U.S. Supreme Court ALTOONA PUBLIX THEATRES v. AMERICAN TRI-ERGON CORP., 294 U.S. 477 (1935)

[Page 294 U.S. 477, 483]

bons, by passing the strip over a revolving drum or cylinder, are a familiar type in the arts. They have long been used in the motion picture industry when it was desired to employ the linear strips at an intermediate point for sound and picture reproduction, and the like. Such mechanism, for moving a picture film past the translation point in a motion picture projector, is shown by the Holst patent, United States No. 587,527, of 1897. A like mechanism for recording or reproducing sound, or both, by the use of linear photographic records, is shown in the British Duddel patent, No. 24,546, of 1902, and the Reis patent, United States No. 1,607,480, of 1923, filed May 21, 1913. Still other mechanisms, like two of the figures attached to the specifications of the patent in suit, show the translation point at the film-carrying cylinder. Examples are the patents of Bock, United States No. 364,472, of 1887, Byron, United States No. 1,185,056, of 1916, and Pedersen, British patent No. 115,942, of 1918. The gist of respondent's contention, as is shown by the claims and the parts of the specifications already quoted, is that, by the addition of the flywheel to this familar mechanism, the patentees have succeeded in producing a new type of machine for recording and reproducing sound by the photographic film method. It is insisted that the new device, because of its greater accuracy and precision of film movement, is so useful and constitutes such an advance in the sound motion picture art, as to entitle it to the rank of a patentable invention.

The flywheel set upon a revolving shaft is an ancient mechanical device for securing continuity and uniformity of motion when brought into association with any form of machinery moved by intermittent force or meeting with irregular or intermittent resistence. [Footnote 1] So universal is its

[Page 294 U.S. 477, 493]

425, 429, 14 S.Ct. 627; I.T.S. Co. v. Essex Co., 272 U.S. 429, 443, 47 S.Ct. 136; Smith v. Magic City Club, 282 U.S. 784, 789, 790 S., 51 S.Ct. 291; Smith v. Snow, supra. Similarly where, in order to secure a reissued patent, a disclaimer is made of a part of the original claims, the part so disclaimed cannot be revived by a second reissued patent, Leggett v. Avery, , nor where the disclaimer is for the purpose of securing an extension of the original patent, Union Metallic Cartridge Co. v. U.S. Cartridge Co., supra, page 644 of 112 U.S., 5 S.Ct. 475. See Collins v. Coes, supra, page 68 of 130 U.S., 9 S.Ct. 514. Compare Gage v. Herring, supra, page 646 of 107 U.S ., 2 S.Ct. 819. The settled rule that unreasonable delay in making a disclaimer invalidates the whole patent, Ensten v. Simon, Ascher & Co., 282 U.S. 445, 452-458, 51 S.Ct. 207; compare O'Reilly v. Morse, 15 How. 62, 121; Seymour v. McCormick, 19 How. 96, 106; Silsby v. Foote, 20 How. 378, 387; Gage v. Herring, supra, page 646 of 107 U.S., 2 S.Ct. 819; Yale Lock Mfg. Co. v. Sargent, 117 U.S. 536, 554, 6 S.Ct. 934; Minerals Separation, Ltd. v. Butte & Superior Mining Co., 250 U.S. 336, 354, 39 S.Ct. 496, rests upon the similar principle that misuse of the patent, or a part of it, by the patentee, in such a manner as to mislead the public or operate to its detriment, deprives the claim of the benefit of the patent laws. The part of the patent disclaimed can stand in no better position because the disclaimer was an unsuccessful misuse of the disclaimer statute.

As claims 9 and 13 must be held invalid because of the improper disclaimers, and as the remaining claims in issue, the flywheel claims, are held invalid for want of invention, it is unnecessary to determine whether the improper disclaimers as to some of the claims render the entire patent void, as petitioners contend, and as has been intimated but not decided. See Hailes v. Albany Stove Co., supra, page 589 of 123 U.S., 8 S.Ct. 262; Marconi Wireless Telegraph Co. v. De Forest Radio Tel. & Tel. Co., 243 F. 560, 565 (C.C.A.2d); Seiberling v. John E. Thropp's Sons Co., 284 F. 746, 756, 759 (C.C.A.3d).

REVERSED.

Mr. Justice BRANDEIS took no part in the consideration or decision of this case. Footnotes

[Footnote *] Rehearing denied 294 U.S. 734, 55 S.Ct. 634, 79 L.Ed. --.[ Altoona Publix Theatres v. American Tri-Ergon Corp. (1935) ]

Footnote 1 The addition of the flywheel to the steam engine, in 1758, was said to be 'a very important addition to the engine, and though sufficiently obvious, it is ingenious and requires considerable skill and address to make it effective.' Robison, Mechanical Philosophy, vol. 2, p. 105 (1822).

Footnote 2 The disclaimer and reissue statutes were adopted to avoid the rule that, if one claim is invalid, the whole patent is void. Moody v. Fiske, Fed. Cas. No. 9,745, 2 Mason 112, 118; see Ensten v. Simon, Ascher & Co., 282 U.S. 445, 452, 51 S.Ct. 207; Hailes v. Albany Stove Co., 123 U.S. 582, 589, 8 S.Ct. 262. The use of the disclaimer has been upheld where the elimination from the patent of the matter not relied upon did not operate to enlarge the monopoly of the patent, but narrowed it, as by eliminating in their entirety some of the claims of the patent, Sessions v. Romadka, 145 U.S. 29, 40, 12 S.Ct. 799; see Union Metallic Cartridge Co. v. United States Cartridge Co., 112 U.S. 624, 642, 5 S.Ct. 475, or by striking out an alternative method or device, Dunbar v. Meyers, 94 U.S. 187, 192, 194 S.; Hurlburt v. Schillinger, , 9 S.Ct. 584; Carson v. American Smelting & Refining Co., 4 F.(2d) 463, 469, 470 (C.C.A.9th), or by limitation of a claim or specification by deletion of unnecessary parts, Carnegie Steel Co. v. Cambria Iron Co., 185 U.S. 403, 435, 436 S., 22 S.Ct. 698; Marconi Wireless Telegraph Co. v. De Forest Radio Telephone & Telegraph Co., 243 F. 560, 565 (C.C.A.2d), or by limiting the claim to a specific type of the general class to which it was applied, Minerals Separation, Ltd. v. Butte & Superior Mining Co., 250 U.S. 336, 354, 39 S.Ct. 496; United Chromium, Inc., v. International Silver Co., 60 F. (2d) 913, 914 (C.C.A.2d); Seiberling v. John E. Thropp's Sons Co., 284 F. 746, 756, 757 (C.C.A.3d).

Footnote 3 Albany Steam Trap Co. v. Worthington, 79 F. 966, 969 (C.C.A.2d); Strause Gas Iron Co. v. Wm. M. Crane Co., 235 F. 126, 129, 130 (C.C.A.2d); Graselli Chemical Co. v. National Aniline & Chemical Co., 26 F.(2d) 305, 310 (C.C.A.2d); Hudson Motor Car Co. v. American Plug Co., 41 F.(2d) 672, 673 (C.C.A.6th); Corn Products Refining Co. v. Penick & Ford, Ltd., 63 F.( 2d) 26, 30, 31 (C.C.A.7th); General Motors Corp. v. Rubsam Corp., 65 F.(2d) 217, 222 (C.C.A.6th); Consumers' Tobacco Co. v. American Tobacco Co., 66 F.( 2d) 926, 927 (C.C.A.3d); Fruehauf Trailer Co. v. Highway Trailer Co., 67 F.( 2d) 558, 559, 560 (C.C.A.6th); White v. E. P. Gleason Mfg. Co., 17 F. 159, 160 (C.C.); Cerealine Mfg. Co. v. Bates, 77 F. 883, 884 (C.C.); Westinghouse Air Brake Co. v. New York Air Brake Co., 139 F. 265, 267-270 ( C.C.).