclosed

under the provisions of R. S., 4888, in the application for

the patent in suit as originally filed’’ (Vol. I, p. 1080).

*As to features (1), (3) and (4), see Finding 6 (Vol. II,

pp. 1038, 1039), and as to feature (2) see Finding 14 as to

Figure 2 originally in the application disclosing this fea-

ture (Vol II, p. 1041), also described in the original

specification, see Appendix to Petitioners’ Brief, p. 43, and

in Finding 72 (Vol. H, p. 1077).

15

It is significant that petitioners have omitted as a part

of the original specifications printed in the appendix to

their brief all of the original drawings which form an im-

portant part of the disclosure. They are found with the

patent (Vol. III, pp. 1-10, and printed in pamphlet form

herewith).

The petitioners also claim that it was not until after the

Radio Corporation of America had put out their machines

that these four features were included in some of the claims,

and that such inclusion was an expansion of the invention

to cover the machines which have been held to infringe

in the courts below. The record, however, fails to show

that any machine was put out by Radio Corporation prior

to the grant of the patent (May, 1929) excepting only a

single isolated PS-1 machine, in October, 1928, at Johns-

town, Pennsylvania, and that no PS-16 machine was

put out until several months after the grant of the patent

(Vol. II, p. 848, and Finding 29, p. 1046). The PS-1

machine was held to infringe Claims 5, 7, 9, 13, 18 and

the PS-16 machine was held to infringe Claims 9, 13,

17, 18 and 19 (Vol. II, p. 1090). Claims 5, 7 and 9

were made long prior to the date of the earlier machine

(the first two in March, 1925, and the last in May, 1928;

Vol. III, pp. 52-3, 79). Thus each of these machines

infringed at least»one of the patent claims already in the

application before the machine was buili.

The claims being fully supported by the disclosure of

the original application, and no intervening rights having

accrued, the decision below was controlled by Hobbs v.

Beach, 180 U. S. 383, 395-397, where these considerations

were emphasized and made the basis of decision in dis-

tinguishing from Railway Co. v. Sayles, 97 U. S. 554. In

that case (pp. 557-59) the original application, rejected as

defective and insufficient, lay dormant and unaltered for

five years during which time defendants’ machines were

put out, whereupon a new application was filed with new

drawings and specifications disclosing a new apparatus,

16

different from the original in construction and operation.

Even when implication from the drawings and specifica-

tions of the original application is necessary to suppogt

the new claims, this Court will sustain such claims pro-

vided they have not been expanded beyond what may rea-

sonably be implied from the original disclosure. <Aber-

crombie & Fitch Co. v. Baldwin. 245 U. S. 198, 206-207.

Pattee Plow Co. v. Kingman, 129 U. S. 294, involved a

reissue patent filed over two years after the application

for the original patent, and this Court found that the

reissue claim sued on was broader than the original

claim and held the patent invalid on that ground, under

the well established rule that a patent cannot be broadened

by a reissue after two years in the absence of special cir-

cumstances excusing the delay. The decision is not appli-

cable in the case at bar.

That the court below clearly understood the rules estab-

lished by this Court on this point is shown not only by

the opinion in this case but by its earlier opinion in Heller

Bros. v. Crucible Co., 297 Fed. 39, where the law was re-

viewed at length. Certiorari was denied on this point in

the case of General Electric Co. v. Cooper-Hewitt Electric

Co., 249 Fed. 61 (Certiorari denied, 246 U. S. 668).

THE DECISION BELOW IS NOT IN CONFLICT WITH THE

DECISIONS OF THIS COURT WITH RESPECT TO WHAT

IS A PATENTABLE PROCESS.

Both courts below having found the method claims to

be valid, petitioners assert that the decision below is in

conflict with the decisions of this Court in Holland Furni-

ture Co. v. Perkins Glue Co., 277 U. S. 245; Westinghouse

v. Boyden Power Brake Co., 170 U. S. 537, and Risdon

Locomotive Works v. Medart, 158 U. S. 68. These cases

are not applicable.

When Risdon Locomotive Works v. Medart, supra, was

decided it was assumed that a patentable process must

— ET” Pe se EP Oe Te

17

involve a chemical or other similar elemental action. This

assumption was questioned by this Court in Westinghouse

v. Boyden, 170 U. S. 537, and until its decision in Expanded

Metal Co. v. Bradford, 214 U. S. 366, the question as to

whether any process involving a purely mechanical opera-

tion was patentable was not entirely free from doubt. But

in the latter case the Court, after reviewing all of the deci-

sions of this Court upon the subject, including the Tele-

phone Cases, 126 U. S. 1; Carnegie Steel Co. v. Cambria

Iron Co., 185 U. S. 403, and Leeds & Catlin Co. v. Victor

Talking Machine Co., 213 U. S. 301,* concluded:

‘‘That an invention or discovery of a process or method

involving mechanical operations, and producing a new

and useful result, may be within the protection of the

Federal statute, and entitle an inventor to a patent for

his discovery’’ (214 U. S., at 386).

This Court also pointed out in the Expanded Metal Case

(p. 386) that in the Telephone Cases it had sustained a

patent for a method of transmitting electrical undulations

similar in form to the vibrations of the air accompanying

vocal sounds, and at the same time the patent for the

apparatus by which the method was operated was sus-

tained; and that in the Leeds ¢ Catlin Case it had held

that a process and apparatus by which it is performed

are distinct things, and may be patented in one patent or

in different patents.

®*The process claim involved in the Victor Talking Ma-

chine case read as follows:

‘*Claim 45: The method of reproducing sounds from

a record of the same, which consists in vibrating a

stylus, and propelling the same along the record by

and in accordance with the said record, substantially

as described’’ (213 U. S., at 314).

Compare with process claims 9, 18 and 19 (appendix,

infra).

18

Upon the findings of the courts below the method claims

here in suit are clearly within the decision of this Court in

the last four cases, and the decisions of this Court relied

upon by the petitioners are not applicable,—Risdon Locomo-

tive Works v. Medart, supra, because the ruling of that case

has been limited and qualified by the later decisions of

this Court; Westinghouse v. Boyden, supra, because the

only question there presented was whether the apparatus

claims were drawn on the function of the apparatus rather

than upon its structure, the opinion stating that the case

did not call for any expression of opinion on what may

be a patentable process; Holland Furniture Co. v. Perkins

Glue Co., supra, because that decision dealt solely with a

product claim for vegetable glue, and the opinion expressly

states that the ‘‘process claims are not before us’’ (p. 253).

THE DECISION BELOW IS NOT IN CONFLICT WITH THE

DECISION OF THE COURT OF APPEALS OF THE SIXTH

CIRCUIT IN FRUEHAUF TRAILER CO. v. HIGHWAY

TRAILER CO., 67 F. (2d) 558.

The petitioners assert a conflict between the decision of

the court below sustaining the validity of a disclaimer and

the decision in Fruehauf Trailer Co. v. Highway Trailer

Co., 67 F. (2d) 558 (C. C. A. 6th), declaring a disclaimer

invalid. In that case the disclaimer was obviously invalid

under the ruling of this Court in Hailes v. Albany Stove

Co., 123 U. S. 582, but there is no conflict here with the

latter decision and none is asserted by the petitioners.

The trial court in its Opinion held:

‘‘The disclaimer limits the patent and does not en-

large it. The subject matter of the disclaimer is con-

sistent and in accordance with the teachings of the

patent. No part of the disclaimer broadens or pur-

ports to broaden the scope of the claim of the patent.

The presumption of validity of the patent in suit is

19

unaffected by the disclaimer and the claims in suit here,

as modified by the disclaimer, are valid. Carnegie

Steel case, 185 U. S., at 435’’ (Vol. II, p. 1034).*

The court below considered this defense, regarded it as

unsubstantial, and affirmed the decision of the trial court

(Vol. II, p. 1172).

The facts relating to the disclaimer are: (1) No claim

is broadened by the disclaimer (pp. 1086-7) ; (2) each of the

features by-which the claims in suit are qualified by dis-

claimer was shown and described in the application for

the patent as filed and in the patent as granted (pp. 1077

and 1041); (3) each of the limitations by disclaimer was

actually included in one or more of the claims of the patent

as issued (p. 1086); (4) each limitation is entirely con-

sistent and in accordance with the teachings of the patent

(p. 1086); (5) the disclaimer qualifies the already claimed

apparatus or method by limiting it to one wherefn the

sound is translated by light to or from the film (p. 1086);

(6) the disclaimer qualifies claims 9, 13, 18 and 19, by limit-

ing them to the feature of flywheel control, a feature dis-

closed in the specification and covered in several of the

claims as issued (p. 1086); (7) the disclaimer qualifies

claim 17 by limiting it to a sprocket forming a part of the

‘‘carrier-progressing means’’ (already in the claim) located

with respect to a portion of the periphery of the ‘‘cylinder’’

already in the claim. This construction is in accordance

with the teachings of the patent, which disclose the arrange-

ment, for example, in connection with Figure 2 (pp. 1086

and 1041).

Upon this state of facts the disclaimer was valid under

the decision of this Court in Carnegie Steel Co. v. Cambria

Iron Co., 185 U. S. 403. In Straus v. Crane, 235 Fed. 126

(C. C. A. 2nd), Judge Learned Hand stated (p. 129): ‘‘We

“See also Finding No. 72, Vol. II, page 1077, and Conclu-

sion No. 24, Vol. II, page 1086.

20

do not mean to suggest that a disclaimer may not add a new

element to the combination, thereby limiting it to a part

only of what was covered by the specifications. That was

the effect of the disclaimer in Carnegie Steel Co. v. Cam-

bria Iron Works, 185 U.S. 403.’’ The disclaimer sustained

by this Court in Hurlbut v. Schillinger, 130 U. S. 456, had

the same effect of limiting the claim to a part only of what

was covered by the specifications. In that case the limita-

tion was accomplished by adding a new element to the

combination, i. e., the tar paper or other material between

the blocks of concrete (see p. 463).

There was no attempt in the case at bar by merely filing

a paper to make a new patent, or one for a different inven-

tion from that shown and described in the specification and

drawings of the patent. That is what was attempted in

Hades v. Albany Stove Co., 123 U. S. 582, as the Court

etated at page 587. In that case it was also held:

‘‘The first claim, as modified by the disclaimer, has

nothing in the specification to stand upon, nothing to

explain it, nothing to furnish a reason for it.’’

Fruehauf Trailer Co. v. Highway Trailer Co., 67

F. (2d) 558 (C. C. A. 6th), involved a set of facts

similar to those in the Hailes case, and the Court held

that the disclaimer did not limit the combination al-

ready claimed but expanded it to cover structures upon

which it could not before have been read; and in

ef‘ect claimed a new and a different combination by the

addition of a structural feature which was not disclosed

or expressly referred to in the patent. This is quite obvi-

ous from a mere reading of the claims and disclaimers.

The Court in its Opinion stated that it agreed with the

views expressed by the learned trial Judge upon the sub-

ject of the disclaimers. We therefore refer to the Opinion

of the trial court, 54 F. (2d) 691, for the facts, which are

21

there set forth at length. With respect to one of the dis-

claimers it appears that the apparatus claimed in the pat-

ent was concededly inoperative, and that the effect of the

disclaimer was to add to the invention operative features

which were not disclosed at all in the patent, which were

not only not thought of by the patentee but were contrary

to the instruction of his patent. With respect to the other

disclaimer the same situation appeared, because the origi-

nal claim was directed entirely to a trailer—not a tractor—

and contained no reference to a tractor but the disclaimer

introduced the tractor—a different machine—making a new

claim out of the original—a claim for the combination of

a trailer and tractor.

There is a general statement in the opinion of the Circuit

Court of Appeals in the Trailer case which if read without

regard to the facts in that case, may perhaps give the

appearance of conflict with the decision in the case at bar.

But every opinion must be read with regard to the facts

of the case and the question actually decided. Cohens v.

Virginia, 6 Wheat. 264, 399; Weaver v. Palmer Bros., 270

U. S. 402, 414; Tyson @ Bros. v. Banton, 273 U. S. 418,

432; Sterling v. Constantin, 287 U. S. 378, 400; Home Bldg.

¢ L. Assoc. v. Blaisdell, 290 U. S. 398, 434.

When the opinion in the Trailer case is thus read no con-

flict appears. Upon the facts of that case invalidity of the

disclaimer was perfectly apparent under the rule in Hailes

v. Albany Stove Co., 123 U. S. 582. General statements

in an opinion going beyond the facts in the case do not

raise conflicts of decisions because decision in each case

is necessarily confined by the facts presented and cannot

be broadened by generalities thrown out in the opinion.

22

THERE IS NO UNCERTAINTY IN THE RULE OF LAW TO BE

APPLIED UNDER R. S. 4887 IN DETERMINING WHETHER

THERE HAS BEEN A FORFEITURE OF A PATENT,

AND THE RULE OF IDENTITY OF CLAIMS WAS COR-

RECTLY APPLIED IN THE COURTS BELOW.

The decisions of this Court in Leeds ¢ Catlin Co. v.

Victor Talking Machine Co., 213 U. S. 301, and Fireball

Gas Tank @ Ill. Co. v. Commercial Acetylene Co., 239 U. S.

156, establish the rule that forfeiture under R. S., 4887,

depends upon the identity of invention claimed in the two

patents; that claims are independent inventions; that a

process claim is a distinct invention from an apparatus

claim, and that although certain elements may be common

to the claims of both patents this does not establish their

identity. Applying these rules as established by the appli-

cable decisions of this Court the trial court found that there

were several features in the claims at issue not disclosed

in the German patent; that the German patent was inopera-

tive; that there was no substantial identity of invention

claimed in the foreign patent to that claimed in the claims

at issue, and that accordingly there was no forfeiture under

the statute (Vol. II, pp. 1033; 1075; 1088). See also the Cir-

cuit Court of Appeals’ findings (Vol. II, pp. 1168-1172). Of

course the German patent in this case was not pricr art,

since the two patents were co-pending (Vol. I, p. 1089). In

view of the decisions in the Victor Talking Machine case,

supra, and the Fire Ball Gas Tank case, supra, the earlier

decision in Siemens v. Sellers, 123 U. S. 276, cannot be read

in qualification of the rules so clearly laid down in the

later decisions of this Court which expressly limit the deci-

sion in Stemens v. Sellers to the facts that were under

consideration in that case which disclosed identity of in-

vention. Furthermore the question of identity is largely

one of fact. Victor Talking Machine case, supra (at pp.

322-323).

PRT IRC OS Lp EEE HO

23

CONCLUSION.

The decision below is correct. It is in accord with the

applicable decisions of this Court and is not in conflict with

the decision of any other Circuit Court of Appeals. The

questions presented involve the application of well settled

rules of law to facts peculiar to this case, are not of

general importance and are not worthy of review in this

Court.

Respectfully submitted,

Tsomas D. THACHER,

Huca M. Morris,

S. Mortimer Warp, Jr.,

Counsel for Respondents.

September, 1934.

24

APPENDIX.

CLAIMS RELIED ON, AS GRANTED, WITH

DISCLAIMER APPLIED.

(Under {fa of the disclaimer [Vol. ITI, p. 227], the speci-

fication and claims are directed only to combinations and

methods as embodied respectively in apparatus wherein

and methods whereby sound is translated by light to or

from a film strip moving uniformly past said light.)

Claim 5.

In phonographic apparatus in which the sound

record is formed on an elongated ribbon of incon-

siderable mass, having feeding perforations there-

in, the combination of means for supporting and

progressing the record ribbon from one point to

another point and past an intermediate point at

which the record is made on the ribbon in record-

ing or from which the record is taken from the

ribbon in reproducing, including a toothed cylinder

over a portion of which the ribbon passes adjacent

to said intermediate point, the teeth of said cyl-

inder engaging the perforations of the ribbon, a

fly-wheel associated with said cylinder, and means

for rotating said cylinder, under control of said

fly-wheel at uniform speed. ,

Claim 7.

_

~

In phonographic apparatus in which the sound

record is formed on an elongated carrier of incon-

siderable mass, the combination of means for sup-

porting and progressing the elongated carrier from

one point to another point, and past an intermedi-

ate point at which the record is made on the car-

rier in recording or from which the record is taken

from the carrier in reproducing, including a cyl-

inder over a portion of the periphery of which the

Ne ee ee re

25

carrier passes adjacent to said intermediate point,

a fly-wheel, a shaft on which said cylinder and fly-

wheel are both secured, a driving member coaxial

with said shaft, a resilient connection between said

driving member and fly-wheel, and stop means for

limiting the amount of yielding of said resilient

connection.

Claim 9.

The method of translating sound or similar vib-

rations to or from a film record by the use of light

varied in accordance with the sound, which com-

prises flexing the film arcuately longitudinally at

the point of translation and rapidly and uniformly

moving the film in a circumferential direction past

said point.

—wherein the uniformity of movement of the film past the

translation point is effected by subjecting the portion of the

film passing said point to the control of the inertia of a

rotating weighty mass (see disclaimer {[b).

Claim 13.

An apparatus for reproducing speech, music or

the like sounds from vibrations recorded on a film,

by the use of a line of light varied in accordance

with the sound, comprising a photoelectric cell,

means for imparting to the film a rapid and uni-

form motion longitudinally of the film past said

cell, a source of light projection for providing said

light, and an objective lens in the path of said

light and spaced from the film for directing said

light as a converging narrow line impinging on

the film at a point in the region of the focal point

of said lens, said light passing through the film

and on to said cell, the space between said lens

and the film being free of obstructions to said

light.

26

—wherein a flywheel is operatively connected with the film

through means which imparts uniformity of motion of the

flywheel to the film (see disclaimer fc).

Claim 17.

In phonographic apparatus in which the sound

record is formed on an elongated carrier of in-

considerable mass, the combination of means for

supporting and progressing the elongated carrier

from one point to another point, and past an inter-

mediate point at which the record is made on

the carrier in recording or from which the rec-

ord is taken from the carrier in reproducing,

including a cylinder over a portion of the peri-

phery of which the carrier passes adjacent to

said intermediate point, a fly wheel operatively

associated with said cylinder, said carrier pro-

gressing means operating to advance the carrier

past said intermediate point at uniform speed

under the control of said fly wheel.

—wherein a sprocket engaging the carrier forms a part

of the carrier progressing means and a substantial portion

of the periphery of the cylinder is in contact with the

carrier in its travel from the intermediate point to said

sprocket (see disclaimer fd).

Claim 18.

SORES ESE ET

The method of translating sound or similar

vibrations to or from a film record by the use of

light varied in accordance with the sound com-

prising rapidly advancing the film past the point

of translation, and subjecting the motion of the

film in passing said point, to the control of inertia

means to effectively eliminate irregularities in the

movement of the film.

27

—wherein the inertia control is effected by passing the film

over a rotating member and so applying inertia thereto

as to eliminate substantially all irregularities in its rota-

tion (see disclaimer fle).

Claim 19.

The method according to claim 18, and in which

the film is yieldingly pressed into contact with a

supporting area immediately adjacent the point of

translation, such pressure cooperating with the

inertia control in the elimination of irregularities

in the film motion.

—wherein the inertia control is effected by passing the film

over a rotating member and so applying inertia thereto

as to eliminate substantially all irregularities in its rota-

tion (see disclaimer fe).