294 U.S. 464 (1935), 254, Paramount Publix Corp. v. American Tri-Ergon Corp.

Docket Nº:No. 254
Citation:294 U.S. 464, 55 S.Ct. 449, 79 L.Ed. 997
Party Name:Paramount Publix Corp. v. American Tri-Ergon Corp.
Case Date:March 04, 1935
Court:United States Supreme Court

Page 464

294 U.S. 464 (1935)

55 S.Ct. 449, 79 L.Ed. 997

Paramount Publix Corp.


American Tri-Ergon Corp.

No. 254

United States Supreme Court

March 4, 1935

Argued February 4, 5, 1935




1. The application of an old process to a new and closely analogous subject matter, plainly indicated by the prior art as an appropriate subject of the process, is not invention. P. 473.

2. Evidence of prompt acceptance and great utility in industry of a patented method adds little weight to the claim of invention, as opposed to mere mechanical skill, where the need satisfied was not an old and recognized one, but arose only after the patent was applied for and as the result of a public demand for an advance of the art made possible by mechanisms subsequently developed and not covered by the patent. P. 474.

3. A defendant sued for patent infringement is not estopped to set up the defense of no invention by reason of having himself applied, unsuccessfully, for a patent covering the same claims. P 476.

4. Patent No. 1,825,598, issued September 29, 1931, to Vogt et al. (Claims 5-9, inclusive, and Claim 11) for "a process for producing a combined sound and picture positive film, for talking moving pictures," etc., held invalid for anticipation and want of invention.

The process claimed 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 does not embrace 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. Every step in it is an application of the art of photography: simultaneous exposure of the negatives, their separate development, and printing

Page 465

from them a single positive film. It is as applicable to any other form of photographic record as to a photographic sound record -- as effective in the production of the one as the other -- and its importance to the sound picture industry arises only from the fact that the single film, bearing the two records, for which no patent is claimed, is of great utility in that industry.

71 F.2d 153 reversed

Certiorari, 293 U.S. 587, to review a decree sustaining a patent in a suit for infringement. For the decision of the District Court contra, see 4 F.Supp. 462. The patent was applied for March 29, 1922.

STONE, J., lead opinion

MR. JUSTICE STONE delivered the opinion of the Court.

In this case, certiorari was granted 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."

Page 466

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

Page 467

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.

[55 S.Ct. 451] In reproducing the recorded sound...

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