PATENT APPEAL DOCKET: LEE DE
FOREST v. TRI-ERGON

United States Court of Customs and Patent Appeals
Patent Appeal Docket No. 2749

Interference No. 53103. Subject Matter: Recording Sounds.

Lee De Forest, Appellant,
vs. Hans Vogt, Joseph Massolle and Josef Engl.

To the U. S. Court of Customs and Patent Appeals:

Your petitioner, Lee De Forest, of New York, in the County of New York and State of New York, respectfully represents:

That he is the original and first inventor of certain new and useful improvements in Recording Sounds.

That on the 16th day of July, 1921, in the manner prescribed by law, he presented his application to the Patent Office, praying that a patent be issued to him for the said invention; and that a patent was issued to him on April 8, 1924, bearing No. 1489314.

That thereafter, to wit, on the 10th day of November, 1925, an interference proceeding was instituted and declared between his said Letters Patent No. 1489314, and a pending application of Hans Vogt, Joseph Massolle and Josef Engl, Serial No. 547860, filed March 29, 1922, for a similar invention.

That the subject matter of said interference, as set forth in the official declaration, was as follows:

“Count 1. The method of producing talking moving pictures on the same film which comprises photographing simultaneously upon separate films the picture and the sound, and photographing the sound record on an unexposed portion of the picture film.

“Count 2. The method of producing talking moving pictures on the same film which comprises photographing simultaneously upon separate films the picture and the sound, and photographing the sound record on an unexposed portion of the picture film between the marginal edge and the sprocket perforations thereof.”

That thereafter, to wit, on the 14th day of July, 1928, the case having been submitted upon the preliminary statements and evidence presented by the parties thereto, the Examiner of Interferences rendered a decision awarding priority of invention to Hans Vogt, Joseph Massolle and Josef Engl.

That pursuant to the statutes and the rules of practice in the Patent Office in such case made and provided, Lee De Forest appealed from the said adverse decision of the Examiner of Interferences to the Board of Appeals, and, the case having been argued and submitted to said Board, a decision was rendered by said Board on the 7th day of January, 1930, affirming the decision of the Examiner of Interferences.

That on the 24th day of February, 1930, your petitioner, pursuant to sections 4912 and 4913, Revised Statutes of the United States, gave notice to the Commissioner of Patents of his appeal to this honorable court from the decision of the Board of Appeals awarding priority of invention to said Hans Vogt, Joseph Massolle and Josef Engl, as aforesaid, and filed with him, in writing specific reasons of appeal.

That the Commissioner of Patents has furnished your petitioner a certified transcript of the record and proceedings relating to said interference case, including the notice and reasons of appeal, which transcript is filed herewith and is to be deemed and taken as a part hereof.

Wherefore your petitioner prays that his said appeal may be heard upon and for the reasons assigned therefor to the Commissioner, as aforesaid, and that said appeal may be determined and the decision of the Board of Appeals be revised and reversed, that justice may be done in the premises.

LEE DE FOREST,

By SAMUEL E. DARBY, JR.,

His Attorney.

Washington, D. C., April 9, 1930.

Indorsed: United States Court of Customs and Patent Appeals. Filed Apr. 9, 1930. Arthur B. Shelton, Clerk.

390.

Department of Commerce, United States Patent Office.

To all persons to whom these presents shall come, Greeting:

This is to certify that the annexed is a true copy from the records of this office of Certain Papers, including Printed Testimony as used before the Office, in the matter of Interference Number 53,103, De Forest vs. Vogt, Massolle and Engl, Subject Matter: Recording Sounds; said Papers being the Record for the United States Court of Customs and Patent Appeals.

In testimony whereof I have hereunto set my hand and caused the seal of the Patent Office to be affixed, at the City of Washington, this second day of April, in the year of our Lord, one thousand nine hundred and thirty, and of the Independence of the United States of America the one hundred and fifty-fourth.

[Seal Patent Office, United States of America.]

THOMAS E. ROBERTSON,
Commissioner of Patents.

Attest:

D. E. WILSON,
Chief of Division.

Application of HANS VOGT, JOSEPH MASSOLLE and JOSEF ENGL, Filed March 29, 1922. Serial No. 547860. Process for Producing Combined Sound Picture Films.

To all whom it may concern:

Be it known that we, Hans Vogt, Joseph Massolle and Josef Engl, citizens of the German Republic, and residents respectively, the first of Berlin-Wilmersdorf, the second and third of Berlin-Grunewald, Germany, have invented a new and improved Process for Producing Combined Sound Picture Films of which the following is a full, clear and exact description:

In the production of speaking films [it] is of great advantage especially from the point of view of use, to arrange the sound sequence and the picture sequence upon one and the same material separate (film).

In this procedure, however, there frequently occur in consequence of the changing lighting conditions in the cinematographing process, changes in the degree of light and the bromide of silver layer, and this causes the picture sequence to be either overlighted or underlighted.

As the same film, however, bears close to the picture sequence the continuously normally lighted sound sequence, these differences cannot be removed in the case of combined negatives by developing, weakening, strengthening and so forth. They can only be removed by subjecting the underlighted or the overlighted negative places to separate corresponding treatment.

Technically, this treatment is practically impossible so long as the two sequences are photographed upon the same film.

According to the present invention the difficulty is overcome by either employing entirely separate films for the production of the negatives or films which are connected during the photographing, but which are separated from one another before the developing.

The synchronism is assured in both cases by the perforations and by corresponding marks. The production of the positive films can take place by copying the two negative films preferably consecutively upon the same positive films.

One can however, also unite previously the two negative films longitudinally together, and then copy this so united negative in the usual manner.

We claim:

1. Process for the production of combined sound and picture films, in which the sound sequence and picture sequence positives are copied upon single film, characterized by the feature that the respective negatives have been developed separately.

2. Process for the production of combined sound and picture films according to claim 1, characterized by the feature that the photographing of the sound sequence and of the picture sequence takes place on separate films.

3. Process for the production of combined sound and picture films as set forth in claim 1, characterized by the feature that the photographing of the sound sequence and of the picture sequence takes place upon a single film and subsequently divided.

4. Process for the production of combined sound and picture films as set forth in claim 1 to 3, characterised by the feature that the negatives after development are re-united.

Witnesses:
BRUNO LEARWENKA,
JOHN W. BULKLEY.

Amendment, April 1, 1925

Hon. Commissioner of Patents.

SIR:

In response to Patent Office action of January 26, 1925, please amend the above entitled application as follows:

3. The method of producing talking moving pictures on the same film which comprises photographing simultaneously upon separate films the picture and the sound, and photographing the sound record on an unexposed portion of the picture film.

4. The method of producing talking moving pictures on the same film which comprises photographing simultaneously upon separate films the picture and the sound, and photographing the sound record on an unexposed portion of the picture film between the marginal edge and the sprocket perforations thereof.

Respectfully submitted,

4. The Honorable Examiner of Interferences erred in ruling that the testimony of De Forest as to the date[s] when he made the entries in his note book are not corroborated by Garity.

5. The Honorable Examiner of Interferences erred in ruling that the testimony of De Forest and Senner taken together did not establish a conception of the invention before April 14, 1921, the foreign filing date of Engl, Massolle and Vogt.

6. The Honorable Examiner of Interferences erred in holding that De Forest was not diligent between the dates of April 14, 1921 and July 16, 1921, the filing date of his application.

7. The Honorable Examiner of Interferences erred in ruling that the work De Forest was doing between April 14, 1921, and July 16, 1921, should not be credited as activity to show diligence in reducing to practice the invention of this interference.

The appeal fee of $25.00 is enclosed herewith.

An oral hearing is requested.

Respectfully,DARBY & DARBY,

Attorneys for De Forest.

Dated: New York, N. Y., July 17, 1928.

Decision of Board of Appeals, January 7, 1930.

This is an appeal by De Forest from the decision of the Examiner of Interferences awarding priority of invention to Engl, Massolle and Vogt, the senior party, upon all the counts which read as follows:

1. The method of producing talking moving pictures on the same film which comprises photographing simultaneously upon separate films the picture and the sound, and photographing the sound record on an unexpected portion of the picture film.

2. The method of producing talking moving pictures on the same film which comprises photographing simultaneously upon separate films the picture and the sound, and photographing the sound record on an unexposed portion of the picture film between the marginal edge and the sprocket perforations thereof.

The counts are claims 1 and 3 of the patent No. 1,489,314 of De Forest and the interference was originally declared with De Forest as the senior party but upon motion, Vogt et al., by a decision dated April 13, 1926, were given the benefit of their German application date of April 14, 1921, and made the senior party.

The Examiner of Interferences points out that Vogt et al. copied the two counts from the De Forest patent but they were rejected by the Primary Examiner. The rejection was reversed by the Board of Examiners-in-Chief, and in their opinion they mentioned the word “simultaneously” occurring in both claims as distinguishing them from the Greenfelder patent cited against them. He therefore emphasized in his decision the word “simultaneously” as an essential limitation in the claims. He held that the testimony submitted by De Forest fails to prove that he had conceived this feature of simultaneously photographing the picture and the sound prior to his filing date.

For proof of conception De Forest relied primarily upon his note book No. 2, De Forest Exhibit 1, in which, under date of December 28, 1920, is an entry which reads:

Developed this last 10 minutes until wholly fogged. This would be too long for cine picture. Hence will probably need to make two negatives (picture and sound) and print on same pos.

A second entry under date of Jan. 18, 1921, reads:

Developed 11 minutes (very cold day) (longer development is best for sound film but not for picture. Hence will probably use 2 films.)

These notes clearly indicate that as the sound and picture films require a different degree or time of development, it would be necessary to use two films and develop them separately. The Examiner of Interferences held that there was nothing in these notes to indicate that the sound and picture films were to be photographed “simultaneously” as required by the counts.

De Forest, in his brief, contends that the object of the invention is to synchronize the sounds with the movement of the lips of a person in the picture and that it is at once apparent that the picture and sound must be recorded simultaneously. He further points out that on the motion to shift the burden of proof, the Law Examiner gave to Engl et al. the benefit of the filing date of his German application and if it be held that De Forest’s testimony fails to support the issues, it is equally true that the German application of Engl et al. fails in the same respect.

In the German application we find the following:

According to the invention this difficulty is obviated in that for the making of the negatives either entirely separate films are provided or those which although still united during the recording are, however, detached from each other before the developing. Synchronism in both cases is insured by perforation and by suitable marks.

In our opinion the statements that the films are still united during the recording indicates that the record is made simultaneously on both films and this is further borne out by the statement that, when separated for development purposes, the synchronization is insured by perforations and suitable marks so that they can be reconnected with proper registration. The same disclosure is found in the U. S. application of Engl et al.

As to the De Forest testimony, it appears that the reason why two films were to be used was that different degrees of development were necessary for the sound and picture negatives and it might seem obvious that the original idea which rendered this change necessary was that the sound and pictures were supposed to be photographed simultaneously. At this time only sound had been photographed in the laboratory which may be the reason why nothing was said in the notes as to simultaneous photography of the sound and picture. While the simultaneous exposure of the sound and picture negatives would seem to be the most obvious procedure, the brief of Engl et al. points out that other methods were known prior to De Forest’s alleged conception, (see Engl et al. brief, pages 24 and 25,) and appear to be disclosed in the patent to Greenfelder, No. 1,254,684, which was cited in the application of Engl et al., and the burden was on De Forest, as the junior party, to prove his case. Furthermore, he must rely for corroboration upon his witnesses Garity and Senner. Garity has no way of fixing the dates when the entries were made in the note books and these dates are fixed only by De Forest’s own testimony. Garity merely knows that he saw the note books between December, 1920, and prior to De Forest’s trip to Germany the last of July, 1921, and that, at some time, De Forest discussed the subject matter of the notes with him. Senner can fix no date except with relation to the purchase of a camera from him on February 18, 1921, and thinks that De Forest, within a week or ten days thereafter, brought some films to him for development which films contained both sound and picture records which were of unequal exposure. De Forest suggested that it would be best to use separate negatives while he discouraged this method and suggested the use of light of different intensity in making the records. This disclosure does not mention “simultaneous” exposure and the time between about March 1 and April 14, 1921, when Engl et al. entered the field is so short that a person testifying six or seven years after the event could hardly fix the time with sufficient definiteness. De Forest says (X Q. 74) that it was several weeks after he got the camera before he had the necessary attachment placed on same for recording sound on the same film with the picture. We must, therefore, agree with the Examiner of Interferences that De Forest has failed to establish conception of the invention in issue prior to the constructive reduction to practice of the senior party.

Even if De Forest were given a conception as of January 1, 1921, the date set up in his preliminary statement, he would have to prove diligence from just prior to April 14, 1921, when Engl et al. entered the field, up to his filing date of July 16, 1921. There is no testimony which clearly establishes any work done on the invention in issue from January 1, 1921, up to April 14, 1921, and De Forest seeks to rely upon his work on the general subject of talking moving pictures. This work was the subject of the other interference No. 51,947, and the present invention relates to entirely different subject matter. His note books show that he had already obtained good results in making sound records and after obtaining the moving picture camera on February 18, 1921, he could have coupled the two cameras without great difficulty and reduced the invention to practice, but on page 13 of his record (Q. 25) he admits that he had not attempted to actually use the invention of the interference prior to filing his application on July 16, 1921. This is also verified by the testimony of Garity on page 41, Q. 20, page 47, X Q. 52, and page 48, X Q. 55.

De Forest has failed to prove conception prior to his filing date and even if he had he has not established the diligence required of him.

The decision of the Examiner of Interferences is affirmed.

Notice of Appeal to Court of Appeals, February 24, 1930.

And now comes Lee De Forest, by Darby & Darby, his attorneys, and gives notice to the Commissioner of Patents of his appeal to the United States Court of Customs and Patent Appeals from the decision of the Board of Appeals rendered on or about January 7, 1930, awarding priority of invention to Vogt, Massolle and Engl in the above entitled case, and assigns as his reason for the appeal the following:

1. The Board of Appeals erred in awarding priority of invention to Vogt et al.

2. The Board of Appeals erred in failing to award priority of invention to Lee De Forest.

3. The Board of Appeals erred in holding in effect that Lee De Forest failed to prove conception prior to his filing date.

4. The Board of Appeals erred in holding in effect that De Forest had not established diligence.

5. The Board of Appeals erred in holding that De Forest was required to establish diligence.

LEE DE FOREST,
By DARBY & DARBY,
His Attorneys.

Dated: New York, N. Y., February 21, 1930.

Indorsed: United States Court of Customs and Patent Appeals. Filed Apr. 9, 1930. Arthur B. Shelton, Clerk.