there is the possibility of "slip"; and it might be expected that the likelihood of such action would be increased by the extremely high speed at which these machines are run, giving 20 or more exposures per second. This, moreover, is not a matter of conjecture; there is positive proof. Marvin, who has had large experience in operating defendant's machines, testified:
"Negatives, to my knowledge, are never exhibited in public. In order to exhibit a picture it is necessary to print positive reproductions. The apparatus in which such positive reproductions are printed can readily be arranged so that the pictures upon the positive strip of film are uniformly spaced, although the pictures up on the negative strip may be very unevenly spaced. As a matter of fact, none of the cameras of our company produce uniformly-spaced negatives. In the manufacture of our mutoscope pictures the positive pictures are printed upon bromide paper and the paper is cut up so that each piece of paper carries an independent picture."
It is solely to facilitate this operation that the punches are brought into the combination. The film has no holes along its edges as it leaves the supply-reel; they are punched in only at the moment of exposure. The stipulated description reads: "Secured to the rock shaft n2 are two punch arms n3 at the outer ends of which are mounted punches n4. * * * The film B is perforated in its passage between said tension leaf and backplate by means of the punches n4 * * * The film is gripped by the tension leaf momentarily to permit exposure. During this gripping interval the punch n4 is actuated to perforate the film opposite each exposed portion and at or adjacent to each of the film."
The use of the perforations as an aid to correcting the results of imperfect spacing is shown in the testimony of Johnson, superintendent of defendant's photographic department:
"The feed in the biograph camera is by friction rollers, and the feed is tolerably regular so long as the film is of one thickness and so long as all the adjustments on the machine are kept in first-rate condition. As a matter of fact, however, the film varies very considerably in thickness, and the feed is by no means regular, varying from three-sixteenths to five-sixteenths of an inch in some cases. The normal proper feed is one-quarter of an inch. It would not be possible to exhibit properly a positice fac-simile of the negative film which our company's (Biograph) camera produces.
"Q. 21. Please explain how defendant company prepares the films and prints from these negatives which are used in the exhibiting machines?
"A. The camera is provided with a pair of punches and dies, which are brought into operation and perforate the film during the period of exposure. The perforations are situated in a blank space underneath the picture proper and always bear a fixed relation to the picture itself, so that these holes being fixed fitted over dowel pins in our printing machine, enable us to print a picture which shall be perfect in register with every other picture, irrespective of the spacing in the negative film. * * * The spacing of the pictures on the positive film made by out company is such that the scenes which the photographs represent will not be properly produced by simply passing the film through the Biograph."
Because of these differences in parts, in action and in result, we are of the opinion that the defendant's Biograph camera is not the type of apparatus described and shown in the original and re-issued patent. The language, even of the re-issued claims, considered by itself and giving no force to the words "substantially as set forth," may be broad enough to cover it, but that is not sufficient. "Infringement should not be determined by a mere decision that the terms of a claim of a valid patent are applicable to the defendant's device. Two things are not precisely similar because the same words are applicable to each. The question of infringement involves consideration of practical utility and of substantial identity, and therefore must be quantitative as well as qualitative." Goodyear Shoe Mach. Co. v. Spalding, 101 F. R. 990. We conclude, therefore, that defendant's Biograph camera does not infringe claims 1, 2 or 3 of the Re-issue.
The other apparatus used by the defendant, viz. the Warwick camera, has a different mode of operation. The engaging rollers, which advance the film after it has passed the film-slide or guide where exposure is made and which deliver it to the take-up reel are located about half way between the take-up reel and the film-slide, and their movement is so regulated as to other parts that there will always be a loop of slack film between said rollers on the film-slide, and their movement is so regulated as to other parts that there will always be a loop of slack film between said rollers on the film-slide. In consequence the film cannot be advanced by any revolution of these rollers, as was the case with the Biograph camera. The film as it comes from the delivery roll has a row of holes along each edge; when it is in the film-slide these holes are engaged by means of a reciprocating two-tined fork, carrying small studs or pins which pass into the holes on the opposite edges of the film, in the same way as the sprockets pass into the holes in complainant's machine. As these studs or pins are inserted on the down stroke of the fork and withdrawn on the up stroke, the film is intermittently fed across the field of the lens. These pins or studs do not hold back the film against any forward pull, because there is no forward pull to be resisted; neither an intentional forward pull as found in the Biograph, nor an accidental or occasional forward pull when the film is taut between the film-slide and take-up roll as found in the camera of the patent; when the pins are withdrawn the film lies, inert, in the film side. But the "intermediate section" is moved across the lens just by the interlocking engagement between a sprocket or pin and a hole in the film, thereby moving in positively, regularly, evenly and very rapidly without jarring, jerking, or slipping—the parts being arranged so that the movement shall be intermittent. In our opinion the bifurcated fork with studs is the fair equivalent of the wheel with sprockets, and the combination shown in the Warwick camera is an infringement of claims 1, 2 and 3 of the re-issued patent.
Claim 4 of the re-issue is identical with claim 4 of the original and differs from claim 3 of the original only by the insertion of the words "the periods of rest being greater than the periods of motion." It is obnoxious to the criticisms expressed as to original claim 3 in our former opinion, and for reasons therein expressed must be held void.
The decree of the Circuit Court is reversed, without costs of this appeal to either party and the cause remanded with instructions to enter a decree in accordance with this opinion.
Trade Notes
The Burtis annex in Water street, Auburn, is opened for the exhibition of moving pictures and vaudeville. It is proposed to give six performances a day and the admission will be five cents. *** A new company, to be called the Progressive Amusement Company, of Dallas, has been formed, with a capital stock of $10,000. The incorporators are L. A. Harris, Ike I. Lorca and B. Benno. *** Arcadia Amusement Company, Arcadia, Los Angeles (Cal.), has been formed for the purpose of establishing a resort in which a large theater will be set aside for moving pictures. Capital stock, $200,000. *** Dwight Elmendorf gave the last of his illustrated lectures on travel at Carnegie Music Hall, Pittsburg, recently. His subject was "The Land of the Midnight Sun." The motion pictures were excellent, one showing the sport of ski running being one of the most amusing aver seen by a Pittsburg audience. *** It is announced that S. Z. Poli has purchased the St. Mary's church property on Church street, New Haven, where is now located his Bijou Theater, paying about $130,000. It is centrally located and happens to be the ground on which Mr. Poli made his first venture as the manager of a vaudeville thater fifteen years ago. *** Rocky Glen, Scranton's first amusement park, has been sold to a New York and Boston syndicate. The consideration is not known, but is claimed by Mr. Frothingham to exceed $260,000. The new owners will take immediate possession and, it is claimed, will spend $50,00 in improvements, this year. Mr. Frothingham gives ill-health as his reason for disposing of the property.
