Motion Picture Patents Co. v. Independent Moving Pictures Co. of America

• Decision Date: 10 August 1912
• Docket Number: 228.
• Citation: 200 F. 411
• Parties: MOTION PICTURE PATENTS CO. v. INDEPENDENT MOVING PICTURES CO. OF AMERICA.
• Court: U.S. Court of Appeals — Second Circuit

200 F. 411

MOTION PICTURE PATENTS CO. v. INDEPENDENT MOVING PICTURES CO. OF AMERICA.

No. 228.

United States Court of Appeals, Second Circuit.

August 10, 1912

Appeal from the District Court of the United States for the Southern District of New York; Learned Hand, Judge.

'So much for the argument drawn from the formal change in the claims; but the vice goes to the essence. In his second patent, which, as I have said, he made expressly applicable to cameras and projectors, which operated by friction devices only, and the claims of which do not mention the pause feature, Latham had spoken of that device as 'the only one of which I have any knowledge that is capable of giving anything like accurate results' 'for scientific purposes.' That means that the 'positive feed' of the patent in suit gave nothing like accurate results, as well as being apt to tear the films. Page 1, lines 19 to 22. Turning next to the patent in suit, we see the 'invention,' as defined in the specifications originally consisted, and still consists, of the positive feed only as a means to the full rest for purposes of illumination. The purpose of his invention was 'the stoppage of each picture during its exposure (to) permit the requisite quantity of light to pass through the condenser,' etc. It consists of three elements-- means of bringing the film to rest, means of reducing the strain on the film arising from the rapid interruption and renewal which the period of rest requires, and means for uniform winding and unwinding. Here is no suggestion that the accuracy of measurement is a factor, or that the positive feed is important, except as the pause requires rapid interruption and renewal. It is perfectly consistent with the second application, which was for accuracy of registration. Coming next to the original claims, the consistency continues. The first four are clearly directed at securing the necessary pause. Claims 6 and 7 are of the same character and refer to the same period of rest. Claim 5 does not mention the period of rest, but refers to the mechanism by which the intermittent rotation of the drum is secured. It is somewhat ambiguous as to the pause feature, if taken alone but not when taken in connection with the accepted construction of claim 10; for it contains the pause feature as much as the latter. Claims 8 and 9 are for mere details of the mechanism. Claim 10 was that upon which the interference issue was raised, and includes the pause; at least, the applicant could hardly dispute it, after going through all the courts and accepting the issue as a true statement of that claim. The claims after January 17, 1902, do contain the 'positive feed,' some of them alone, and some still as a means of securing the required rest; and it was then the change first occurred.

'Much of the last argument goes beyond the question of whether the claims cover a camera; but I mean to decide nothing else. My point is that if they do include a camera they were brought in by an amendment, which was in part a radical departure from the invention, after six years, and when others had secured rights, with much expense, upon the faith of the application as it was-- in remainder, a mere disregard of all the proceedings theretofore had in the Patent Office. What the effect of this may be upon the claims for any other purpose, I leave to be decided when it may arise.

'The bill will be dismissed for noninfringement, with costs.'

The patent in question, No. 707,934, was granted to Woodville Latham August 26, 1902, for new and useful improvements in projecting kinetoscopes.

The specification says:

'The present invention has reference to apparatus for projecting successively and at frequent intervals on a screen, or other plane surface, an extended series of photographs of moving objects, whereby the movement of the objects may be accurately exhibited.

'The purpose of the invention is to provide an apparatus capable of continuously projecting or exhibiting upon a suitable surface a great number of pictures taken from moving objects and arranged upon a strip of film of great length, whereby each picture in the strip is brought to rest at the moment of projection, so that there is given to the eye an impression of objects in motion in a manner now well understood.

'In an apparatus organized so that the picture-bearing strip is caused to move continuously and uninterruptedly across the optical axis a light of very high intensity is necessary to give satisfactory results; but a light of such power is not required for satisfactory projection by means of an apparatus embodying the principle of the present invention. The stoppage of each picture during its exposure permits the requisite quantity of light to pass through the condenser, the picture, and the objective to the screen or plane surface upon which the image is projected when the light employed is only of a moderately high power.

'The invention therefore consists in an apparatus for projecting successively a large number of pictures of moving objects, embodying, among other things, means for bringing each picture to rest at the moment of projection, means for reducing the strain the picture-film would otherwise suffer from the rapid interruption and renewal of its movement, and means for maintaining uniformity of movement of the film as it unwinds from the delivering reel, and as it winds upon the receiving reel, all as set forth in the claims at the end of this specification.'

The claims involved are the first, third, fifth, and eighth. They relate to the film-feeding mechanism, and are as follows:

'(1) The combination with devices for supporting the bulk of a flexible film before and after exposure, of feeding mechanisms located between the devices for supporting the film and separate and distinct therefrom, one of said feeding mechanisms being constructed to uniformly feed the film and produce a predetermined supply of slack, and the other adapted to intermittently feed the slack across the exposure window.'

'(3) The combination with devices which support the bulk of the film and supply it for exposure and receive it after exposure, of positively driven devices separate and distinct from the film-supporting devices, located between them and at opposite sides of the exposure window, and which respectively engage with and accurately and uniformly feed the film, and which respectively produce and take up slack in it, and an intermittently acting device located between said last-named devices which intermittently moves the slackened part of the film across the exposure-window.'

'(5) The combination with devices which support the bulk of a flexible film and supply it for exposure and receive it after exposure, of positively driven devices separate and distinct from the film-supporting devices and located between them at opposite sides of the exposure-window, and which engage the film and accurately insure its feeding, which last-named devices respectively produce and take up slack in the film, and an intermittently acting device provided with teeth which engage in holes in the film whereby it feeds the film across the exposure-opening.'

'(8) The combination with two reels which support the bulk of a flexible film, one of which supplies it for exposure and the other receives it after exposure, of a positively driven device separate and distinct from the said reels and located between the supply-reel and the exposure-window and which produces a loop of slack film, and an intermittently acting device likewise positively driven which moves the film picture by picture into the optical axis at the exposure-window and causes each picture to remain momentarily at rest in the optical axis.'

The District Court was of the opinion that the claims were limited to the use of the apparatus in projecting machines; and, as the defendant uses its machine as a camera for taking pictures, and not for projecting them on a screen, it does not infringe.

The following is the opinion of the District Court, by Hand, District Judge:

'In spite of the many questions which this case raises, there is only one that I shall consider, because it seems to me quite fatal to this suit, although it does not, directly at any rate, affect the validity of the patent itself. I mean the point that the patent does not cover a camera, which is the only infringing device in evidence. I confess that when this point was raised upon the hearing I was at first blush strongly disposed against it, because it seemed then to be an effort to take advantage of what was at bast a doubtful vagueness in the claims, coupled with the mere title of the invention, which, perhaps, had been thrust upon the patentee by the classification of the Patent Office. However, even with this predisposition against the defense, a more thorough examination of the way the patent came to be granted has satisfied me that to construe it as covering cameras will be to make successful, or at any rate to take one step towards making successful, the evasion of the whole effect of the long and carefully considered litigation in the Patent Office. It is quite true that the point turns only upon the fact that at the outset the patentee claimed one invention only, when he might, perhaps, have claimed two, and there is a color of injustice in holding him only to what he claimed but that injustice is certainly answered by the fact that in the bargain between himself and the sovereign he dedicates to the latter all that he does not claim; and it is a hardship to those who may have acted upon the strength of his disclaimer to lose in turn the fruits of their own industry and invention, because he, who thought it first without value, now finds that he was mistaken. This case...