American Tri-Ergon Corp. v. Paramount Publix Corp.

• Decision Date: 04 June 1934
• Docket Number: No. 439.,439.
• Citation: 71 F.2d 153
• Parties: AMERICAN TRI-ERGON CORPORATION v. PARAMOUNT PUBLIX CORPORATION.
• Court: U.S. Court of Appeals — Second Circuit

71 F.2d 153 (1934)

AMERICAN TRI-ERGON CORPORATION v. PARAMOUNT PUBLIX CORPORATION.

No. 439.

Circuit Court of Appeals, Second Circuit.

June 4, 1934.

Ward, Crosby & Neal, of New York City (Theodore S. Kenyon, S. Mortimer Ward, Jr., and Page S. Haselton, all of New York City, of counsel), for appellant.

Charles Neave, Henry R. Ashton, William J. Barnes, F. T. Woodward, and E. J. Driscoll, all of New York City, for appellee.

Before MANTON, SWAN, and CHASE, Circuit Judges.

MANTON, Circuit Judge.

This suit is for infringement of patent No. 1,825,598, a process for producing combined sound and picture films. It is called "sound on film." The application for the patent was filed March 29, 1922, and granted September 29, 1931, after a long interference proceeding with De Forest patent, No. 1,489,314, which was finally decided by the Court of Customs and Patent Appeals in appellant's favor. De Forest v. Vogt, Massolle & Engl, 49 F.(2d) 1075. Prompt prosecution for this infringement followed.

Appellee is a producer of talking motion pictures, and practices this process of pro ducing sound on film motion pictures as taught by the patent in suit. The Western Electric Company and its wholly owned subsidiary, Electric Research Products, Inc., licensed its licensees, including the appellee, to use the process as the "Western Electric Sound System."

A German application for the same process was filed April 14, 1921.

The problem sought to be solved by the patent was bringing together on one positive film the picture record, which requires one type of development, and a sound record, which requires a different type of development. Its accomplishment marked an important advance in the art. Makers of talking motion pictures, including the Western Electric Company and its associates, during the period following the application for this patent tried, but until the inventor exhibited this process, accomplished little with the development of sound on film. While all apparatus necessary to practice the present invention was at hand and owned by the Western Electric Company and its affiliates, no one solved the film problem presented by the requirement of different treatment for sound and picture records. The difference in treatment was necessary to avoid distortions of one or the other or both in reproduction. The engineers of the Western Electric Company, in this period, struggling for the solution of the problem of sound on film development, turned to sound on disc. The first successful talking motion picture in this country was produced by sound on disc. The process of the patent in suit was brought to this country from Germany. Western Electric Company's engineers examined and tested it. They thereupon used it, and it superseded sound on disc. Its adoption has become universal, and speaks for the merit of the inventive thought therein involved. No sound on film was made, as this record discloses, until the appellant's process appeared. Prior patents proposed using sound on film in connection with motion pictures. One was the single film system which involved recording sound and pictures simultaneously on the same negative film, developing that film as a unit, and then printing the sound and picture records from the single negative film onto a single positive film. This involved no separate development of the sound and picture sequences on a negative film, and was unacceptable for talking pictures of good quality. Pictures require one type of development, while sound requires another. No single developing treatment is appropriate to both. Simultaneous development in a single developer produces poor pictures or poor sound or both. The resulting inferior product has relegated the system to uses where sound is not of importance. The other system, the double film system, records sound and pictures simultaneously on separate films. Here the picture negative is developed and printed on one positive film and the sound negative is separately developed and separately printed on another positive film. This system in practice requires two separate projectors, one for the picture positive and the other for the sound positive. This necessitates the use and synchronization of a double set of projectors, which makes it impractical to commercialize the double film system. Prior patents suggested employing a double film system and endeavored to bind the two separate films on a single projector. But this was cumbersome and impracticable. The double film system did not permit the use of a single or unitary positive print and failed to solve the problem.

By the invention in suit, a product of a single positive film bearing the sound and picture records side by side is produced. The new process permits both the sound record and the picture record on the positive film to be as perfect as the arts of photography and telephony can make them, and neither is compromised in quality by reason of the presence of the other, as was the case in single film systems. The result is accomplished by recording the sound and pictures on separate films; then separately developing the sound and picture films in separate developer solutions under development conditions appropriate to the requirements of each. A single positive print is made from these two separately developed negatives, by printing the sound and picture sequences side by side on the same face of the positive film. While it might be said that superficially the positives so produced are similar to the positives produced by the single film system, still the function and effect is different, and in the practical art that difference has been demonstrated. Combining steps of the double film system and steps of the single film system, the inventors have made a combination, and a process for achieving a new result which has been effective and enduring and has become the standard practice in the industry.

The practical importance and achievement of the invention lies in its product — a one piece positive film having side by side in fixed synchronism on one face picture sequences and sound sequences, each having been recorded simultaneously on separate negatives and developed separately according to its own requirements.

The claims sued upon are 5, 6, 7, 8, 9, and 11. Claims 6 and 7 are to be read with disclaimer filed. Claim 5 is typical, and reads:

"5. 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 sequence at one side of and along the picture sequence."

The commercial use of the patented process is fullsome testimony of its inventive worth. The result of testing it by the inquiry, as it should be, of what has been the commercial success of the invention, rather than the appellant's commercial success, adds greatly to its validity.

In addition to the German patent for the same process, a British application for the same process was filed April 11, 1922. It was identical with the United States and German application. The British application resulted in a patent, as did the German. The Western Electric Company's scientist, Dr. Wente, applied for a patent disclosing and claiming the invention of the patent in suit. The application stated that for correct sound reproduction "it is important that the development of the positive and negative be so carried out that the transmission of the positive is at every point proportional to the exposure of the negative. This is in general not the best condition for the pictures as under these circumstances they will usually be too harsh. In the system here proposed the picture negative and positive can be developed to give the most pleasing results for pictures, and yet the negative of the sound record can be so developed that when it is printed on the picture positive film the required contrast is obtained in the positive sound record."

His claim No. 31 was rejected on the patent of these inventors (British patent No. 178,442) corresponding to the patent in suit and was canceled. And, after that experience, it is now argued, by the Western Electric Company, which is defending this suit, that there is no validity. That company is hardly in a position to question validity of the patent. Du Bois v. Kirk, 158 U. S. 58, 15 S. Ct. 729, 39 L. Ed. 895; General Knit Fabric Co. v. Steber Machine Co., 194 F. 99 (C. C. A. 2); Sugar Apparatus v. Yaryan (C. C.) 43 F. 140, 144.

The patents of the prior art to which reference is made are fairly stated to be but...