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AMERICAN TRI-ERGON CORP. v. PARAMOUNT PUBLIX CORP.

August 14, 1933

AMERICAN TRI-ERGON CORPORATION
v.
PARAMOUNT PUBLIX CORPORATION



The opinion of the court was delivered by: CAMPBELL

CAMPBELL, District Judge.

Plaintiff brings this suit against the defendant for relief by injunction and damages for the alleged infringement by the defendant, at its studio in Long Island City, of patent No. 1,825,598, issued to Vogt, Massolle, and Engl, by mesne assignments to the plaintiff, for process of producing combined sound and picture films, granted September 29, 1931, on application filed March 29, 1922, corresponding to German application No. V. 16431VI/57a2, filed April 14, 1921. This has been held by the Patent Office to be the effective date under the International Convention.

No evidence was offered showing any commercial activity of the plaintiff, or of any one operating under license from it.

 The defendant is a well-known motion picture producer.

 This suit is being defended by Electrical Research Products, Inc., the wholly owned subsidiary of the Western Electric Company, formed to take over the commercial distribution of the Western Electric talking motion picture sound recording and reproducing systems which were developed by the research laboratories of the Western Electric and American Telephone & Telegraph Companies.

 The defendant is licensed by the Research Products, Inc., to record for talking pictures by means of the Western Electric system, and has from the beginning used that system and apparatus.

 The defendant has by answer interposed the defenses of invalidity and noninfringement.

 This suit is based on claims 5 to 9, both inclusive, and claim 11 of the patent in suit, but claims 6 and 7 are to be read with the disclaimer, filed November 23, 1932.

 Said claims and disclaimer read as follows:

 "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.

 "6. 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, so that the picture and sound negatives may be separately developed 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.

 "7. 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, so that the picture and sound negatives may be separately developed in a manner appropriate for each, and printing the sound and picture negatives respectively upon the same face of the same sensitized film at different longitudinally extending portions thereof, to form the sound sequence at one side of and along the picture sequence.

 "8. The method of producing a talking moving picture record on a single film which comprises photographing simultaneously upon separate films the picture and the sound to form separate negatives, photographing said negative picture record upon a portion of a sensitized film not exposed to a sound record, and photographing the negative sound record on the same face of said last film and at a portion thereof not exposed to the picture record.

 "9. The method of producing a talking moving picture record on a single film which comprises photographing simultaneously upon separate films the picture and the sound to form separate negatives, photographing said negative picture record upon a portion of a sensitized film not exposed to a sound record, and photographing the negative sound record on the same face of said last film and at a portion thereof not exposed to the picture record, said last two photographing steps being performed consecutively."

 "11. 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 records of said two lengths of film in a manner appropriate for each, and printing such developed sound and picture records respectively upon different longitudinally extending portions of a single sensitized film, to form the sound sequence at one side of and along the picture sequence."

 "Disclaimer.

 "To the Hon. Commissioner of Patents:

 "Your petitioner, American Tri-Ergon Corporation, a corporation organized and existing under the laws of the State of New York and having a place of business in the City, County and State of New York, represents that in the matter of certain improvements in Process for Producing Combined Sound and Picture Films, for which Letters Patent of the United States No. 1,825,598 were granted on September 29, 1931 to said American Tri-Ergon Corporation, as assignee by mesne assignments of the inventors, Hans Vogt, Joseph Massolle and Josef Engl, said corporation is the owner of the entire right, title and interest under an assignment dated June 6, 1930 and recorded in the Transfers of Patents of the United States Patent Office, July 3, 1930, Liber T 144, pages 192 to 199, and other assignments referred to in said assignment, and that your petitioner has reason to believe that through inadvertence and without any fraudulent or deceptive intention, the specification and claim of said Letters Patent are too broad, including that of which said inventors were not the first inventors. Your petitioner therefore hereby enters this disclaimer to that part of the claim which it does not choose to claim or hold by virtue of the patent or said assignments, to wit:

 "(a) The process as set forth in claim 6, except wherein the picture and sound negatives are separate films at the time of development.

 "(b) The process as set forth in claim 7, except wherein the sequence of pictures is photographed upon a film separate from that upon which the sequence of sounds is photographed, and the picture and sound negatives are separately developed, in a manner appropriate for each, and are consecutively printed upon the same sensitized film."

 More than nine years elapsed between the date of the filing of the application in question in the United States Patent Office and the date of the granting of the patent in suit, and the claims in suit were introduced by amendment dated July 15, 1931.

 During that long period of time the defendant and the Western Electric, its parent company, engaged extensively in the commercial distribution of said Western Electric talking motion picture sound recording and reproducing systems.

 At the time of the application in the United States Patent Office for the patent in suit in 1922, it was common and necessary practice in the motion picture industry to compensate, so far as was possible, for over and under exposure of different scenes or takes of motion pictures by under and over development, respectively, of the picture negatives.

 This was accomplished by what was known as the rack and tank development, in which each scene was would on a rack and then submerged in a tank containing the developer, the development being watched by the operator, who from time to time lifted the rack and film from the tank, and, exercising his individual judgment, determined the extent to which the development of the particular scene should be carried.

 This, of course, resulted in merely a compromise, inasmuch as no amount of manipulation would make it right, if the exposure was not correct in the first place, but would merely change the degree in which it was not correct.

 In recording sound photographically, the negative sound record, it was realized, would be uniformally, if not correctly or normally, exposed (a uniform source of light being used), and therefore should receive a uniform development throughout.

 To continue the practice of compensating in the developing of the pictures for under and over exposure of the pictures, the patentees wished to develop their picture records separately from their sound records.

 This the patentees described in their specifications as originally filed in the United States, in 1922, as follows:

 "In the production of speaking films it is of great advantage especially from the point of view of use, to arrange the sound sequence and the picture sequence upon one and the same material carrier (film).

 "In this procedure, however, there frequently occur in consequence of the changing lighting conditions in the cinematographing process, changes in the degree of light and the bromide of silver layer, and this causes the picture sequence to be either overlighted or underlighted.

 "As the same film, however, bears close to the picture sequence the continuously normally lighted sound sequence, these differences cannot be removed in the case of combined negatives, by developing, weakening, strengthening, and so forth. They can only be removed by subjecting the underlighted or the overlighted negative places to separate corresponding treatment.

 "Technically, this treatment is practically impossible so long as the two sequences are photographed upon the same film."

 Further such original specification says: "According to the present invention the difficulty is overcome by either employing entirely separate films for the production of the negatives, or films which are connected during the photographing, but which are separated from one another before the developing."

 The difficulty which the patentees were seeking to overcome was under and over exposure of the different picture scenes, which they proposed to do by developing the negative picture records separately from the negative sound record.

 The alleged invention cannot be considered as broadly, for having the picture and sound records on different films, so that they are separately developed, as that was old and there would be no invention.

 The paragraph of the specifications last quoted proposes two ways of obtaining the separate negatives: (1) To record sound and picture films on separate films in the first instance; (2) to separate the two records after recording them on the same film. This is shown on the drawings added by amendment.

 Fig. 1 shows sound and picture records recorded on separate films of standard width.Fig. 3 shows two negative records recorded on a wide nonstandard film, having three rows of sprocket perforations, and which are severed at either p or u before development. Fig. 2 shows a wide nonstandard positive print produced by printing the separate or separated negative records preferably consecutively on the same film.

 The specification states that the two negatives of Fig. 1 or the separated negatives of Fig. 3 may be united or pasted together prior to the printing and then copied "in the usual manner."

 In the separate film process of Fig. 1, there are three or four steps depending on whether the two records are or are not pasted together before printing; namely: (1) Exposing: (2) developing; and (3) printing; and, if the two records are pasted together before printing, that constitutes the fourth step.

 In the divided film process of Fig. 3, which is claimed in claim 2, there are four or five steps, depending on whether the divided or separated negatives are or are not pasted together or reunited before printing; but this process needs no further consideration as it is not in suit.

 The claims in suit may be divided into two groups; namely: (1) Claims 8 and 9, which are two-step claims for exposing and printing; (2) claims 5, 6, 7, and 11, which are three-step claims, the additional step being the developing, claims 6 an d 7 being read with the disclaimer.

 The specification further states:

 "The synchronism is assured in both cases by the perforations and by corresponding marks. The production of the positive films can take place by copying the two negative films preferably consecutively upon the same positive films.

 "One can, however, also unite, previously, the two negative films longitudinally together, and then copy this so united negative in the usual manner."

 Nowhere in their said original specification or claims did the patentees state or even suggest that it was at all material that the two negatives be printed on the same side or face of the positive film.

 Plaintiff's expert says that he finds it by inference which he gets from the specification, and prior practice on this point.

 I cannot agree with him.

 The most that the patentees in the specification say is that it is desirable to "arrange" the two records "upon one and the same material carrier (film)"; that the production of the positive films can take place by copying the two negative films preferably consecutively upon the same positive films; and, in original claim 1, that the two records are "copied upon single film."

 The idea of recording sound on film, of recording pictures on film, or both sound and pictures on the same film, of recording sound and pictures on separate films so as to be able to develop them separately and then project them together, or of printing sound and pictures from separate negatives upon a single film, were separately and collectively old prior to the conception date of either party, neither of which goes back of 1921.

 See Greensfelder patent, No. 1,254,684, which disclosed everything but simultaneously recording; De Forest patent, No. 1,446,246.

 It is true that Greensfelder recorded his sound record after he took his pictures, instead of doing it at the same time.

 There was, however, no novelty in simultaneous recording, as this was old. For example, see Bullis patent, No. 1,335,651, and Craig patent, No. 1,260,337.

 The plaintiff urges that defendant cannot with good grace contest patentability, in view of the application of Wente, a research engineer of the Western Electric Company, to which he assigned such application; but this contention was not sustained. Wente did make broad claims as is customary, but those broad claims were canceled on the first amendment, and as I believe on Greensfelder rather than on the Vogt British patent. In any event, claims similar to some of the Wente claims so canceled were made by Craig, in 1913, and canceled as unpatentable at that time.

 The claims of the patent granted to Wente are limited, and I do not see how his application prejudices the defense in this action.

 The plaintiff's expert stated on cross-examination that what he thought was new in the patent in suit, and not found in the prior art, was printing both the separately exposed, separately developed, negatives side by side, on the same side of the positive film.

 On redirect examination he stated that in addition to what he had previously stated was new over the prior art was the process of simultaneously recording the sound and picture record, and in printing them side by side on different longitudinally extended portions of the same ...


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