Petition for Writ of Certiorari — Photochart v. Photo Patrol, Inc.

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TRANSCRIPT OF RECOR

IN FOUR VOLUMES

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AUG 30 135)

CHARLES ELMORE

IN aK

Supreme Court of the United States

October Term, 1951

PHOTOCHART, a Corporation, and LORENZO

DEL RICCIO,

Petitioners,

Vs.

PHOTO PATROL, INC., a Corporation; PA-

CIFIC TURF CLUB, INC., a Corporation;

AMERICAN TELETIMER CORPORATION

and ROBERT OSWALD,

Respondents.

Volume IV

(Pages 519 to 532)

—_—_—_—

PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

F

AY U oe J

Phillips & Van Orden Co., 870 Brannan Street, San Francisco, Calif.

No. 12640

Gnited States

Court of Appeals

For the Ninth Circuit

PHOTOCHART, a Corporation, and LORENZO

DEL RICCIO,

Appellants,

Vs.

PHOTO PATROL, INC., a Corporation; PA-

CIFIC TURF CLUB, INC., a Corporation;

AMERICAN TELETIMER CORPORATION

and ROBERT A. OSWALD,

Appellees,

and

PHOTO PATROL, INC., a Corporation; AMER-

ICAN TELETIMER CORPORATION and

ROBERT A. OSWALD,

Appellants,

Vs.

PHOTOCHART, a Corporation, and LORENZO

DEL RICCIO,

Appellees.

Volume IV

(Pages 519 to 532)

Appeals from the United States District Court,

Northern District of California,

Southern Division.

Proceedings Had in the United States Court of Appeals

for the Ninth Circuit

Phillips & Van Orden Co., 870 Brannan Street, San Francisco, Calif.

Ee

Photo Patrol, etc., et al.

United States Court of Appeals -

for the Ninth Circuit

Excerpt from Proceedings of Thursday, May 3,

1951.

Before: Stephens, Bone and Pope,

Circuit Judges.

[Title of Cause.]

ORDER OF SUBMISSION

Ordered appeal herein argued by Mr. Collins

Mason, counsel for appellants, and by Mr. Julian

Caplan, counsel for appellees, and submitted to the

court for consideration and decision.

United States Court of Appeals

for the Ninth Circuit

Excerpt from Proceedings of Monday, June 11,

1951.

Before: Stephens, Bone and Pope,

Circuit Judges.

[Title of Cause.]

ORDER DIRECTING FILING OF OPINION

AND FILING AND RECORDING OF

JUDGMENT

Ordered that the typewritten opinion this day

rendered by this court in above cause be forthwith

filed by the clerk, and that a judgment be filed and

recorded in the minutes of this court in accordance

with the opinion rendered.

520 Photochart, etc., et al., vs.

United States Court of Appeals

for the Ninth Cireuit

No. 12,640

PHOTOCHART, a Corporation, and LORENZO

DEL RICCIO,

Appellants,

vs.

PHOTO PATROL, INC., a Corporation; PA-

CIFIC TURF CLUB, INC., a Corporation ;

AMERICAN TELETIMER CORPORATION

and ROBERT A. OSWALD,

Appellees,

and

PHOTO PATROL, INC., a Corporation; AMER-

ICAN TELETIMER CORPORATION and

ROBERT A. OSWALD,

Appellants,

VS.

PHOTOCHART, a Corporation, and LORENZO

DEL RICCIO,

Appellees.

June 11, 1951

Appeals from the United States District Court,

Northern District of California, Southern

Division

Before: Stephens, Bone and Pope,

Cireuit Judges.

Bone, Circuit Judge.

OPINION

Plaintiffs (appellants) Lorenzo del Riccio and

Photochart Corporation, brought this action charg-

ing patent infringement and unfair competition.

Photo Patrol, etc., ct al. 521

The patent in suit (Reissue Patent No. 22,881) is

a method of photographically recording the finish

of horse races. The idea embodied in the patent

was conceived by del Riccio and was referred to

throughout the trial as the del Riccio method. A

full understanding of the issues on this appeal

necessitates a brief outline of the facts.

Del Riccio first employed the method in suit in

July, 1937. At that time del Riccio had in his

employ one Harry Belock, a photography engineer,

whese duties were designing, constructing and

operating photo-finish cameras. Belock terminated

his employment with del Riccio in January or

February of 1938 and in October of that year

applied for a patent on a method of photographing

the finish of horse races by the use of ‘‘slit photog-

raphy.”’ Patent No. 2,257,100 was issued to Belock

as a result of this application, which patent he

assigned to American Teletimer Corporation, one

of the defendants in this action.!

Del Riccio did not apply for a patent on his

method until March 20, 1939—a period of approxi-

mately six months after the Beloeck application.

Del Riccio received a patent on June 1, 1943. The

patent in suit is a reissue of that original patent.

Photochart Corporation is the licensee of del Riccio,

and is engaged in the business of photographing the

finish of horse races.

'No appeal was taken from that part of the judg-

ment which holds that American Teletimer has not

infringed appellants’ patent. It may also be noted

that Belock was not made a party to this litigation.

522 Photochart, etc., et al., vs.

In 1941 Robert Oswald, a defendant-appellee, was

employed by Photochart as a photo-finish camera

operator. He later became a licensee of Photochart

and operated on his own at various racing events,

particularly county fairs, using a camera he had

constructed and with which he practiced the del

Riccio method. About 1947 Oswald began to oper-

ate under a license from American Teletimer, oper-

ating at county fairs and still using the camera he

had constructed. Sometime around this period he

became associated with defendant-appellee, Photo

Patrol, a competitor of Photochart. At the time

this litigation was commenced Oswald was operat-

ing a camera for Photo Patrol at a race track

known as Golden Gate Fields,? under a licensing

agreement with American Teletimer Corporation.

Oswald was using the camera he had constructed

and also one furnished by American Teletimer.

The patent in suit is designated as a method of

photographically recording the order of passage of

moving objects. It involves the use of a device, old

in the art, known as the “slit camera.’ This

camera, in place of a shutter, has a narrow slit in

the film masking plate, which plate is located be-

tween the film and the camera lens. When the

camera is in operation the film is continuously

moving and continuously exposed through the nar-

2The operators of this track, The Pacific Turf Club,

were named as defendants in this action, but were

dismissed from the suit by stipulation of the parties.

3The slit camera was patented in 1901, Pasquarelli

Patent No. 683,573.

Photo Patrol, etc., et al. 523°

row slit. The principal use of the slit camera is to

take panoramic scenes by moving the camera in a

sweeping motion simultaneously with the movement

of the film. If the camera is held in a fixed position

only those objects in motion’ will be recorded on the

film. This feature of the slit camera is utilized by

the del Riccio method.

In practicing the del Riccio method the camera

is placed in an elevated position on the outside of

the race track. As the horses approach the finish

line the film in the camera is moving in the diree-

tion of the image of the horses (which is opposite

to the direction the horses are moving). The speed

of the film is adjusted to the speed of the image of

the horses. In a counter-clockwise race the finish

line of the track and the optical axis of the camera

lens* are aligned with the right hand edge of the

narrow slit. The effect of this alignment is that the

film does not commence to record a picture of a

horse until the horse’s nose reaches the finish line.

In other words the entire area of the track up to

the finish line is eliminated from the zone of pho-

tography. By this system the horse whose nose first

commences to be recorded on the film is determined

to be the winner.

It is the claim of appellants that the normal use

of the slit camera would be to align the center of

the slit with the optical axis of the lens and the

finish line; that because the zone of photography

4The optical axis of the lens refers to an imaginary

line that goes through the heart of the lens where

there is no refraction or bending of light.

524 Photochart, etc., et al., vs.

enlarges in a cone shape away from the lens of the

camera the field of vision is a fan-shaped area of

the track which is bisected by the finish line. Under

these conditions, it is said, it is impossible to get

an accurate picture of the winning horse because

of the problem of angular vision. For example, a

horse on the far side of the track (in reference to

the location of the camera) would come into the

field vision and might appear to be the winning

horse even though a horse on the side of the track

adjacent to the camera actually crossed the finish

line first. The del Riccio method, which masks out

the entire area of the track up to the finish line

by the alignment mentioned, has climinated this

problem of angular vision and is claimed to have

achieved a degree of accuracy never obtained before.

Appellees admit that they align one edge of the

slit with the finish line of the track, but contended

that their method disregards the optical axis of

the lens. Oswald testified that an accurate photo-

graph of the finish can be taken without bringing

the optical axis into the alignment.

Appellants in their complaint and supplemental

complaint charged infringement of the claims of six

patents owned or controlled by them and further

charged infringement of the Belock patent. Several

of the patents were dropped from the suit prior to

the trial and others were withdrawn sometime prior

to judgment. The amended judgment of the district

court recites that all claims except claims 1, 2, 7 and

8 of Reissue Patent No. 22,881 were withdrawn

prior to judgment. The charge of unfair competi-

Photo Patrol, etc., et al. 525

tion was based on the claim that Belock and Oswald

had aequired trade secrets of the appellants while

employed by the latter in a confidential relationship

and had appropriated these trade secrets to their

own use without the consent of appellants. This

charge of unfair competition is not ureed as a

separate issue on this appeal but only to show

aggravated infringement.

The district court made findings of fact and con-

clusions of law and entered judgment for the de-

fendants. The substance of the court’s findings is

that Reissue Patent No. 22,881 is invalid for want

of invention and that the subject matter thereof

was old in the art more than one year before the

del Riccio patent application was filed. It further

found that it was within the reasonable and ex-

pected skill of anyone working in the art.

On the issue of infringement the court found that

appellees had not aligned the optical axis with the

edge of the slit and the finish line and therefore

had not infringed. The court found that no trade

secrets were involved and that the defendants had

not engaged in unfair competition. By an order the

court denied the defendants’ request for attorneys’

fees and the defendants appeal from that order.

In the posture the case reaches us we are con-

cerned only with claims 1, 2, 7 and 8 of Reissue

Patent No. 22,881, and with the appeal by the de-

fendants from the order of the district court deny-

ing attorneys’ fees.

It is not contended that the patent in suit con-

tains any new or different clement not existing in

NE eee ers Ses Mater!

eee

ek aE cei s Nebles Saga oe a |

526 Photochart, etc., et al., vs.

the prior art. If its validity is to be upheld it must

be on the theory that the del Riccio method is a

combination of old elements which constitute inven-

tion. There is no exact standard by which a court

may determine when a combination of old elements

constitutes invention and when it is within the

mechanical skill of one working in the art. The

most recent opinion of the Supreme Court on com-

bination patents expresses the view that, “‘courts

should scrutinize combination patent claims with a

‘are proportioned to the difficulty and improbability

of finding invention in an assembly of old elements.”’

Great Atlantic & Pacifie Tea Co. v. Supermarket

Equipment Corp., 340 U.S. 147. The test to be ap-

plied to such patents is that the combination must

perform some new or different function—one that

has unusual or surprising consequences.5 It is our

view that the patent in suit fails to meet this severe

test and does not constitute invention. The most

that can be said for the patent in suit is that it

rearranges the elements of the slit camera in such

a manner that in the performance of their respec-

tive functions a higher degree of accuracy is ob-

tained. But perfection of workmanship, however

useful or convenient, does not constitute invention.

Cuno Corp. y. Automatic Devices Corp., 314 U.S.

84: Dow Chemical Co. yv. Halliburton Oil Well

Yementing Co., 324 U.S. 320; Hollywood-Maxwell

5Great Atlantic & Pacific Tea Co. v. Supermarket

Equipment Corp., 340 U.S. 147; Cuno Engineering

Corp. v. Automatic Devices Corp., 314 U.S. 84;

Toledo Co. v. Standard Parts, 307 U.S. 350.

Photo Patrol, etc., et al. 527

Co. v. Street’s of Tulsa, 10-Cir., 183 F. 2d 261;

Shaffer v. Armer, 10-Cir., 184 F. 2d 303. Each ele-

ment of the slit camera utilized in the del Riccio

method is performing the same function it has

always been known to perform. Del Riccio has

changed the position of one of these elements (the

narrow slit) which results in a restricted field of

Vision coincident on one side with the finish line.

This result, however useful, has added nothing to

the total stock of knowledge. In our view this varia-

tion of an old device is within the reasonable skill

of one working in the art.

Appellants contend that in all the years the slit

camera has been in existence many improvements

have been made on it, but no one discovered the

method in suit exeept del Riccio. This, it is said,

indicates that more than skill was involved. How-

ever, there is no showing in the evidence that there

was any long felt want for this improvement nor

any widespread effort to solve the problem of angu-

lar vision which the del Riccio method eliminated.‘

Toledo Co. vy. Standard Parts, supra. Commercial

success is relevant only in a doubtful case and will

sometimes tip the scales in favor of inventicn. Jun-

gersen v. Osthy & Barton Co., et al., 335 U.S. 560.

The essence of the del Riccio method is alignment

of one edge of the slit and the optical axis of the lens

with the finish line to mask out the entire area of

the track up to the finish line. The Australian Pat-

ent to Cowdry, No. 104,941 (1938), discloses a shield

located in front of the lens of a motion picture cam-

era the purpose of which is to cut off from the cam-

era’s “‘vision”’ the entire area of the track up to the

finish line.

528 Photochart, etc., et al., vs.

In a ease, such as this, where invention is plainly

lacking, commercial success is immaterial.

Having determined that the patent lacks inven-

tion it is unnecessary for us to determine the ques-

tions of infringement and unfair competition.’

We come now to the appeal by the defendants

from the order denying attorneys’ fees. The basis

of this claim is that the plaintiffs unduly compli-

cated the issues by reckless charges of patent in-

fringement, by failure to take any steps prior to

trial to reduce the number of issues, and by evading

any effort of the defendants to reduce the issues.

Because of these circumstances, it is claimed that

the defendants were obliged to expend more time

and expense in preparing a defense than was neces-

sary and that the trial court erred in denying attor-

neys’ fees. 35 U.S.C.A., Section 70, provides in part:

«“* * * The court may in its discretion award

reasonable attorneys’ fees to the prevailing

party upon the entry of judgment on any

patent case.”’

While there is some evidence to support the de-

fendants’ contentions the facts of the case are not

so clear cut that we are able to say that the trial

judge abused his discretion in denying an award

of attorneys’ fees. Many of the cases relied on by

defendants are cases affirming an award made by

the district court. Dubil, et al., v. Rayford Camp

7As noted before the latter question is not asserted

here as a separate issue but only to show aggravated

infringement.

Photo Patrol, etc., et al. 529

& Co., et al., 9-Cir., 184 F 2d 899, relied on by

defendants, recognizes the rule that an appellate

court should not interfere with the discretionary

power of the trial court except where there is an

abuse of discretion amounting to caprice or an

erroneous conception of law on the part of the trial

court. Defendants have misread the decision of this

court in Buck v. Bilke, 63 F. 2d 477. The decision

did not change the judgment with respect to attor-

neys’ fees but modified it only by adding damages

which were ‘‘mandatory’’ under the statute.

The judgment of the district court is affirmed.

[Endorsed]: Opinion. Filed June 11, 1951. Paul

P. O’Brien, Clerk.

530 Photochart, etc., et al., vs.

United States Court of Appeals

for the Ninth Circuit

No. 12,640

PHOTOCHART, a Corporation, and LORENZO

DEL RICCIO,

VS.

PHOTO PATROL, INC.; PACIFIC TURF

CLUB, INC.; AMERICAN TELETIMER

CORP., and ROBERT A. OSWALD.

PHOTO PATROL, INC.; AMERICAN TELE-

TIMER CORP., and ROBERT A. OSWALD,

vs.

PHOTOCHART and LORENZO DEL RICCIO.

JUDGMENT

Appeals from the United States District Court

for the Northern District of California, Southern

J)ivision.

This Cause came on to be heard on the Transcript

of the Record from the United States District Court

for the Northern District of California, Southern

Division, and was duly submitted.

_ On Consideration Whereof, It is now here ordered

and adjudged by this Court, that the judgment of

the said District Court in this Cause be, and hereby

is affirmed.

Filed and entered June 11, 1951.

Photo Patrol, etc., et al.

United States Court of Appeals

for the Ninth Circuit

Excerpt from Proceedings of Friday, J uly 20,

1951.

Before: Stephens, Bone and Pope,

Circuit Judges.

[Title of Cause.]

ORDER DENYING PETITION FOR

REHEARING

Upon consideration of the petition of appellants

Photochart and Lorenzo Del Riccio, filed July 9,

1951, and within time allowed therefor by rule of

court, for a rehearing of above cause, and by direec-

tion of the court,

It Is Ordered that said petition be, and hereby

is denied.

532 Photochart, etc., et al., vs.

United States Court of Appeals

for the Ninth Circuit

CERTIFICATE OF CLERK, U. 8. COURT OF

APPEALS FOR THE NINTH CIRCUIT,

TO RECORD CERTIFIED UNDER RULE

38 OF THE REVISED RULES OF THE

SUPREME COURT OF THE UNITED

STATES

I, Paul P. O’Brien, as Clerk of the United States

Court of Appeals for the Ninth Circuit, do hereby

certify the foregoing Transcript of Record in four

volumes, containing 531 pages, numbered from and

including 1 to and including 531, to be a full, true

and correct copy of the entire record, excluding

certain original exhibits, of the above-entitled case

in the said Court of Appeals, made pursuant to

request of counsel for the appellants, Photochart

and Del Riccio, and certified under Rule _ 35 of the

Revised Rules of the Supreme Court of the United

States, as the originals thereof remain on file and

appear of record in my office.

Attest my hand and the seal of the said the United

States Court of Appeals for the Ninth Circuit, at

the City of San Francisco, in the State of Califor-

nia, this 7% day of August, 1951.

[Seal] PAUL P. O'BRIEN,

Clerk.

FR RON "35 1951.

No. £90

SETTLE

PuHotocHart, a Corporation, and LorENzo DEL Riccio,

Petitioners,

vs.

Pxoto Patrot, INnc., a Corporation, Pactric Turr Cxus,

Inc., a Corporation, AMERICAN TELETIMER CORPORA-

TION, and Ropert A. Oswa xp,

Respondents.

Petition for a Writ of Certiorari to the United States

Court of Appeals for the Ninth Circuit, and Sup-

porting Brief.

Cottins Mason,

811 West Seventh Street,

Los Angeles 17, California,

Attorney for Photochart, a Corporation, and

Lorenzo del Riccio, Petitioner.

Don Marin,

510 West Sixth Street,

Los Angeles 14, California,

Wittiam H. Levit,

210 West Seventh Street,

Los Angeles 14, California,

Attorneys for Petitioner Lorenzo del Riccio.

Parker & Company, Law Printers, Los Angeles. Phone MA. 6-9171.

“i

SUBJECT INDEX.

PAGE

Petition for writ of certiorari to the United States Court of

Appeals for the Ninth Circuit... 1

Statement .................... 2

PIII - walihivcasilichicshntahdestebae inci esentiace oe

SPINE PINNED 5csisisinsconcontaadoreentbaedcassnd taaebtasmnletelamae aes 3

Reasons for allowance of writ...-......:..:...-.ccscccscsoecescoscessnesesseseeccee 3

Brief in support of petition for writ of certiorari...................... 5

I,

A NPI SIU ridiculed tsi eecnoiiexciesnes csc ntabbamusaneceaca 5

II.

Jurisdiction ........ ie leipeninetaeee 5

III.

Statement of case 5

IV.

Specification of errors............. 6

V.

PN sarctstatscsntcbctisesstssnccnsncsonsnlneniahesteiicg ssccelbiiniagiadedadmadaticacse 6

1. The patent in suit 6

2. The prior art fon 7

3. The del Riccio method................ 12

4. Error of the court below................. - 14

Conclusion 17

TABLE OF AUTHORITIES CITED.

CASES PAGE

Carnegie Steel Co. v. Cambria Iron Co., 185 U. S. 403...0........ 14

Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.

S. 84 14

Goodyear Tire & Rubber Co. v. Rayovac, 321 U. S. 275............ 16

Great Atlantic & Pacific Tea Co. v. Supermarket Equipment

Corp., 340 U. S. 147 2, 3, 4, 6, 14, 15

Keystone Mfg. Co. v. Adams, 151 U. S. 142 3, 15

Toledo Co. v. Sandard Parts, 307 U. S. 350 14

STATUTES

United States Code Annotated, Title 28, Sec. 1254000000000... a 6S

IN THE

Supreme Court of the United States

October Term, 1951.

I: Kartlnssonse

PuHotocuart, a Corporation, and LorENzo DEL Riccio,

Petitioners,

US.

PuHoto PAtroL, INc., a Corporation, PactFic TurF Crus,

Inc., a Corporation, AMERICAN TELETIMER CorRPORA-

TION, and Rogert A. Oswa_p,

Respondents.

Petition for Writ of Certiorari to the United States

Court of Appeals for the Ninth Circuit.

To the Honorable, the Chief Justice of the United States

and the Associate Justices of the Supreme Court of

the United States:

Your petitioners, Photochart, a corporation, and Lorenzo

del Riccio, plaintiffs-appellants below, respectfully pray

that a writ of certiorari issue to the United States Court

of Appeals for the Ninth Circuit to review a judgment

of that Court [R. 530], entered June 11, 1951, opinion

appearing at R. 520, affirming a judgment of the United

States District Court for the Northern District of Califor-

nia, Southern Division [R. 87], in favor of the respon-

dents, who were defendants-appellees below. The action

was dismissed as to Pacific Turf Club, Inc., a corporation,

before trial.

~~

Statement.

The proceeding in the District Court was petitioners’

complaint [R. 2], for infringement of claims 1, 2, 7 and

8 of United States Reissue Letters Patent No. 22,881 [R.

393], for a new method of photographically recording the

order in which a number of objects, moving side by side,

pass a fixed point, such as horses crossing the finish line

of a race track or athletes crossing the finish line in a

track meet. The patent issued to petitioner del Riccio

and the method will be referred to as the “del Riccio

method.”

The judgment of the District Court held the patent

claims invalid for lack of invention, and the judgment

was affirmed by the United States Court of Appeals for

the Ninth Circuit.

The combination of physical elements used by del

Riccio in carrying out his method, is old, being those ele-

ments comprising the “slit” camera, invented in 1901.*

What del Riccio invented was a new mode of operating

that old combination of elements, which so changed its

operative effect as to produce a new and entirely unex-

pected result overcoming the old problem of ‘angular

viewing.” That problem had, for 37 years, prevented the

“slit” camera from being used to photograph a plurality

of objects moving side by side past a fixed point.

In passing upon the patent in suit, the Court below

treated the del Riccio method merely as a “combination of

old elements,” and used, as its controlling precedent, this

Court’s recent opinion in Great Atlantic & Pacific Tea

Co. v. Supermarket Equipment Corp., 340 U. S. 147, in-

volving entirely nonanalogous facts, instead of relying

*Pasquarelli patent 683,673 [R. 545].

—

upon those truly analogous decisions of this Court involv-

ing patents for new modes of operating old combinations

of elements which so changed their operative effect as to

produce new and unexpected results, as typified by this

Court’s decision in Keystone Mfg. Co. v. Adams, 151 U.

S. 142. Petitioners respectfully urge that this was error.

Jurisdiction.

Jurisdiction of this Court is based upon Section 1254

of Title 28, U. S.C. A.

Questions Presented.

1. Is not the decision of the Court below contrary to

the decisions of this Court in cases involving like facts

and principles?

2. Did this Court intend the language of its opinion

in Great Atlantic & Pacific Tea Co. v. Supermarket Equip-

ment Corp., 340 U. S. 147, to announce a new test of

invention overruling former decisions of this Court sus-

taining patents for new modes of operating old combina-

tions producing new and unexpected results ?

Reasons for Allowance of Writ.

Apart from what petitioners contend to be the injustice

resulting from the judgment below, a serious question of

public importance is presented.

When construed in the light of the facts of the case,

this Court’s opinion in Great Atlantic & Pacific Tea Co.

v. Supermarket Equipment Corp., supra, is believed merely

to constitute a more forceful statement of the settled rule

that a combination of old elements, to be patentable, must

produce a combined result amounting to something more

than normally would be expected by one aware of the

SSIES Ie RNR Bn AA ORIN Re CNN ee

mailliee

customary functions of the elements. However, the Court

below has misconstrued it, and other Courts are apt to

misconstrue it, as announcing a new and more severe test

of invention—a test which would render unpatentable any

improvement invention as distinguished from an invention

of an entirely new art.

All machines, no matter how meritorious, are combina-

tions of old elements, and unless the lower Courts cor-

rectly interpret and apply this Court’s opinion in Great

Atlantic & Pacific Tea Co. v. Supermarket Equipment

Corp., supra, there is real danger that the result will be

such a continuous discouragement of inventive effort as to

threaten our industrial supremacy. This would be particu-

larly disastrous since our chief enemy country is striving

to overcome our technological superiority by paying sub-

stantial cash awards to its inventors in an effort to stimu-

late inventive effort.

Improvement inventions are as essential to our indus-

trial advancement as are inventions of new arts, and any

misinterpretation of this Court’s opinion which would have

the unfortunate effect of discouraging the improvement

of our machines and arts should be corrected. By correct-

ing the error of the judgment below, this Court will

clarify the intent of its opinion in Great Atlantic & Pacific

Tea Co. v. Supermarket Equipment Corp.

Wherefore, your petitioners pray that the writ sought

by this petition be granted.

Respectfully submitted,

Cottins Mason,

Attorney for Petitioner Photochart, a Corporation.

Don Martin,

Wituiam H. Levit,

Attorneys for Petitioner Lorenzo del Riccio.

aes LARRY NORE ARR Riad SS PORE, CANE

IN THE

Supreme Court of the United States

October Term, 1951.

eee

Puotocuart, a Corporation, and Lorenzo pet Riccio

Petitioners,

’

US.

Puoto Patrot, INnc., a Corporation, Pacrric TuRF Cup,

Inc., a Corporation, AMERICAN TELETIMER CoRPORA-

TION, and Ropert A. Oswa _p,

Respondents.

Brief in Support of Petition for Writ of Certiorari.

I.

The Opinion Below.

The United States Court of Appeals for the Ninth Cir-

cuit entered Judgment on June 11, 1951 [R. 530]. Peti-

tion for rehearing was denied July 20, 1951 [R. 531].

The opinion appears at R. 520.

tL

Jurisdiction.

Jurisdiction is conferred by Section 1254 of Title 28,

wu. S.C. A.

ITI.

Statement of Case.

The petition sets forth a statement beginning at page 2.

a

IV.

Specification of Errors.

1. The decision of the Court below is contrary to the

decisions of this Court in cases involving like facts and

principles.

2. In reaching its decision, the Court below has errone-

ously attributed to the opinion of this Court in Great At-

lantic & Pacific Tea Co. v. Supermarket Equipment Corp.,

340 U. S. 147, a meaning not believed to have been

intended by this Court, and, therefore, a question of public

importance is raised.

V.

ARGUMENT.

1. The Patent in Suit.

The patent in suit is for a new method of photographic-

ally recording the order in which a number of objects,

moving side by side or in parallel lines, pass a fixed point,

such as contestants in a race passing a finish line. The

principal uses for the method are in photographing race

finishes, such as horse races and track events. A typical

claim of the patent reads as follows:

“2. The method of making a photographic record

of contestants crossing a finish line of a race upon a

course, which comprises the steps of positioning a

photographic camera to one side of and above said

course with the optical axis of its objective in align-

ment with said finish line, continuously projecting

through said objective the images of said contestants

upon a light sensitive surface in said camera and at

the same time moving said sensitive surface in the

same direction and at substantially the sa:ne speed

iilihins

as said images and maintaining a masking element in

front of said sensitve surface having an exposure

aperture in the form of a narrow slit extending trans-

versely of the direction of movement of said sensitive

surface, and aligning one side edge of said exposure

aperture with the optical axis of said objective and

with said finish line so that the area of exposure of

said sensitive surface is continuously confined to a

narrow strip extending transversely of the direction

of movement of said sensitive surface which is in

optical correspondence with the said finish line and

an area of said course adjoining said finish line on

only one side thereof.”

The photographic equipment used in practicing the del

Riccio method is old. The patented method teaches a new

mode of operating the old equipment, which changed its

operative effect to produce a new and unexpected result,—

a result which, according to the teachings of the prior art,*

should have been a failure.

2. The Prior Art.

To better understand the del Riccio method, it is best

first to discuss the methods and equipment used for the

purpose prior to the del Riccio invention, which was made

in 1937,

The method in universal use at the time del Riccio com-

pleted his invention, was to use a conventional motion pic-

ture camera, which photographed the finish wire and the

contestants as they passed under the wire.

*Johnson patent 776,403 [R. 466]: Pasquarelli patent 683,673

[R. 545]; Odell patent 1,266,616 [R. 458]: Debrie patent 146,878

[R. 452, 431]; Debrie patent 336,367 [R. 423] ; Landwerlin patent

569,475.

oe

However, that method allowed considerable margin of

error [R. 134]. Motion picture cameras make a series

of still pictures on intermittently moving film, the film

being advanced between shots while a shutter closes the

camera aperture. Consequently, it is quite possible that

the shutter may be closed at the moment a given contest-

ant crosses the finish line; and a racing horse, for instance,

can travel about a foot and a half while the camera shutter

is closed between shots. Moreover, the finish wire

stretched across a race track is seldom straight. Being

about 100 feet long, the wind blowing up or down the

track causes the wire to bow either towards or away

from the direction of travel of the horses, thus resulting

in the end horses being at an advantage or disadvantage

over the intermediate horses, depending upon the direc-

tion of the wind.

It is not surprising, therefore, that, prior to the del

Riccio method, disputes often arose as to the accuracy of

photographs of close race finishes [R. 123]. A small

margin of error in a close race may result in the wrong

contestant being declared the winner.

In solving the problem, del Riccio used an old type

of camera, the “slit”? camera, whose principal use had been

in making panoramic pictures.

A “slit” camera is one in which a continuously moving

film is continuously exposed through a narrow slit formed

in a film masking plate located between the film and the

camera lens, no shutter being used. It was invented in

1901.*

In using a slit camera, if a picture of a stationary ob-

ject, such as a landscape, is being made, the camera itself

*Pasquarelli patent 683,673 [R. 545].

i

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must be moved in a sweep simultaneously with movement

of the film. Jf the camera is held stationary while the

film 1s moved, the film will only record objects in motion.

Thus, while moving objects, such as contestants in a race,

would be recorded on the film, the finish wire or marker,

being stationary, would not be recorded. Consequently,

the winning contestant would be photographically recorded

as the one first coming within the track area to which the

film is exposed through the slit. For instance, a picture

of a horse race finish, taken by the del Riccio method,

would appear as shown in the following sketch, in which

it will be observed that there is no picture of the finish

wire,

Pate 1.

While slit cameras had been used to photograph a single

moving object,* prior to the del Riccio method slit cameras

could not be used to accurately photograph the order in

which a number of objects, moving side by side, pass a

fixed point.

This was because of the old problem of “angular view-

ing,” now to be discussed.

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*Petrie patent 336,367 [R. 423]; Landwerlin patent 569,475 [R.

39].

_—

Good photographic practice had always dictated that, in

focusing a camera, everything must be centered and bal-

anced. Thus, those using the slit camera prior to del

Riccio taught that the lens axis and the center of the slit

in the film masking plate must be in alignment with the

object.

Such an arrangement, however, exposes the film to a

conical or fan-shaped area of a race track bisected by the

actual finish line, as shown in the next following sketch:

PLATE 2.

EXPLANATION: (a) is the fan-shaped track area bisected

by finish line (g), to which the film (e) is exposed through

slit (f) in masking plate (d). (c) is camera lens whose optical

axis is aligned with the center of slit (f). (b) is the track

area masked from film by plate (d). Finish wire (g) does

not register on film because it is stationary.

ee

—

It is easy to see that the horses adjacent the rail, or at

the inside of the track, have an advantage over those at the

outside of the track, because those adjacent the rail are

the first to enter the fan-shaped track area to which the

film is exposed through the slit.

For instance, horses crossing the finish line in the order

shown in Plate 1, if photographed in accordance with prior

art teachings, would be incorrectly recorded to show that

the horse finishing third was the winner, while the real

winner would be recorded as being third. This is illus-

trated by superimposing Plate 1 on Plate 2 as shown in

the next following sketch:

PLATE 3.

EXPLANATION: Horse No. 3, which actually finished third,

would be recorded on the film as being first, because it first

entered the fan-shaped track area (a) to which the film (e) is

exposed through slit (f). Horse No. 1, the actual winner,

would be recorded as finishing third,

ee A FRIELING ME a

—

This illustrates the problem of “angular viewing,”

which, until del Riccio discovered his new method of oper-

ating the elements of a slit camera, had been considered to

be an insurmountable obstacle to using slit cameras to

photograph the order in which a plurality of objects, mov-

ing side by side, pass a fixed point.

3. The del Riccio Method.

Del Riccio discovered that he could overcome “angular

viewing” by going contrary to the teachings of the prior

art, and by so lining up the elements of the slit camera

as to bring the optical axis of the lens and one edge (in-

stead of the center) of the slit into alignment with the

finish line, and then by moving the film continuously past

the slit in the direction and at about the speed of the

images of the horses. In counterclockwise racing, the lens

axis and finish line are aligned with the right hand edge

of the slit because the direction of movement of the images

of the horses is reversed by the lens.

The result of this method is that all the track area up

to the finish line is prevented from being exposed to the

film, being masked from the film by that portion of the

film masking plate to the right of the slit. Thus, the film

does not commence to record the image of a horse until

the horse’s nose actually crosses the finish line, as shown

in the next following sketch.

EXPLANATION: Due to the fact that the right hand edge of

slit (f) is aligned with the axis of lens (c) and with the

finish line (g), the left hand border of the track area (a) to

which the film is exposed is directly along the finish line in-

stead of at an angle thereto, thus causing the horses to record

on the film in the true order in which they cross the finish line.

It is thus seen that, by the del Riccio method, the mode

in which the images are either masked from or transmitted

to the film, 1s so changed that it is impossible to obtain an

inaccurate picture of a race finish.

The del Riccio method was promptly adopted by about

70 percent of the race tracks, supplanting all other methods

[R. 280].

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4. Error of the Court Below.

In stating the reasoning underlying its holding of the

patent claims invalid for lack of invention, the Court be-

low stated, in its opinion [R. 520], as follows:

“If its validity is to be upheld it must be on the

theory that the del Riccio method is a combination

of old elements which constitute invention.”

The Court below then proceeded to apply this Court’s

decision in Great Atlantic & Pacific Tea Co. v. Super-

market Equipment Corp., 340 U. S. 147, and other deci-

sions,* relating to combinations of old elements wherein

each of the old elements continued to perform nothing

more than its expected and normal function.

Petitioners respectfully submit, however, that neither

the facts nor the reasoning of the cited decisions afford a

fair and reasonable basis for an evaluation of the del

Riccio method.

Del Riccio has never claimed to have invented a new

combination of elements. He took the same combination

of elements which had constituted the slit camera for 37

years and, by going contrary to the teachings of the prior

art as to what constituted good photographic practice,

produced a new mode of operating the old combination,

which materially changed its operative effect and provided

a new, entirely unexpected and highly beneficial result.

The fact that the combination of elements was old, does

not negative invention in a new mode of operating them.

(Carnegie Steel Co. v. Cambria Iron Co., 185 U. S. 403.)

*Cuno Engineering Corp. v. Automatic Devices Corp., 314 U. S.

84; Toledo Co. v. Standard Parts, 307 U. S. 350.

eee

—15—

In the Great Atlantic & Pacific Tea Co. v. S upermarket

Equipment Corp., case, as well as the other cases relied

upon by the Court below, this Court had before it so-called

inventions involving combinations of old elements where-

in each element continued to perform nothing more than

its normal and expected function in the expected manner.

For that reason, in the Great Atlantic & Pacific Tea Co.

v. Supermarket Equipment Corp., case, this Court adopted

a very apt simple arithmetic problem to illustrate the

logical conclusion that a combination of old elements, to

be patentable, must produce a combined result amounting

to something more than normally would be expected by one

having knowledge of the customary functions of the ele-

ments.

However, in the instant case, the del Riccio method

steps add up to a “sum” which no skilled photographer,

lacking del Riccio’s inventiveness, would expect.

An examination of the prior art shows that del Riccio

was the first to align one edge of the slit in the film mask-

ing plate with the optical axis of the lens and the finish

line; and that del Riccio was the first to use the slit

camera to photograph a number of objects, moving side

by side across a fixed line.

Among the decisions of this Court are many which

afford a directly analogous and helpful basis of approach

in evaluating del Riccio’s discovery. Typical of those

cases is Keystone Mfg. Co. v. Adams, 151 U. S. 142.

In the Keystone case, the patent concerned improvements

ina corn sheller. Prior art corn shellers had all possessed

the fault that the throat through which the ears of corn

descended from the hopper would become choked up by

the ears wedging in the throat. This required that the

= ae

machines be stopped frequently so that the throat could

be cleared. Those working in the art had always con-

sidered it necessary to provide a paddle wheel in the hopper

and rotate it to push the ears of corn through the throat.

The patentee overcame the choking problem by using pre-

cisely the same old combination of elements, but, instead

of rotating the paddle wheel to push the ears through the

throat, he rotated it in the reverse direction to retard

the gravity movement of the ears. He did nothing more.

His improved sheller promptly supplanted the old shellers,

as the del Riccio method has supplanted other methods.

In sustaining the corn sheller patent this Court said:

“The change was a substantial and meritorious one

and one which was well worthy of a patent by reason

of the improvements which it produced in the opera-

tive effect of the corn sheller.”

The analogy is clear. Viewed in retrospect, it appeared

to be a simple thing to reverse the rotation of the wheel*

but the Court took the view that because others had gone

on using the old and unsatisfactory corn shellers for years,

it indicated that the solution was not as obvious as it

appeared after the patentee taught the way. The same

may be said of the del Riccio method. Those working in

the art had had the slit camera before them for thirty-

seven years, but nevertheless they had gone on using make-

shift and unreliable methods without discovering what

the Court below has said is too obvious to merit patent-

ability.

*“Viewed after the event, the means . . . adopted seem

simple and such as should have been obvious to those who

work in the field. but this is not enough to negative invention.”

(Goodyear Tire & Rubber Co. v. Rayovac, 321 U. S. 275.)

ae.

While horse racing is not one of our more critical in-

dustries, nevertheless it has long been sanctioned because

it encourages the breeding of better horses, and the del

Riccio method tends to make it a much cleaner sport since,

by eliminating the possibility of error in determining the

winner, it discourages attempts at corrupt practices.

Conclusion.

Petitioners respectfully submit therefore that this peti-

tion should be granted.

Respectfully submitted,

Cotitins Mason,

Attorney for Petitioner Photochart,

Don Martin,

WituiaM H. Levit,

Attorneys for Petitioner Lorenzo del Riccio.