These cases come here on certiorari, 293 U.S. 528, 548, 629, 55 S.Ct. 139, 79 L.Ed. --, to review a decree of the Court of Appeals for the Third Circuit, 72 F.(2d) 53, which affirmed a decree of the District Court, 5 F.Supp. 32, holding valid and infringed the patent of Vogt and others, No. 1,713,726, of May 21, 1929, applied for March 20, 1922, for a 'device for phonographs with linear phonogram carriers.' The two cases were tried together and have been brought here on a single record.
Petitioners, the defendants below, are operators of motion picture theaters whose sound reproduction machines are said to infringe certain claims of the patent in suit. The Radio Corporation of America is defending both cases on behalf of its subsidiary, R.C.A. Photophone, Inc., which supplied the petitioners' machines. Respondents, the plaintiffs below, are a patent holding company and a licensee.
Of the nineteen claims of the patent, seven are in issue. Five of them, numbered 5, 7, 17, 18, and 19, relate to a device for securing uniformity of speed in machines used for recording and reproducing talking motion pictures, and are referred to as the 'flywheel claims.' They may conveniently be considered separately from claims 9 and 13, which present the flywheel claims in a different aspect. Claim 9, as originally allowed, was for the arcuate flexing of the film record; claim 13 similarly was for a combination for a means for projecting a narrow line of light upon and through the moving film to a photoelectric cell in sound reproduction. A disclaimer, filed by respondent shortly before the trial, purports, in varying terms, to add the flywheel device to each of these claims.
While both courts below have found invention and sustained the patent, the Court of Appeals, as will presently appear in more detail, did not pass on the separate claims in issue, but found invention in a combination of elements not embraced in any single claim. In consequence, the case presents no question of concurrent findings by the courts below that the claims in issue severally involve invention. See Concrete Appliances Co. v. Gomery, 269 U.S. 177, 180, 46 S.Ct. 42, 70 L.Ed. 222.
The Flywheel Claims.
'Phonograms,' or sound records, for the recordation and reproduction of sound, are of several types. They include discs or cylinders to which, and from which, sound vibrations are transmitted mechanically by a stylus in the course of recording and reproducing sound. Long strips of waxed paper carrying sound record grooves, similarly made, are used. Other types are long strips of film on which sound is photographically recorded, and long steel wires on which sound variations have been magnetically recorded. The claims relate to an improvement in mechanisms for recording and reproducing sound by the use of linear photographic record carriers. The typical procedure in recording and reproducing sound by the use of photographic film strips is described in Paramount Publix Corporation v. American Tri-Ergon Corporation, 294 U.S. 464, 55 S.Ct. 449, 79 L.Ed. 997, decided this day, and need not be repeated here.
Both in recording and reproducing sound, by any form of record, uniform speed in the movement of the phonogram is of the highest importance, in order to secure evenness and regularity in the reproduced sound. The specifications state:
'The recording and the reproduction of sound waves by the use of linear phonogram carriers such as film strips, steel wires, and so forth, can only be effected in absolutely satisfactory manner, even after the removal of all other occurring difficulties, when the speed of the record carrier is uniform both for the receiving and the reproduction, and when in both cases no variations of any kind occur. Especially in the case of musical reproductions is the record extremely sensitive to the slightest variations of speed.'
They also point out that linear phonograms such as the photographic film, because of their lightness and their want of the momentum afforded by a revolving cylinder or disc record, are peculiarly susceptible to irregularities of movement caused by the play or friction in the projections and connections of the many parts of the propelling apparatus, and declare that: