Paramount Publix Corporation v. Americancorporation 8212 1935
| Decision Date | 04 March 1935 |
| Docket Number | TRI-ERGON,No. 254,254 |
| Citation | 55 S.Ct. 449,79 L.Ed. 997,294 U.S. 464 |
| Parties | PARAMOUNT PUBLIX CORPORATION v. AMERICANCORPORATION. Argued Feb. 4—5, 1935 |
| Court | U.S. Supreme Court |
Messrs. William D. Mitchell and Charles Neave, both of New York City, for petitioner.
Messrs. Theodore S. Kenyon, of New York City, and George Wharton Pepper, of Philadelphia, Pa., for respondent.
In this case certiorari was granted, 293 U.S. 528, 548, 629, 55 S.Ct. 139, 79 L.Ed. —-, to review a decree of the Court of Appeals for the Second Circuit, 71 F.(2d) 153, which held valid and infringed the process patent of Vogt and others, No. 1,825,598, of September 29, 1931, 'for producing combined sound and picture films.' It reversed the District Court, which had held the patent invalid for anticipation and want of invention. 4 F.Supp. 462. The several claims involved relate to a method of producing a single photographic film by printing upon it a picture record and a sound record from separately exposed and developed negatives. The positive film thus produced is useful and extensively used in reproducing sound and picture records in the exhibition of 'talking moving pictures.'
The respondent, who was the plaintiff below, is a patent holding company, and acquired the patent by assignment. The petitioner, who was the defendant below, is a producer of motion pictures, and the defense of the present suit has been conducted on its behalf by the Electrical Research Products, Inc., a subsidiary of the Western Electric Company.
In order that the precise nature of the claims may be understood, it will be necessary first to describe briefly the procedure and the mechanisms employed in recording and reproducing talking motion pictures, although neither is embraced in the claims of the patent. Several methods have been devised for recording sound and reproducing it in connection with the exhibition of motion pictures. A familiar one is the disc system, by which the sound vibrations are mechanically recorded upon and reproduced from discs by a stylus, which receives the sound vibrations for recording and transmits them from the disc to a loud-speaker in reproducing the sound.
Another method, important here, is the photographic film system, in which the sound vibrations are recorded upon a photographic record. In the typical procedure, used by the petitioner, the sound waves to be recorded are received by a microphone so devised as to produce variable electric currents whose variations correspond to the variations in the sound waves received. The electric currents thus produced are amplified and transmitted to two metal threads, arranged side by side so as to form a narrow slit about 1/1000 of an inch in width, called a light valve. The current produces vibration of the metal threads with consequent variation of the light passing through the valve exactly corresponding to the sound vibrations to be recorded. In recording sound, a moving sensitized photographic film is exposed to a beam of light passed through the vibrating light valve which is activated by the electric currents varying according to the sound vibrations. The exposed film is then developed, and the 'sound record' thus produced is printed from it upon a positive film, where it appears as a series of short parallel lines of varying light density, corresponding to the sound vibrations, which have controlled in turn the variation in the electric current passing to the light valve and the corresponding variations of light passing through it to the sensitized film.
In reproducing the recorded sound the procedure is reversed. The positive sound film is passed before a light slit, from which the light passes through the sound record film to a photo-electric cell, which is devised to produce a variable electric current corresponding to the light variations caused by the moving record film. The electric current thus produced is amplified and passed to a loud-speaker, where it is translated into sound vibrations.
Successful operation of the talking motion picture involves synchronization of the sound and picture records. The difficulties of synchronization are obvious where the recorded picture and sounds are separately reproduced by independent mechanisms. Success has been achieved, and convenience in use of the two records secured, by uniting them upon a single positive film and passing it at the requisite uniform speed through a single apparatus designed to reproduce both the sound and the picture. A familiar method of securing the two records on a single film is by photographing simultaneously the picture record and the sound record side by side upon the same strip of film and then printing from the developed negative a single positive film. This method was disclosed in the Haines British patent, No. 18,057, of 1906; in the Ries patent, United States No. 1,473,976, of 1923, applied for in 1913; in the French patent to MacCarty, No. 448,757, of 1912; and in the Walker patent, United States No. 1,186,717, of 1916. Another method is by mechanically uniting the two positive records, as by cementing them together, after they have been separately printed from negatives separately exposed and developed. This was disclosed by the Bullis patent, United States No. 1,335,651, of March 30, 1920, applied for in 1915. A third method, which is that claimed by the patent in suit, is by printing the two records on a single positive film from separately exposed and developed negatives.
In petitioner's practice separate photographic films, moving at uniform speed, are separately exposed, so as to record a scene and the accompanying sounds, and are then separately developed. The two records are then printed, side by side, on a single positive film, used for reproducing the picture and the sound. In the typical reproducing apparatus the film passes successively through the picture projector and the mechanism for sound reproduction. Accordingly, synchronization is accomplished by arranging the two records on the positive film in such relative positions that the two records will simultaneously reach the two mechanisms for reproducing them, so that the reproduced sound will accompany the reproduced scene of the picture as it did when they were recorded.
The specifications of the patent state broadly that it is of great advantage to arrange the sound record sequences and the picture record sequences on a single film. They then describe the technical difficulties in developing the negative when the sound and picture records are photographed on a single film. They point out that the picture record is made under changing light conditions, which may result in over or under exposures, which will require correction and a treatment in the development of the negative different from that suitable to the sound sequence, which is recorded under different light conditions. It is said that it is practically impossible to secure the variations in treatment required for developing the two types of record where the two sequences, picture and sound, are photographed upon the same film strip. The specifications then describe the invention as follows:
'According to the present invention the difficulty is overcome by either employing entirely separate films for the simultaneous photographing of the sound and picture negatives, or films which are connected during the photographing, but which are separated from one another before the developing, then separately developing the negatives if and in the manner required to remedy the difficulties, and then printing both sequences—picture and sound—on the different portions of the same positive film.'
Respondent relies on claims 5 to 9, inclusive, and claim 11 of the patent, of which it is agreed claim 5 is typical. It reads as follows:
'A process for producing a combined sound and picture positive film, for talking moving pictures, comprising photographing a sequence of pictures on one length of film, and simultaneously photographing on another length of film a corresponding sequence of sounds accompanying the action, separately developing the two negatives in a manner appropriate for each, and printing the sound and picture negatives respectively upon different longitudinally extending portions of the same sensitized film, to form the sound sequences at one side of and along the picture sequence.'
It will be observed that the claimed method or process is for combining sound and picture records on a single film and comprises three steps: First, the simultaneous photographing of a picture record and a record of the accompanying sound, each on a separate negative; second, the separate development of the two negatives in a manner appropriate to each; and, third, the printing either simultaneously or successively, from the two negatives of the sound record and the picture record side by side on a single positive film.
It is important to indicate the more significant features of the sound reproduction procedure and mechanisms which are not embraced in the claims. The patent does not claim either a method or a device for recording or for reproducing sound, or a method of synchronizing the two records, or the use of a single film in the reproduction of combined sound and picture records, or any method or device for printing the positive record from the two separate negatives.
While the claims speak of a process or method for producing a combined sound and picture positive film, it is obvious that the process described and claimed has no necessary connection with sound reproduction. The positive film bearing the combined sound and picture records is a product of the photographic art. The method claimed for producing it relates exclusively to that art. It is neither a method of sound recording or sound reproduction. It claims only a process every step in which is an application of the art of photography; simultaneous exposure of the negatives,...
To continue reading
Request your trial
-
Altoona Publix Theatres v. Americancorporation Wilmer Vincent Corporation v. Americancorporation
... ... v. AMERICAN TRI-ERGON CORPORATION et al ... Nos. 255, 256 ... Argued Feb. 5, 1935 ... Decided March 4, 1935 ... [Syllabus from pages 477-479 ... in recording and reproducing sound by the use of photographic film strips is described in Paramount Publix Corporation v. American Tri-Ergon Corporation, 294 U.S. 464, 55 S.Ct. 449, 79 L.Ed. 997, ... ...
-
Reeves Brothers, Inc. v. US Laminating Corp.
...specifications. American Tri-Ergon Corp. v. Paramount Publix Corp., 2 Cir. 1934, 71 F.2d 153, reversed on other grounds, 1935, 294 U.S. 464, 55 S.Ct. 449, 79 L.Ed. 997; General Electric Co. v. Alexander, 2 Cir. 1922, 280 F. 852, cert. denied, 260 U.S. 727, 43 S.Ct. 89, 67 L.Ed. 484; Carter ......
-
WF & John Barnes Co. v. International Harvester Co.
...does not pursue the offender to afford a basis for estoppel at some later date (citing: Paramount Publix Corporation v. American Tri-Ergon Corp., 294 U.S. 464, 476, 55 S.Ct. 449, 79 L.Ed. 997); (3) That a party is estopped to shift position in respect of infringement (citing: Allbright-Nell......
-
Carbide & Carbon Chemicals Corporation v. Coe
...skill of the art would normally have been called into action by the generally known want." Paramount Publix Corp. v. American Tri-Ergon Corp., 294 U.S. 464, 474, 55 S.Ct. 449, 79 L.Ed. 997, 1935. See also United Shoe Machinery Corp. v. E. H. Ferree Co., 64 F.2d 101, 103, 2 Cir., 1933, where......