Paramount Publix Corp. v. American Tri-Ergon Corp.
294 U.S. 464 (1935)

Annotate this Case

U.S. Supreme Court

Paramount Publix Corp. v. American Tri-Ergon Corp., 294 U.S. 464 (1935)

Paramount Publix Corp. v. American Tri-Ergon Corp.

No. 254

Argued February 4, 5, 1935

Decided March 4, 1935

294 U.S. 464

Syllabus

1. The application of an old process to a new and closely analogous subject matter, plainly indicated by the prior art as an appropriate subject of the process, is not invention. P. 294 U. S. 473.

2. Evidence of prompt acceptance and great utility in industry of a patented method adds little weight to the claim of invention, as opposed to mere mechanical skill, where the need satisfied was not an old and recognized one, but arose only after the patent was applied for and as the result of a public demand for an advance of the art made possible by mechanisms subsequently developed and not covered by the patent. P. 294 U. S. 474.

3. A defendant sued for patent infringement is not estopped to set up the defense of no invention by reason of having himself applied, unsuccessfully, for a patent covering the same claims. P 294 U. S. 476.

4. Patent No. 1,825,598, issued September 29, 1931, to Vogt et al. (Claims 5-9, inclusive, and Claim 11) for "a process for producing a combined sound and picture positive film, for talking moving pictures," etc., held invalid for anticipation and want of invention.

The process claimed is for combining sound and picture records on a single film and comprises three steps: first, the simultaneous photographing of a picture record and a record of the accompanying sound, each on a separate negative; second, the separate development of the two negatives in a manner appropriate to each, and third, the printing, either simultaneously or successively, from the two negatives of the sound record and the picture record side by side on a single positive film. It does not embrace either a method or a device for recording or for reproducing sound, or a method of synchronizing the two records, or the use of a single film in the reproduction of combined sound and picture records, or any method or device for printing the positive record from the two separate negatives. Every step in it is an application of the art of photography: simultaneous exposure of the negatives, their separate development, and printing

Page 294 U. S. 465

from them a single positive film. It is as applicable to any other form of photographic record as to a photographic sound record -- as effective in the production of the one as the other -- and its importance to the sound picture industry arises only from the fact that the single film, bearing the two records, for which no patent is claimed, is of great utility in that industry.

71 F.2d 153 reversed

Certiorari, 293 U.S. 587, to review a decree sustaining a patent in a suit for infringement. For the decision of the District Court contra, see 4 F.Supp. 462. The patent was applied for March 29, 1922.

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