248 F. 724 | E.D. Pa. | 1918
This controversy concerns letters patent No. 707,934, issued 1o Woodville Latham. This is at least the third attempt to have the validity of this patent determined. It is -one generally known as the Latham loop patent. The controversy went off in the Independent Case, 200 Fed. 411, 118 C. C. A. 563, on the question of whether the patent concerned cameras or projecting machines, and in the Motion Picture Patents Co. v. Universal Co. Case on a question of license. There is no escape from meeting, in the present case, the question of validity. The fact of infringement is squarely admitted. The only claim in issue is the seventh. It is
The defense of invalidity is based upon the proposition that every element of invention has been eliminated from the plaintiffs device, except that which is claimed to reside in the bringing together of features of construction in a combination involving invention. The problem thus presented to the constructor, as is asserted by the defense, is, however, wholly a problem in mechanics, involving no invention, but making its call solely upon the mechanical skill of the designer. It is further asserted to be the fact that the construction in which invention is claimed to reside was the actual production of the skilled mechanic, who was called by Latham fi> his assistance. What Latham did, it is asserted, was to give to the mechanic the idea of the construction which he wished to have made, and it was constructed for him. Had there been novelty in any of the features to be thus incorporated in the construction, or any novelty in the idea of having the several features in combination, invention would be conceded. When, however, all Latham did was to direct the mechanic to put the described device together, and ihe only call made upon the mechanic was'’to select from .the storehouse of his mechanical art what was required for the purpose and to make of the construction “a good and workmanlike” job, Latham cannot take out a valid patent covering the particular construction so put together, because (1) there is a total absence of invention, and (2) if there was invention in the mode of construction, it was not the invention of Latham.
Denial of the validity of such a patent is further based upon the averment that the claim to patent of this narrow scope was an afterthought not in the mind of the applicant, but originated with a patent solicitor long after the application was made and after the applicant had assigned his rights to the predecessor of the present plaintiff. The basis of this averment is that the application was filed June 1, 1896, and allowance of this narrow claim not made until August 26, 1902. In the meantime, an interference had blocked the allowance of the claims which incorporated the invention which the applicant thought he had made. The proceedings in the Patent Office resulted adversely to the applicant. This emasculated the application and left the device of the applicant devoid of every element of invention. The solicitor of the assignee of the applicant then amended the claims by inserting the one now in issue, and secured the allowance of it, and the issue of a patent limited to the specific construction described.
Thé fact issues thus raised will be later discussed, but on the whole the showing made by this plaintiff might well support a finding that the prima facie right arising out of the patent had not been overcome; This might well be, .or, with the trial judge at least, was, the impression first received. After an analysis of this presentation of the plaintiff’s case, this firs,t impression» wholly disappears, or .is at least dimmed beyond the point of recognition of its presence. This second thought comes with even the most hasty glance over the disclosures of the prior art. Edison is the acknowledged father of the motion picture art. His camera and his means of getting upon the film the pictures to be projected upon the screen are still its basis and its backbone, and no essential advance has been made upon his contribution to the art. He fully and finally met all the conditions of the problem with which he was confronted. c -
The problem which Ratham had before him, and which he supposed he was meeting on virgin ground, presented one condition of difficulty with which Edison was not confronted. This arose out of the increased length of the film. Edison had to do with film rolls from which the film could be directly fed to a position in front of the camera, and kept there for the required interval of time. The inertia and momentum of heavy reels made this ■ impracticable. Latham though he was the first to meet this difficulty by having the supply reel deliver the film, not directly to the feeding mechanism, which carried it to and held it before the window, but delivered it through the medium of an excess of supply which formed a loop, and to have the feeding mechanism get the film from the slack of this loop. In this way all tug upon the supply reel was avoided. A resort to the same method prevented the intake reel from tugging at the film. This and one other feature, of which we next speak, constituted the whole
We are, of course, for the present, ignoring the claim of the patent now in issue. So true is that the mechanics, who constructed the Latham device, who were familiar with the construction of the Edison device, followed the construction of the latter so nearly that the latter, viewed as a camera, and not as a projecting machine, was a reproduction of the Edison camera plus the loop feature. In their general purpose cameras and projecting machines are as much like each other as the two ends' of a blow pipe. In the one the course of travel is from the object to be pictured to the film, and in the other the impression on the film is thrown upon á screen. There is, however, this difference in the conditions under which they operate. The film will take an impression in much less exposure time than the human eye requires, for it to be impressed with a vision of what is upon the screen. This difference in time may be roughly expressed as 500 to 1. At all events, the difference is very great. It thus becoms apparent that several things are required of successfully operating projecting machines in that part of their construction which we are now considering. These loops must be formed; they must be maintained without variance in quantity of slack; there must be no slip due to lost motion in the movement of the film; the movement of each picture on the film must be kept in step with the halt before the window and the action of the shutter, undisturbed by any shrinkage of the film or other causes of lack of synchronism, and the halt before the window when the shutter is open and the movement of the film when the shutter is closed must be so regulated as that the eye of the spectator will have time to do its work, in accomplishment of which purpose the halt period should exceed the traveling period in time.
Edison met all of these needs, which were his needs, by (among other things) providing perforations or round holes spaced along each edge of the film which met corresponding sjmds in his feeding machinery. When the film passed through the projecting machine, a like mechanism would bring and hold the picture in proper position before the window, unaffected by shrinkage in the film, because this would be inappreciable as affecting the space relation between the picture and the perforations, which determined its placement, however apparent the shrinkage might be in the film as a whole.
The new feature of the problem, which was met by introducing the loop, Ratham thought was of his devising. The other feature, which brought a problem in optics, he sought to solve in a way which he believed to be his own, and, had he been the first to apply the principle, this feature would unquestionably have involved invention. Prior to his application, he had not thought of the use of a shutter so constructed as that the period of time, at which the film' was halted for the illumination and display of the picture, would exceed the intervals of time between the halts. The shutter- which he had used gave the lesser period of time to the position of illumination. He reversed this in his application, and it would not he unfair to claim that he appreciated the value of this increase in the period of il
As we understand counsel for plaintiff, it does not shrink from assuming this position, but cohfidently accepts the issue implied in this denial of invention. This takes out of the case the question of es-toppel and of res adjudicata. We do not follow the line of argument which seems to admittedly lead to the conclusion that there is no distinction between the two with respect to the conditions of their application, nor do we accept that conclusion. That a judgment only concludes parties and privies in person or estate is an acceptable proposition, but it apparently has no application to the facts of this case. Nor do we see that either res adjudicata or estoppels are appropriate terms here. The latter is more nearly so than the.former. The plaintiff cannot claim here anything, its claim to which was rejected in the Patent Office, for the .simple reason' that it has no patent upon which to base the claim, and the claims, so far as allowed, must be so read as to make them consistent with the findings upon which other claims were rejected. So far as what are enumerated as facts are facts — -including the fact that the Latham patent was heralded as a loop patent, and then this feature abandoned as the supporting base of the claim of validity; the fact that in the application validity was claimed on the feature of relative duration of film movement and rest, and this eliminated by the proceedings in the Patent Office; the fact that “the characterizing difference” which gave inventive novelty to the combination was at one time ascribed to one feature and at another time to another feature — all prepare the mind (as the taking of inconsistent positions always does) for the ready reception of the. thought that the most recent position taken is the product of an afterthought, and because of this is likely to be as untenable as each of those previously taken.
Neither these facts nor any of them invoke the application of the res -adjudicata doctrine (except to the extent that the applicant is con-eluded by the ruling denying any of his claims to be patentable), nor do any of them suggest estoppel in the sense of any accurate use of that term. Their effect is psychological, rather than legal. They do have, however, an effect none the less real. This brings into consideration the other fact that all projecting machines in use embody the essential combination which plaintiff claims as its exclusive property. This loudly proclaims utility. Indeed, this is properly foúnd as against this defendant from the fact of infringement alone. It may be, and such use usually is, evidence of inventive novelty; but the latter finding is not necessarily required, to be made.
We arc not in accord with the thought advanced by either the plaintiff or defendant with respect to this feature of the case. We do not see that the plaintiff is confronted by the horns of the dilemma upon which the defendant seeks to impale it. It does not follow that claim 7 must either have been in the original application, and to be considered as rejected, or not have been in it, and to be without a supporting oath. We see no objection to the applicant acquiescing in a rejection of his broad claims to novelty, and being allowed a narrow claim to a specific construction, -which was substituted by amendment.
The true ground of objection is that voiced by Judge Hand in the Independent Case. The point he made was that, if neither the original application nor any of its claims referred to a camera, no camera construction would infringe the patent, and, on the other hand, that if the application and its claims were so changed as to refer to the invention of a camera (to which invention no reference had before been made), the claim to the invention of a camera would be a claim to a new invention, requiring a supporting oatli. The change made here in the claims resulted, not in the claim to a new invention, but in the restriction of the claim from a broad one, which could not be allowed, to a narrow one, which was allowed. We do not see that plaintiff is bound to find in his original claims one which is substantially the same as his amended claim, if, as we find, his original application did cover his amended claim, in the sense that it included that claim and more.
We. would have more confiden.ce in the soundness of the conclusion, to which we have arrived, if counsel for defendant had specifically planted the defense upon the ground upon which we are led to place it. It was so planted (inter alia) in the oral argument, and may be found embraced in the argument advanced in the printed brief submitted; but it is not in the latter as strongly emphasized, or at least given the importance, and surely not the controlling effect which we ascribe to it. Besides this, as already stated, there is much in the plaintiff’s case to incline the judgment in its favor. The argument of counsel for plaintiff is very persuasive, even if not convincing, and the testimony of Mr. Marvin is so admirably put in form and clearness as to be very appealing. There is room, also, for the thought that, had the infringing machine in the Independent Case been a projecting kinetoscope, instead of a camera, Judge Hand would not have dismissed the bill, and there is room for a like thought in the Universal Case, if there hád been an absence of the license feature. This, of course, does not necessarily follow; but there is significance in the fact that in each o.f these cases the defense avoided resting the defense wholly upon, and did not secure a ruling of, the invalidity of the patent.
The very illuminating dissenting opinion of Judge Coxe-leaves room for no other thought than that, as the Independent’s defense had been presented, he was convinced of the plaintiff’s right to a decree of validity. Had there been, however, in that case, as here, an entire absence from the plaintiff’s case of those features upon which Judge Coxe placed emphasis, we do not know what would have been his view.
We would hesitate long before we would have sufficient confidence in the soundness of a conclusion,' which differed from any of those indicated, to announce it. No trier of causes can, however, escape ■the duty of frankly avowing the conviction which has settled down upon his mind and pronouncing the judgment to which it leads. He may express his views with the diffidence which tire occasion demands, but he must nevertheless express them, and they must be his. He cannot surrender his convictions in deference to the views of others, unless he had been persuaded out of his convictions, or the views of others are authoritative, or otherwise controlling. If the present case had been presented as the Independent Case appeared to Judge Coxe, we could see no escape from the conclusion reached by him. When, however, we have out of the case every element of invention, except such as is claimed to reside in' a particular mechanical construction, we can see no invention in the-, selection of well-known mechanical means to secure the result desired.
To paraphrase the language of the seventh claim, if we assume to have described the idea of feeding the film, including the loop feature,
Granted that Edison liad an equal right with Ratham to employ the loop, and that, with the loop feature added, the Edison machine is identical with the Ratham machine, how can Ratham be given a patent on his particular construction without making Edison an infringer, if he added loop; and how could he be an infringer, because of the construction features of his machine, when in these respects the Ratham machine was a copy of the Edison? We thus feel driven to the conclusion that the Ratham patent is invalid for want of invention, so far as claim 7 is involved, and that the bill oí complaint should be dismissed, with costs.
Reluctance to reach a conclusion different from that reached by the experts of the Patent Office, after all the consideration which they gave to this application, or to even seem to differ with those who have had this patent under judicial consideration, has led us into this overlong statement of the view entertained and discussion of the point upon which it is ruled.