Altoona Publix Theatres, Inc. v. American Tri-Ergon Corp.,
294 U.S. 477 (1935)

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U.S. Supreme Court

Altoona Publix Theatres, Inc. v. American Tri-Ergon Corp., 294 U.S. 477 (1935)

Altoona Publix Theatres, Inc. v. American Tri-Ergon Corp.

No. 255

Argued February 5, 1935

Decided March 4, 1935

294 U.S. 477


1. The bringing together of old elements in a mechanism involving no new principle to produce an old result, however skillfully it be done, and even though the result mark an advance in efficiency and utility, is but an exercise of mechanical skill, and not invention. P. 294 U. S. 486.

2. It is the claims of a patent that define the invention. P. 294 U. S. 487.

3. A deficient claim cannot be aided by reading into it parts of other claims or of the specifications. P. 294 U. S. 487.

4. A plain absence of invention is not overcome by evidence of utility and commercial success of the thing patented, even though the evidence indicate that a long-felt want was satisfied. P. 294 U. S. 487.

Page 294 U. S. 478

5. Utility and commercial success are not persuasive evidence of invention where the want satisfied by the device patented was not long-felt or generally recognized at the time of the patent application, but arose later as an incident to a subsequent advance in the art attendant upon the creation of a new public demand and upon the development of numerous devices not covered by the patent. P. 294 U. S. 488.

6. Under R.S. § 4917, a patentee is not permitted to add by disclaimer a new element to the combination previously claimed whereby the patent, originally for one combination, is transformed into a new and different patent for the new combination. Such a disclaimer is void. P. 294 U. S. 490.

7. A patent amended by disclaimer speaks from the date of the original patent; a reissued patent (R.S. § 4916), with respect to the claim amended, speaks from the date of the reissue. P. 294 U. S. 491.

8. The filing of a disclaimer abandons the claims affected, and they cannot be revived upon the ground that the disclaimer was invalid. P. 294 U. S. 492.

9. Patent No. 1,713,726, issued May 231, 1929, to Vogt et al., for "a device for phonographs with linear phonogram carriers," held void for want of invention as to Claims numbered 5, 7, 17, 18, and 19, relating to a combination apparatus for securing uniformity of speed in machines used for recording talking motion pictures, in which the gist of the invention claimed consists of the addition of a flywheel to the cylinder over which the film or ribbon passes near the "translation point" at which the sound is recorded upon or reproduced from it; also held void as to Claim 9, originally allowed for the arcuate flexing of the film record, and Claim 13, for a combination for projecting a narrow line of light upon and through the moving film to a photoelectric cell, both of which claims were invalidated by attempts to add the flywheel device by disclaimers. Pp. 480, 488.

72 F.2d 53 reversed.

Certiorari, 293 U.S. 528, to review the affirmance of decrees in favor of the present respondents in two suits brought by them for infringement of their patent. For the district court's opinion, see 5 F.Supp. 32. The cases were tried together, and were brought here on a single record. One of the plaintiffs, American Tri-Ergon Corporation, claimed as owner of the patent. The other, Tri-Ergon Holding, A.G., claimed as licensee.

Page 294 U. S. 479

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