Harlan F. Stone

“ The greater utility of respondent's film over those effecting the union of the two records by other methods does not establish the novelty of the method. Evidence of great utility of a method or device, it is true, may in some circumstances be accepted as evidence of invention. Where the method or device satisfies an old and recognized want, invention is to be inferred, rather than the exercise of mechanical skill. For mere skill of the art would normally have been called into action by the generally known want. ”

“ Several methods have been devised for recording sound and reproducing it in connection with the exhibition of motion pictures. A familiar one is the disc system, by which the sound vibrations are mechanically recorded upon and reproduced from discs by a stylus, which receives the sound vibrations for recording and transmits them from the disc to a loud-speaker in reproducing the sound.
Another method, important here, is the photographic film system, in which the sound vibrations are recorded upon a photographic record. ”

“ The electric currents thus produced are amplified and transmitted to two metal threads, arranged side by side so as to form a narrow slit about 1/1000 of an inch in width, called a light valve. The current produces vibration of the metal threads with consequent variation of the light passing through the valve exactly corresponding to the sound vibrations to be recorded. In recording sound, a moving sensitized photographic film is exposed to a beam of light passed through the vibrating light valve which is activated by the electric currents varying according to the sound vibrations. ”

“ The court below also rested its decision on the ground that the petitioner is estopped to deny the validity of the patent by the application of Wente, April 8, 1924, who was in the employ of the Western Electric Company, for a patent for an improvement in recording and printing the sound record film, which contained claims broad enough to include the method claimed by respondent. These claims were rejected by the Patent Office as reading on the British patent 178,442 of the present patentees, and the Greensfelder patent, already mentioned. ”

“ However inconsistent this early attempt to procure a patent may be with petitioner's present contention of its invalidity for want of invention, this Court has long recognized that such inconsistency affords no basis for an estoppel, nor precludes the court from relieving the alleged infringer and the public from the asserted monopoly when there is no invention. ”

“ It is said that, however simple and obvious the method may appear to be now that it is in successful use, no one before the patentees had used it for producing the union of a sound and a picture record. ”