General Talking Pictures Corp. v. American T. Corp., 5714.

• Decision Date: 03 June 1938
• Docket Number: No. 5714.,5714.
• Citation: 96 F.2d 800
• Parties: GENERAL TALKING PICTURES CORPORATION et al. v. AMERICAN TRIERGON CORPORATION et al.
• Court: U.S. Court of Appeals — Third Circuit

96 F.2d 800 (1938)

GENERAL TALKING PICTURES CORPORATION et al. v. AMERICAN TRIERGON CORPORATION et al.

No. 5714.

Circuit Court of Appeals, Third Circuit.

February 18, 1938.

Rehearing Denied June 3, 1938.

S. E. Darby, Jr., of New York City, and E. E. Berl, of Wilmington, Del. (Ephraim Berliner, of New York City, of counsel), for appellants.

Page S. Haselton and S. Mortimer Ward, Jr., both of New York City, for appellees.

Before THOMPSON and BIGGS, Circuit Judges, and DICKINSON, District Judge.

BIGGS, Circuit Judge.

Suit was brought in the District Court pursuant to section 4915 of the Revised Statutes, as amended, 35 U.S.C.A. § 63, to compel the Commissioner of Patents to issue a patent to American Tri-Ergon Corporation, one of the appellees, as assignee of Engl, Massole, and Vogt, the three individual appellees, German inventors.

A brief history of the events leading up to the filing of this suit is necessary for comprehension of the complicated issues involved. Accordingly, we state that upon September 18, 1919, Dr. Lee DeForest, the individual appellant, filed his application, Serial No. 324,683, in the United States Patent Office for letters patent for "Means of Recording and Reproducing Sound." Letters patent of the United States, No. 1,446,246, based upon this application, were issued to DeForest on February 20, 1923. The application referred to showed two possible sources of light energized by high frequency currents which in turn were to be modulated by varying currents set up by and in accordance with sound waves. In conjunction with other apparatus, such sources of light as indicated in the application were to be used for recording sound waves photographically. The two sources of light were referred to in this application as respectively, "a small incandescent filament lamp," and "a small are lamp." In a divisional application, Serial No. 423,276, filed in the Patent Office upon November 11, 1920, divided from this parent application, DeForest showed as his source of light "a small arc lamp" and gave the description of a process whereby the lamp was to operate to the end that sound might be photographically recorded and thereafter reproduced.

The specifications of this application and of the patent subsequently issued thereon, United States patent No. 1,482,119, are set out hereafter. Claim 5 of the patent is as follows: "Means for photographically recording the sound waves, comprising an electrically lighted lamp, means for constantly supplying high frequency oscillating current to said lamp to light the same, means for controlling said lamp by and in accordance with sound waves, and means for directing the light from said lamp to a sensitized element."

Claim 6 is: "Means for photographically recording the sound waves, comprising an electrically lighted lamp, means for constantly supplying high frequency oscillating current to said lamp to light the same, means for controlling said lamp by and in accordance with low frequency currents, and means for directing light rays from said lamp to a sensitized element."

These two claims were added by DeForest by amendment to his divisional application, the amendment being filed in the Patent Office upon April 20, 1922.

On April 4, 1923, four additional claims were added by DeForest by further amendment to his application, and these claims were numbered in the issued patent as 7, 8, 9, and 10. They are as follows:

"7. Means for photographically recording sound waves comprising an enclosed luminous gas discharge device, means for constantly maintaining said device effectively luminous, and means for varying the luminosity of said device by and in accordance with sound waves, and means for directing the light from said device to a sensitized element.

"8. Means for photographically recording sound waves comprising an enclosed luminous gas discharge device, means for constantly maintaining said device effectively luminous, and means for varying the luminosity of said device by telephone currents, and means for directing the light from said device to a sensitized element.

"9. The method of photographically recording sound which comprises varying the luminosity of an effectively constantly luminous enclosed gas discharge device by and in accordance with sound waves.

"10. The method of photographically recording sound which comprises varying the luminosity of an effectively constantly luminous enclosed gas discharge device by and in accordance with telephonic currents."

The claims quoted above, 5 to 10, inclusive, are for the invention here at issue and constitute the counts of the issue.

Upon June 2, 1919, the individual appellees, Engl, Massole, and Vogt, filed a joint German application for a patent for a "Process of Making Photophonograms";¹ upon June 3, 1919, they filed an additional joint German application for a patent for a "Process of Making Photophonograms";² and on April 4, 1921, they filed a joint application, Serial No. 458,631, for the grant of letters patent of the United States, entitled "Means for Recording and Reproducing Sound."³ This title was subsequently changed to "Means and Method for Photographically Recording Sound." Foreign letters patent were duly issued to the individual appellees on their German applications and were published on February 6, 1923.

Upon January 29, 1924, the United States Patent Office issued letters patent No. 1,482,119, to DeForest Phonofilms, Inc., as assignee of DeForest, based upon his divisional application. The appellees Engl, Massole, and Vogt, upon learning of the grant of the patent to DeForest Phonofilms, Inc., proceeded to amend their pending application, copying into that application claims 5 to 10, inclusive, of the issued patent No. 1,492,119. Thereupon an interference was declared in the Patent Office between the issued patent and the pending application of Engl, Massole, and Vogt. The rights of the three individual appellees under their application filed in the United States Patent Office were ultimately assigned, through various steps of assignment which need not be detailed here, to the appellee American Tri-Ergon Corporation. In the interference, application was made by the appellees to shift the burden of proof to DeForest, since the three individual appellees, under the provisions of the Nolan Act, March 3, 1921, c. 126, § 1, 41 Stat. 1313, 35 U.S.C.A. § 80, were entitled to claim June 2 and June 3, 1919, the date of the filing of their corresponding German applications as the dates of the constructive reduction to practice of their invention in the United States. This application was granted and DeForest was made the junior party to the interference. After the evidence of the parties to the interference was taken, upon December 1, 1927, the Acting Examiner of Interferences awarded priority of invention of the subject matter to DeForest. Upon appeal, the Board of Appeals affirmed the decision of the Examiner. The suit to the District Court followed and the learned District Judge, after hearing, and upon proofs which included not only the testimony taken in interference but certain additional testimony as well, held for the appellees, and that the corporate assignee, American Tri-Ergon Corporation, was entitled to receive a patent for the invention as specified in and covered by claims 1 to 6, inclusive, of the application of Engl, Massole, and Vogt, such claims being in fact identical with claims 5 to 10, inclusive, of DeForest patent, No. 1,482,119.

The Issues Presented.

It is conceded by the parties to the litigation that if there be anything patentable in the claims at issue, it must lie in the source of light prescribed which must be capable of being modulated by sound waves imposed upon the electric current, which, in turn, animates the source of light. All additional devices and means to that end, whether disclosed in the application of Engl, Massole, and Vogt or by the DeForest patent, were well known prior to 1919. The difficulty of recording sound upon motion picture film or some other suitable medium in such a manner as to enable it thereafter to be reproduced as sound lay in finding a source of light capable of being delicately modulated by the electric current by which it was animated, and which in turn was subject to variations of sound. The individual appellees in their application specified a glow lamp as this source of light for recording sound for reproduction. In their application in the United States Patent Office they stated: "With this object in view the glow light discharge, * * * which is dependent on the strength of the current in the discharge tube, is used as the source of light. As glow light tubes can be operated by small currents, relatively and absolutely small alterations of resistence suffice, in contradistinction to the hitherto known sources of light, in order to obtain great fluctuations of intensity with a sharper and more rapid control of the intensity of the light. Consequently the most accurate and most delicate photographic recording of the sound vibrations is possible." Their application recognizes in express language the disadvantages of arc discharges for the photographic recording of sound owing to the inertia of the arc. In short, their invention is based upon the glow lamp. Their application discloses an operable system, one which is shown by the testimony to function precisely and perfectly with regard to the end in view.

The specifications of DeForest's light source disclosed by him in his patent are as follows:

"In accordance with my present invention I employ a small arc lamp, preferably consisting of two heavy tungsten ball electrodes, separated by a small gap, for example, 0.5 millimeter, mounted in the small vessel, either evacuated or filled with some gas, such as nitrogen, mercury vapor, etc., to make the light from such arc as rich as possible in ultra violet rays. The light rays from the arc lamp pass through the...