294 U.S. 477 (1935), 255, Altoona Publix Theatres, Inc. v. American Tri-Ergon Corp.

Docket Nº:No. 255
Citation:294 U.S. 477, 55 S.Ct. 455, 79 L.Ed. 1005
Party Name:Altoona Publix Theatres, Inc. v. American Tri-Ergon Corp.
Case Date:March 04, 1935
Court:United States Supreme Court

Page 477

294 U.S. 477 (1935)

55 S.Ct. 455, 79 L.Ed. 1005

Altoona Publix Theatres, Inc.


American Tri-Ergon Corp.

No. 255

United States Supreme Court

March 4, 1935

Argued February 5, 1935




1. The bringing together of old elements in a mechanism involving no new principle to produce an old result, however skillfully it be done, and even though the result mark an advance in efficiency and utility, is but an exercise of mechanical skill, and not invention. P. 486.

2. It is the claims of a patent that define the invention. P. 487.

3. A deficient claim cannot be aided by reading into it parts of other claims or of the specifications. P. 487.

4. A plain absence of invention is not overcome by evidence of utility and commercial success of the thing patented, even though the evidence indicate that a long-felt want was satisfied. P. 487.

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5. Utility and commercial success are not persuasive evidence of invention where the want satisfied by the device patented was not long-felt or generally recognized at the time of the patent application, but arose later as an incident to a subsequent advance in the art attendant upon the creation of a new public demand and upon the development of numerous devices not covered by the patent. P. 488.

6. Under R.S. § 4917, a patentee is not permitted to add by disclaimer a new element to the combination previously claimed whereby the patent, originally for one combination, is transformed into a new and different patent for the new combination. Such a disclaimer is void. P. 490.

7. A patent amended by disclaimer speaks from the date of the original patent; a reissued patent (R.S. § 4916), with respect to the claim amended, speaks from the date of the reissue. P. 491.

8. The filing of a disclaimer abandons the claims affected, and they cannot be revived upon the ground that the disclaimer was invalid. P. 492.

9. Patent No. 1,713,726, issued May 231, 1929, to Vogt et al., for "a device for phonographs with linear phonogram carriers," held void for want of invention as to Claims numbered 5, 7, 17, 18, and 19, relating to a combination apparatus for securing uniformity of speed in machines used for recording talking motion pictures, in which the gist of the invention claimed consists of the addition of a flywheel to the cylinder over which the film or ribbon passes near the "translation point" at which the sound is recorded upon or reproduced from it; also held void as to Claim 9, originally allowed for the arcuate flexing of the film record, and Claim 13, for a combination for projecting a narrow line of light upon and through the moving film to a photoelectric cell, both of which claims were invalidated by attempts to add the flywheel device by disclaimers. Pp. 480, 488.

72 F.2d 53 reversed.

Certiorari, 293 U.S. 528, to review the affirmance of decrees in favor of the present respondents in two suits brought by them for infringement of their patent. For the district court's opinion, see 5 F.Supp. 32. The cases were tried together, and were brought here on a single record. One of the plaintiffs, American Tri-Ergon Corporation, claimed as owner of the patent. The other, Tri-Ergon Holding, A.G., claimed as licensee.

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STONE, J., lead opinion

MR. JUSTICE STONE delivered the opinion of the Court.

[55 S.Ct. 456] These cases come here on certiorari to review a decree of the Court of Appeals for the Third Circuit, 72 F.2d 53, which affirmed a decree of the District Court, 5 F.Supp. 32, holding valid and infringed the patent of Vogt and others, No. 1,713,726, of May 21, 1929, applied for March 20, 1922, for a "device for phonographs with linear phonogram carriers." The two cases were tried together, and have been brought here on a single record.

Petitioners, the defendants below, are operators of motion picture theaters whose sound reproduction machines are said to infringe certain claims of the patent in suit. The Radio Corporation of America is defending both cases on behalf of its subsidiary, R.C.A. Photophone, Inc., which supplied the petitioners' machines. Respondents, the plaintiffs below, are a patent holding company and a licensee.

Of the nineteen claims of the patent, seven are in issue. Five of them, numbered 5, 7, 17, 18, and 19, relate to a device for securing uniformity of speed in machines used for recording and reproducing talking motion pictures, and are referred to as the "flywheel claims." They may conveniently be considered separately from Claims 9 and 13, which present the flywheel claims in a different aspect. Claim 9, as originally allowed, was for the arcuate flexing of the film record; Claim 13 similarly was for a combination for a means for projecting a narrow line of light upon and through the moving film to a photoelectric cell in

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sound reproduction. A disclaimer, filed by respondent shortly before the trial, purports, in varying terms, to add the flywheel device to each of these claims.

While both courts below have found invention and sustained the patent, the Court of Appeals, as will presently appear in more detail, did not pass on the separate claims in issue, but found invention in a combination of elements not embraced in any single claim. In consequence, the case presents no question of concurrent findings by the courts below that the claims in issue severally involve invention. See Concrete Appliances Co. v. Gomery, 269 U.S. 177, 180.

The Flywheel Claims

"Phonograms," or sound records, for the recordation and reproduction of sound, are of several types. They include discs or cylinders to which and from which sound vibrations are transmitted mechanically by a stylus in the course of recording and reproducing sound. Long strips of waxed paper carrying sound record grooves, similarly made, are used. Other types are long strips of film on which sound is photographically recorded, and long steel wires on which sound variations have been magnetically recorded. The claims relate to an improvement in mechanisms for recording and reproducing sound by the use of linear photographic record carriers. The typical procedure in recording and reproducing sound by the use of photographic film strips is described in Paramount Publix Corp. v. American Tri-Ergon Corp., ante, p. 464, and need not be repeated here.

Both in recording and reproducing sound, by any form of record, uniform speed in the movement of the phonogram is of the highest importance in order to secure evenness and regularity in the reproduced sound. The specifications state:

The recording and the reproduction of sound waves by the use of linear phonogram carriers such as film strips,

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steel wires, and so forth, can only be effected in absolutely satisfactory manner, even after the removal of all other occurring difficulties, when the speed of the record carrier is uniform both for the receiving and the reproduction and when, in both cases, no variations of any kind occur. Especially in the case of musical reproductions is the record extremely sensitive to the slightest variations of speed.

They also point out that linear phonograms such as the photographic film, because of their lightness and their want of the momentum afforded by a revolving cylinder or disc record, are peculiarly susceptible to irregularities of movement caused by the play or friction in the projections and connections of the many parts of the propelling apparatus, and declare that:

According to the present invention, this drawback, which attaches to all hitherto known propulsion mechanisms for linear phonogram records, is obviated by the arrangement that the light sound record has given to it at the controlling point the property of a weighty mass. This is attained by the arrangement that the record carrier (a film strip or the like) is firmly pressed against one or more rollers connecting with a heavy rotating mass, so that the record moves in exact conformity with the rollers and the rotating mass.

[55 S.Ct. 457] The references to a "weighty mass" or "a heavy rotating mass" used to secure uniformity of motion are to the familiar flywheel. The specified "property" of a rotating heavy mass is inertia, the tendency of matter in motion to continue in motion, the force of which is increased by the mass of the moving body. It is the property which gives to the flywheel its peculiar efficacy in securing uniformity of speed in mechanisms with which it is associated.

The first three flywheel claims, 5, 7, and 17, are apparatus claims. The others, 18 and 19, are, in form, method claims, defining the method of securing uniformity in

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movement of the record film by apparatus defined by Claims 5 and 17. Claim 5 reads as follows:

In phonographic apparatus in which the sound record is formed on an elongated ribbon of inconsiderable mass, having feeding perforations therein, the combination of

(a) 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 recording or from which the record is taken from the ribbon in reproducing, including

(1) A toothed cylinder over a portion of which the ribbon passes adjacent to said intermediate point, the teeth of said cylinder engaging the perforations of the ribbon,

(2) A fly wheel associated with said cylinder, and

(3) Means for rotating said cylinder, under control of said fly wheel at uniform speed.

Claim 17 is substantially the same as Claim 5, the principal difference being that it uses the word "cylinder" instead of "toothed cylinder."

Claim 7 adds to the essentials of Claim 5

a resilient connection between said driving member [the shaft] and flywheel, and stop means for limiting the amount of yielding of said resilient connection.

This so-called flexible or elastic flywheel connection, designed...

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