Opinion
No. 236.
March 20, 1925.
Appeal from the District Court of the United States for the Southern District of New York.
Patent infringement suit by George Lane against the Craftsmen Film Laboratories, Inc. Decree for plaintiff, and defendant appeals. Affirmed.
The opinion of Learned Hand, District Judge, in the court below, was as follows:
"As the defendant admits infringement of claims 1 and 2, and as the plaintiff has failed to prove infringement of claim 3, as to which it consents that the bill shall be dismissed, the suit comes down to the question of validity alone. The invention is for a process by which a moving picture text may be produced to cast upon a screen, consisting of white letters on a black background. The process starts by simply printing the text in black type upon a diaphanous paper. This paper is pressed against a sensitized photographic print paper, which is then exposed to the light, precisely as in the case of the ordinary `blue print' or `brown print.' After exposure, the print paper will upon development show the original black text as white upon a jet black background; the light having been stopped where the original black text was written. This is then used as the object to be photographed as a moving picture; a negative being taken from which as many positives may be thereafter made as are desired. The method is concededly more economical and speedier than the old method, which consisted in preparing the object to be photographed (i.e., the text) by white typed letters upon velvet, or by writing on a black sheet with aluminum ink, or by dusting white powder upon viscous or gelatinous paint. Since the method of producing a copy in reverse lights (i.e., a negative) was very ancient, obviously there was nothing new in the process except the substitute of such a negative of the original copy as the subject of the moving picture. On this simple step the whole patent depends; it is nothing more.
"The art of producing moving pictures has been the subject of an exploitation which has rarely been equaled. Every economy is eagerly seized upon; many acute minds have been at work in all its parts. When an improvement in it appears, it is unreasonable to assume from its apparent simplicity that its production was a mere matter of routine. It is not as though the need for economy had not existed from the outset, or as though some precedent step in the art had been necessary, and as though the invention had spontaneously appeared as soon as the occasion for it arose. The situation is typical of those cases in which an improvement appears after the art has for long put up with cumbersome methods, without observing that a very simple expedient would have answered quite as well. In such cases the history of the art furnishes good evidence that the change is an invention.
"The only references at bar which are of any moment at all are the article in La Technique Cinématographique, and Stambaugh's patent, both of which antedate Lane's application. The first, which is the better, was directly concerned with the production of texts or titles for moving pictures in white upon a black background. Two methods were disclosed: First, direct photography of white types upon a black board, into whose grooves they were fastened; second, black type printed upon a white background. The first case is the only one which need concern me here. The text is to be set in the usual way, in white on an ordinary black background, and is then photographed under artificial light upon a sensitized photographic plate. On this plate the white letters become `very opaque,' and the background `absolutely transparent,' as the writer says. In short, it becomes a negative of the title. This plate is then interposed between a source of light and a lens which concentrates the rays on a moving sensitized film. Obviously, the film so produced will be a positive of the original title — i.e., a negative of the negative film — and may be joined into the positive of the pictures at the proper place. In this process the plate is the `permanent negative,' and is not the analogue of Lane's printed paper, but of his negative film.
"So far the disclosure is no more than an awkward illustration of the methods in vogue when Lane filed his application. Nevertheless, at the end of the article the writer suggests an alternative which was that a copying paper, written or printed with opaque ink, might be used to make `a positive print by contact upon a plate.' This would create a plate of white on black, and, if it was used, as apparently the writer assumed, directly upon a moving film, that film would be a permanent negative from which positives could be reproduced. This is the only form which, so far as I can see, can possibly be argued to be an anticipation of Lane. All is left to inference, and it should be observed that there must be a second photographing upon a new film to get a white on black title.
"It is true that, if one accepts as sufficient this somewhat scanty disclosure, the `positive plate' is used as Lane's printed paper is used, except that the light passes through the plate while it is reflected from Lane's paper. Is that a patentable distinction? I cannot see how one can answer that question in the abstract; it depends upon when it appeared and what it accomplished. It appeared after men had been making such titles for a long time, and no one had thought of making the substitution before Lane. When he did, others have found it convenient to follow him. I agree that the two are photographic equivalents; I agree that, if you put them side by side before a photographer, he would say that they are convertible ways of reaching the same result. That does not trouble me in the least in holding that the choice of one as against the other may be invention. One has proved cheap and quick, while the other has lain dead, neglected by the art, which continued to set white letters or use white paint upon a black background. I ask the conventional question in such cases: If it was so plain, why did nobody do it? Why did they ignore the suggestion of this article, and why do they now imitate Lane? I know no answer to that question except to say that nobody was foresighted enough to see that the photographic plate might easily be changed for a sensitized paper.
"Last is Stambaugh's patent. This was to combine a standing text with each photograph in the series of moving pictures. These pictures, which he called his `action,' were to appear as white on black. Having so drawn them, he made a negative leaving a white space where the text was to appear in each picture. He then set up his text black on white in front of his camera. The negative of the `action' he then placed in front of a raw film which was to be his `positive,' the sensitized surfaces together. By running the two films so in conjunction, he got a reverse of the text on his `positive' (i.e., white on black), and a true positive of his original `action,' since the negative reversed the light. Thus he got both `action' and text as white on black, having reversed the original text but not the original `action.' Obviously, so far as concerned the text, he was merely making a negative of it, and was completely removed from Lane's disclosure.
"This is a small invention, not requiring any high degree of imagination. I uphold it, not because it took any technical skill to work it out once it had been conceived. Perhaps it arose from a mere elimination by use and discard of the different possible alternatives. Perhaps it was bound in the end to come. But it had not come after a good many years. The art for one reason or another was still working along with more awkward and expensive processes. Unless I am mistaken, the first experimenter who happens on such a process is entitled to keep it as his own. I can see no reason why others should not be kept within the limits of their own ingenuity while the patent lasts.
"Decree for the plaintiff on claims 1 and 2, without costs."
Pennie, Davis, Marvin Edmonds, of New York City (Arba B. Marvin and Ernest H. Merchant, both of New York City, of counsel), for appellant.
Munn, Anderson Munn, of New York City (John K. Brachvogel and Albert J. Clark, both of New York City, of counsel), for appellee.
Before ROGERS, HOUGH, and MANTON, Circuit Judges.
Affirmed on the opinion in the court below.