American Tri-Ergon Corp. v. Altoona Publix Theaters

Citation5 F. Supp. 32
Decision Date24 November 1933
Docket NumberNo. 971,972.,971
PartiesAMERICAN TRI-ERGON CORPORATION et al. v. ALTOONA PUBLIX THEATERS, Inc. SAME v. WILMER & VINCENT CORPORATION et al.
CourtU.S. District Court — Western District of Pennsylvania

Kaufman & Mattes, of Scranton, Pa. (Hugh M. Morris, of Wilmington, Del., and S. Mortimer Ward, Jr., and Page S. Haselton, both of New York City, of counsel), for plaintiffs.

O'Malley, Hill, Harris & Harris, of Scranton, Pa. (Charles Neave and Henry R. Ashton, both of New York City, J. Huff, of Flushing, L. I., N. Y., and W. J. Barnes, of New York City, of counsel), for defendants.

JOHNSON, District Judge.

The bill of complaint charges the defendants with infringement of letters patent No. 1,713,726 relating to photographic sound on film recording and reproducing. The plaintiffs in each suit are American Tri-Ergon Corporation, assignee of the patent, and Tri-Ergon Holding A. G., exclusive licensee for certain purposes. The nominal defendant in the first suit is the Altoona Publix Theaters, Inc., which leases and operates the machine about which complaint is made, known as "P.S.-16." The nominal defendants in the second suit are Wilmer & Vincent Corporation, which operates the machine of which complaint is made, known as "P.S.-1," and the Locust Street Real Estate Company, which leases the machine and owns the theater. In each suit the real defendant is R. C. A. Photophone, Inc., a wholly owned subsidiary of Radio Corporation of America, which leases the machines and is defending in the suit.

Hans Vogt, Joseph Massolle, and Josef Engl, three German inventors who had previously secured patents in Germany for a sound picture machine, made application, as joint inventors, in the United States on March 20, 1922, for the patent in suit, and on May 21, 1929, the patent in suit was issued to William Fox, assignee, from whom the plaintiff, American Tri-Ergon Corporation has become assignee of the patent in suit.

In their answer the defendants deny the validity of the patent in suit and also deny infringement. On the pleadings and evidence, two main questions arise for disposition: First, the validity of the patent in suit; and, secondly, its infringement by the defendants.

First, as to the validity of the patent: The patent in suit relates to phonographs or sound heads with linear sound records, but more specifically to apparatus and methods whereby sound is translated by light to or from a photographic film strip. The specification and drawings describe and show apparatus and methods involving a film strip with a photographic sound record wherein the sound is translated by acoustically modulated light. The apparatus is especially useful for sound on film sound pictures. The apparatus is directed to a sound on film sound head in an assembly designed for the production of sound on film sound pictures, since the sound track is arranged on the film alongside of the pictures and the apparatus is so organized that it may be placed above or below the picture projection head and have the film run from one to the other with the protecting loops in the film where it enters and leaves the sound head mechanism. The patent describes several features which co-operate to give high quality sound on film sound reproduction without appreciable sound distortion, in order to attain sound reproduction sufficiently realistic to accompany motion pictures, as follows:

First, means for momentarily giving the short active length of film in the sound head the property of a weighty mass in such manner as to obtain a high degree of uniformity of speed at the translation point; secondly, a focused fine line of light known as an "optical slit" for recording and reproducing; thirdly, bending the film arcuately at the translation point; fourthly, a photoelectric cell for reproducing the sound.

In each of the constructional forms shown in the patent, the film is either wrapped around a substantial portion of the flywheel roller under tension so as to avoid relative slippage one with respect to the other, or is passed over a substantial portion of a flywheel sprocket to insure meshing with a number of the teeth of the sprocket so that in both cases the portion of the film engaging the member secured to the flywheel is definitely harnessed to it to prevent relative movement so that the film moves in exact conformity with the member secured to the flywheel and thus has given to it at the translation point, the property of a weighty mass. The flywheel with its film engaging sprocket or roller is located on a shaft at or adjacent to the translation point and is either isolated by the spring drive from the irregularities of the driving mechanism, or is isolated from the driving mechanism by being driven by the film.

The plaintiffs' patent contains nineteen claims of which seven are in suit, claims 5, 7, 9, 13, 17, 18, and 19. These seven are directed and limited to the apparatus wherein or methods whereby sound is translated by light to or from a film strip; claims 9, 13, 18, and 19 as granted, and claims 5, 7, and 17 by disclaimer. Claims 5, 7, 13, and 17 are apparatus claims, and 9, 18, and 19 are method claims. These claims describe several features all co-operating to eliminate disturbances and distortions of the sound, giving reproductions sufficiently realistic to accompany motion pictures, a result never previously accomplished with sound on film sound pictures. The patent in suit discloses an apparatus and method which successfully establishes a new and important art, sound on film sound pictures.

The evidence shows that the patentees were the first to demonstrate by public exhibition sound on film or sound on film sound pictures in 1922 with one of their machines. Machines built in accordance with the claims of the patent have been demonstrated and used at various times and places down to the trial during which time they were successfully demonstrated in the hearing of the court.

The defendants contend that the patent is invalid for the following reasons:

First, because the patent is anticipated by the prior art, prior patents, inventions, publications, and uses; secondly, because of a grant of at least one earlier foreign patent to the same patentees for the same alleged invention upon application filed in Germany more than twelve months prior to the filing in this country of the application for the patent in suit; thirdly, because the patent contains insufficient disclosures and is indefinite and inoperative; fourthly, because new matter was introduced into the application while pending in the Patent Office, so that the patent as issued is for a different invention from that originally applied for; fifthly, because the application was unlawfully expanded in the patent office to cover the practical art so developed in the meantime and gone into public use; sixthly, because the disclaimer filed within a few days before the trial is invalid, and, seventhly, because the alleged invention was not a joint invention of the three patentees.

First, as to the prior art. The combination and method of the claims at issue are not found in any...

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