Walt Disney Productions v. FRED A. NILES COMMUNICATION CTR., 64 C 883.

• Decision Date: 16 March 1966
• Docket Number: No. 64 C 883.,64 C 883.
• Citation: 253 F. Supp. 1
• Parties: WALT DISNEY PRODUCTIONS, a corporation, Plaintiff, v. FRED A. NILES COMMUNICATION CENTER, INC., a corporation, Fred A. Niles, Behrend's, Inc., a corporation, and Jack Behrend, Defendants.
• Court: U.S. District Court — Northern District of Illinois

253 F. Supp. 1

WALT DISNEY PRODUCTIONS, a corporation, Plaintiff, v. FRED A. NILES COMMUNICATION CENTER, INC., a corporation, Fred A. Niles, Behrend's, Inc., a corporation, and Jack Behrend, Defendants.

No. 64 C 883.

United States District Court N. D. Illinois, E. D.

March 16, 1966.

Francis A. Utecht, Long Beach, Cal., Francis A. Even, Anderson, Luedeka, Fitch, Even & Tabin, Chicago, Ill., for plaintiff.

Owen J. Ooms, Chicago, Ill., for defendants.

DECKER, District Judge.

This is a suit for infringement of United States Patent No. 3,118,340, entitled "Panoramic Motion Picture Camera Arrangement." The patent was applied for on August 26, 1960, and issued on January 21, 1964, to Ub Iwerks who has assigned all right, title and interest in it to plaintiff.

Plaintiff, Walt Disney Productions, is a corporation organized and existing under the laws of the State of California. Defendant, Fred A. Niles Communication Center, Inc., is a corporation organized and existing under the laws of the State of Illinois. Defendant Behrend's, Inc. is also an Illinois corporation. Individual defendants Fred A. Niles and Jack Behrend are individuals residing in the State of Illinois.

Plaintiff seeks an adjudication that Claim 8 of the patent has been infringed by defendants. Defendants argue: (1) that the patent is invalid because it fails the test of nonobviousness under 35 U.S.C. § 103; (2) that its specification and claims are insufficient under 35 U.S.C. § 112; and (3) that there was no infringment even if the patent is valid. Defendants also counterclaim for unfair competition.

This Court has jurisdiction of this suit based upon the patent laws of the United States, 35 U.S.C. §§ 271 and 281, and 28 U.S.C. § 1338.

A trial was held by the Court, and this opinion is based upon the evidence introduced at that trial and the briefs filed by the parties.

I.

The patent contains eight claims; but they may all fairly be represented by Claim 8, which reads as follows:

"A motion picture camera assembly for photographing a panoramic scene comprising:

"a support;

"a plurality of motion picture cameras mounted on said support, said cameras being spaced equi-distant about a substantially horizontal circle and with their optical axes substantially vertical; and

"a reflecting surface for each of said cameras mounted on said support at substantially a 45° angle to the horizontal and vertical so as to render the optical axes of said cameras effectively horizontal and projecting radially outwardly, the edges of each reflecting surface being immediately adjacent the edges of its neighboring surfaces, the distance along the optical axes from the camera lenses to the associated reflecting surface being substantially equal to the horizontal radial distance from the optical axes to the center of the circle so as to place said camera lenses in substantial optical coincidence at the center of said circle whereby each camera photographs substantially a true sector field with the sides thereof in substantial coincidence to avoid gaps between the individual camera fields."

This patented rig photographs a 360-degree panoramic motion picture through a plurality of cameras, each of which photographs one "sector field" of the panorama. The problem in 360-degree photography to which the patent is addressed is the difficulty in matching adjacent sector fields at their boundaries.

In the prior "back-to-back" 360-degree rigs, cameras are mounted horizontally around a circle, each pointing directly away from the center of the circle. Since each camera lens is displaced from the circle's center by several inches, each photographs its sector field from a slightly different positon than the others, resulting in the problems of parallax. At points near the camera, adjacent sector fields are separated by gaps; at points distant from the camera, adjacent sector fields overlap. Objects lying in a gap appear on the film of no camera and are lost in projection; distant objects lying in an overlap appear on the film in two cameras resulting in double images in projection. Such problems are unavoidable in a "back-to-back" system because it is physically impossible to place several lenses and their associated camera hardware at the single center point.

Plaintiff's rig overcomes these problems by making the effective point-of-view of all cameras lie at the center of the circle. Mirrors fold the optical axis of each camera down into the camera below, and if the distance from mirror to camera is the same as the distance from mirror to the center of the circle, the illusion is produced of photographing from the center point. When the elements of the rig are thus properly spaced, adjacent sector field boundaries coincide: there are no gaps or overlaps. Omissions and double images are eliminated. The question is whether a rig that accomplishes these results in this way is patentable over the prior art.

The patent is presumed valid. 35 U.S.C. § 282. "This presumption is not an idle gesture * * * and is not to be overthrown except by clear and cogent evidence." Copease Mfg. Co. v. American Photocopy Equipment Co., 298 F.2d 772, 777 (7th Cir. 1961). The presumption is strengthened where the validity of the patent is challenged on the basis of prior art cited by the Patent Office. Shumaker v. Gem Mfg. Co., 311 F.2d 273, 275 (7th Cir. 1962). Conversely, the presumption is "greatly weakened" where relevant prior art has not been cited by the Patent Office. Milton Mfg. Co. v. Potter-Weil Corp., 327 F.2d 437, 439 (7th Cir. 1964). However, where the Patent Office cites one patent but not other similar ones, the presumption is weakened only to the extent that the teaching of the uncited patents is not disclosed in the cited patent.

In accordance with these rules, a successful attack on the validity of the patent under 35 U.S.C. § 103 requires defendants to show that

"* * * the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

The requirements of § 103 must be strictly observed. Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966).

Complete anticipation in the prior art need not be shown, nor by the very terms of § 103 need a single prior art patent be cited which contains all of the elements of the patented device. Graham v. John Deere Co., supra at 86 S.Ct. 684; Pleatmaster, Inc. v. Golding Mfg. Co., 240 F.2d 894, 897 (7th Cir. 1957). For patents such as the one in suit, which cover a combination of known elements, § 103 imposes a "rather severe test." Toro Mfg. Co. v. Jacobsen Mfg. Co., 357 F.2d 901 (7th Cir. 1966); Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 151-152, 71 S.Ct. 127, 95 L.Ed. 162 (1950).

The patent is to be tested against the prior art as it stood at the time of the invention, whether or not the inventor was aware of it. "It is * * * irrelevant that no one apparently chose to avail themselves of knowledge stored to the Patent Office and readily available by the simple expedient of conducting a patent search—a prudent and nowadays common preliminary to well organized research." Calmar, Inc. v. Cook Chemical Co., 383 U.S. 1, 36, 86 S.Ct. 684, 703, 15 L.Ed.2d 545 (1966).

A review of the prior art shows clearly that the presumption of validity has been overcome in this case and that the patented arrangement would have been obvious at the time it was designed to one skilled in the relevant art. Defendants' expert witness, Professor Fielding, a person qualified in the history and technique of special effects motion picture photography, described the prior art and showed its strong similarities to elements of plaintiff's rig.

A plurality of motion picture cameras for 360-degree panoramic photography was used in 1900 at the Paris Exposition by a Frenchman, Raoul Grimoin-Sanson. This was the prior "back-to-back" arrangement which has been patented and used commercially by plaintiff at Disneyland. Since that time, several versions of panoramic motion pictures have been shown, most of them presenting a field of substantially smaller scope than an entire 360-degree field.

From the beginning, the problems of parallax which plaintiff's rig overcomes were evident in systems that used a plurality of cameras to photograph a panoramic field. The prior art solves these problems through the use of mirrors. Two patents issued to Phillip Smith show how to accomplish this in a system of three cameras.¹ In one of these patents, inventor Smith identifies one of his problems as the parallax effects produced when physically displaced lenses are used to photograph adjacent sector fields: "There can be duplication or omission in the boundary regions."² He overcame these difficulties by using a center camera to view the sector field directly in front of it, and a camera on each side to view a side sector field through a mirror. The spacing relationship between the side cameras and their associated mirrors was such that the illusion was produced of all three cameras photographing from the same center point. Inventor Smith said he had designed a system in which "a plurality of cameras view a scene to be photographed as from a single point, each camera photographing a different portion of the field."³ Gaps and double images were thereby avoided.

A similar arrangement appears in United States Patent No. 2,931,267, issued to W. C. Hoch on April 5, 1960 (more than four months before plaintiff's inventor applied for his patent), in an early French patent, No. 385,423, issued on March 16, 1908 to the Societe des Phonographes et Cinematographes; and in the "Cinemiracle" and "Cinerama" processes used prior to 1958. An illustration from the French patent, which states that it was designed to overcome the fact that ...