Appeal from the District Court of the United States for the Northern District of Illinois, Eastern Division; John P. Barnes, Judge.
Before MAJOR, KERNER, and MINTON, Circuit Judges.
This is an appeal from a decree, entered March 31, 1941, dismissing plaintiff's suit for patent infringement. The court decreed the patent invalid and, also, in a memorandum opinion, decided that there was no infringement.
The patent in suit, No. 2,121,910, was issued to Frank Friemann June 28, 1938 (afterwards assigned to plaintiff), upon an application filed July 16, 1935. It is entitled a "Carrying Case for Picture Projecting Apparatus," and contains six claims, of which Claims 5 and 6 are in suit. Insofar as material to the questions raised on this appeal, it is sufficient to set forth Claim 6, the broader of the two, which we copy in analyzed form.*fn1 As we understand the situation, the claimed invention resides solely in elements (e) and (f); that is, in the means provided for the use of the projecting apparatus. One of the objects, as stated by the patentee, is:
"Another object of the invention is to provide, in a carrying case of the character described, a supporting element for a picture projecting apparatus which will permit an operation thereof at a point externally of the carrying case where a free circulation of cool air may exist thereabout."
It is not contended there is anything new or novel in an electrically operated sound and picture producing apparatus, or in a hand-carrying portable case housing the same.
The talking slide film machines embodying the invention of the patent in suit are manufactured and sold under the trade name of "Illustravox." It is described as a self-contained machine in the form of a small light unitary struture which can be easily carried about from prospect to prospect and readily and quickly placed in operation on a desk for illustrating and describing the thing being offered for sale. Prior to the invention in suit, plaintiff, as well as others, had attempted to provide a commercially satisfactory talking slide film machine for presenting illustrated sales talks. In such development three units were employed, viz.: The sound reproduction apparatus, the loud speaker and amplifying means, and the slide film projector. These units were first employed separately, but later were secured together in one case so that they might be more readily transported. Such apparatus, so it is claimed, failed to satisfy the demands of the trade. On the other hand, the apparatus, made according to the patent in suit, met with considerable commercial success.
The major theme of plaintiff's argument in favor of invention is found in the following statement from its brief:
"Freimann's contribution was to devise particular means, a particular structure, if you please, whereby the conflicting requirements of combining all the essential elements in one unit was overcome without injecting counterbalancing objections. This he accomplished by providing means whereby the projector and lamp housing, although forming a permanent part of the unitary structure, could be readily and quickly extended out and away from the other parts and case where it would not destroy its own effectiveness or that of its cooperating neighboring parts. * * * "
Thus, there arises the question as to whether the assembling of elements, old and well known, to the use designed by the patentee, constituted invention, or merely an unpatentable aggregation as held by the lower court. We have tried, without success, to ascertain any new result which may be ascribed to the disclosure. It is rather plain, we think, that the result is merely the total of the separate results produced by the various units prior to their assemblage by the patentee. No new or different result was achieved. The most that may be said in favor of the patentee is that he produced a result more efficiently and perhaps with less expense.
This court, in De Vry Corp. v. Acme Motion Picture Projector Co., 7 Cir., 9 F.2d 921, considered a situation quite similar to the instant one. The patent in that case related to motion picture projectors of the suitcase of self-contained type. It was claimed that the inventor was the first person to plan successfully the involved elements into a portable container. The court, 9 F.2d on page 922, said:
" * * * Each element functions in the container just as it does when not in a container. The bringing together of these elements and arranging them so that they are ready, while in the container, to perform their old and well-known functions, is not invention. It is mere aggregation."
In this connection, it is pertinent to note in the instant case, a portion of a colloquy between the court ...