Altoona Publix Theatres v. Americancorporation Wilmer Vincent Corporation v. Americancorporation

• Decision Date: 04 March 1935
• Docket Number: TRI-ERGON,256,Nos. 255,s. 255
• Parties: ALTOONA PUBLIX THEATRES, Inc., v. AMERICANCORPORATION et al. * WILMER & VINCENT CORPORATION et al. v. AMERICANCORPORATION et al
• Court: U.S. Supreme Court

294 U.S. 477

55 S.Ct. 455

79 L.Ed. 1005

ALTOONA PUBLIX THEATRES, Inc.,

v AMERICAN TRI-ERGON CORPORATION et al.^* WILMER & VINCENT CORPORATION et al. v. AMERICAN TRI-ERGON CORPORATION et al.

Nos. 255, 256.

Argued Feb. 5, 1935.

Decided March 4, 1935.

[Syllabus from pages 477-479 intentionally omitted]

Messrs. Merrell E. Clark, of New York City, Thomas G. Haight, of Jersey City, N.J., and Charles Neave, of New York City, for petitioners.

Mr. Thomas D. Thacher, of New York City, for respondents.

Mr. Justice STONE delivered the opinion of the Court.

These cases come here on certiorari, 293 U.S. 528, 548, 629, 55 S.Ct. 139, 79 L.Ed. —-, 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

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, 46 S.Ct. 42, 70 L.Ed. 222.

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 Corporation v. American Tri-Ergon Corporation, 294 U.S. 464, 55 S.Ct. 449, 79 L.Ed. 997, decided this day, 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,

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 draw-back 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.'

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

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 fly wheel, and stop means for limiting the amount of yielding of said resilient connection.' This so-called flexible or elastic flywheel connection, designed to overcome more gradually the inertia of the flywheel, and thus to secure an improved flywheel operation, was anticipated, among others, by the Constable patent, United States No. 1,425,177, of August 8, 1922, applied for June 24, 1918, as the District Court found. Its inclusion in claim 7 may therefore be disregarded as adding nothing more to the present patent than the flywheel without it.

There is no serious contention, nor could there well be, that the combination apparatus, for moving the linear record past the translation point at which the sound is recorded or reproduced involves invention without the flywheel. Mechanisms for moving linear strips or rib-

bons, by passing the strip over a revolving drum or cylinder, are a familiar type in the arts. They have long been used in the motion picture industry when it was desired to employ the linear strips at an intermediate point for sound and picture reproduction, and the like. Such mechanism, for moving a picture film past the translation point in a motion picture projector, is shown by the Holst patent, United States No. 587,527, of 1897. A like mechanism for recording or reproducing sound, or both, by the use of linear photographic records, is shown in the British Duddel patent, No. 24,546, of 1902, and the Reis patent, United States No. 1,607,480, of 1923, filed May 21, 1913. Still other mechanisms, like two of the figures attached to the specifications of the patent in suit, show the translation point at the film-carrying cylinder. Examples are the patents of Bock, United States No. 364,472, of 1887, Byron, United States No. 1,185,056, of 1916, and Pedersen, British patent No. 115,942, of 1918. The gist of respondent's contention, as is shown by the claims and the parts of the specifications already quoted, is that, by the addition of the flywheel to this familar mechanism, the patentees have succeeded in producing a new type of machine for recording and reproducing sound by the photographic film method. It is insisted that the new device, because of its greater accuracy and precision of film movement, is so useful and constitutes such an advance in the sound motion picture art, as to entitle it to the rank of a patentable invention.

The flywheel set upon a revolving shaft is an ancient mechanical device for securing continuity and uniformity of motion when brought into association with any form of machinery moved by intermittent force or meeting with irregular or intermittent resistence.¹ So universal is its

use for that purpose in every type of machinery that standard treatises on mechanics, long before the application for the present patent, gave the mathematical formulae for ascertaining the appropriate weight and dimensions of a flywheel, moving at a given speed, required to...