HAMMERSCHLAG AMERICAN Box MACHINE CO.
CO. V.
V.
BANCROFT.
585
DAY and others.
(Cz'rcuit Oourt, E. D. Penn8ylvania. May 18, 1887.) PATENTS FOR INvENTIONS-LETTERS PATENT No. 298,879-NoVELTV-COMl3INA' TION OF OLD DEVICES. Letters patent No. 298,879 were granted to Gordon Monroe, Mat 20,1884, for "Box Covering and Trimming Machine." The claims in the patent were for a new and useful combination of old devices. Held, that the combination possessed patentable novelty, and the patent was valid. .
In Equity. . Redding, Wetmore & Jenner, for complainant. Moon & Bliss, for respondents. BUTLER, J. A very few words will express all we desire t() say in this case. The suit-as now pressed-is for infringement of claims 2 and 3 of letters patent No. 298;879, issued to Gordon Mohroe, May 20, 1884, for "Box Covering and Trimming Machine." These claims are for the machine itself, which consists of a combination of old devices. The defense is twofold ,-want of patentable novelty and non-infringement. 'l'he presumption in favor of patentable novelty-arising from the patentmust be allowed' to stand until overborne by countervailing proof, cel'tain and convincing. Such proof we do not find in the case. To diScuss and contrast the several exhibits relied upon by the defendants, and the conflicting testimony ofwitnesses, would serve no useful purpose. It is suf· ficient to say that the evidence does not show sucp a prior state of the a),'t as would justify a finding against the patent. The comLination seems to be new, highly usefUl, and, we think, shows invention. There can be little, if any, room to doubt that the defendants' machine is substantially like the plaintiff's. It embraces the same elements, (or their mechanical equivalents,) combined in the same manner, and operates in the same way. The circumstance that its pasting-cylinder may be an improvemtmt on the plaintiff's is unimportant. Notwithstanding the earnestness and ability with which the defense was presented, It careful examination of the case has led us to this conclusion . .A decree must be entered for the plaintiff as above indicated.
HAMMERSCHLAG MANUF'G Co. v. BANCROFT. (Oitrcuit Court, N. D. Illinoi8. September 5, 1887.)
586
FEDERAL REPORTER.
Tbe paper is passed over and in contact with a h.eated revolving cylinder, partly submerged in a vat of melted paraffine, then over a scraper, and lastly over a polishing roller. A scraper is also applied to the cylinder, between the wax-trough and the place of contact with the paper. In the Stenhouse English patel,\tsgrauted in 1e62, and the Ameripanpatent No. 97,983. to Cheney and Milliken, assignees of Stenhouse, December 14, 1869, one method of coating.or impregnating fabrics with paraffine, to render them less liable to decay, and less pervious to air and liqUids, waS by passing them over one or more hot metallic rollers, working in a bath of paraffine; the amount of paraffine applied to the rollers being regulated by a gauger or knife or brush, and the incorporation of the paraffine into the fabric being,effected by hot rollers, which also removed any excess of paramne. Another method was to stretch the fabric on a heated metallic surface, and rub over it a fiat block of paraffine, then compressing by a hot fiat-iron or hot rollers. Held, that the Stenhouse invention was no anticiI;lation of the Hammerschlag invention; following Hammerachlag v. Scamom, 7 Fed. Rep. 584. 2. BAME-INFRINGEMENT. In defendant's machine the paper is passed from the supply reel uuder a heated pipe submerged in paraffine, then up between two cylinders or squeezerollers located overtli& :vat of paraffine; the process of wa.xing paper being by heat, preSSure, and· friction, substa.ntially al:J in plaintiff's process. Reld an infringement of. the 11ft1).claim of plaintiff's patent.
8.
BAM.E-PROOESS OR ART.
The plaintiff's patent being for a process or an art, it ill not limited to the particular means described in the patent for carryinA' out the process.
.
In Chancery. Roacoe Conkling, Frost &; Cae, and Jesse A. Baldwin, for complainant. JohnG. .Elliott and Ity8ander Hill, for defendant. :\"'
J. This suit is brought to enjoin the defendant from infringing the fifth claim of reissued letters patent No. 8,460, issued October 22, 1878, to Siegfried Hammerschlag, complainant's assignor; the first, third, and fourth claims ofletters patent No. 217,280, granted on the second day of June, 1879, to the same person, and by him assignedto the complainant. The fifth claim in the reissue is identical with, the second claim in the original patent. Gage v. Herring, 107 U. S.: 640, 2 Sup. Ct. Rep. 819. After argument of counsel, Judge BLODGETT granted a preliminary injunction against the defendant on all the claims. The complainant's chief reliance is upon the fifth claim in the reissue, which is for a process of waxing paper by machinery.. I do not understand that any relief is expected upon the other patent, (No. 217,280,) which is for an improvement in machinery for waxing paper, and no further attention will be given it. The answer contains the usual defenses, but those chiefly relied on are anticipation by a large number of machines and patents, both American and foreign, and non-infringement. The fifth claim of the reissue is as follows: "The method herein set forth of waXing paper, consisting in spreading the wax upon the sluface, heating the from the opposite side to spread and fuse the wax into the fabl'ic of the paper, removinK the surplus wax, and remelting and polishing the Wax upon the paper, SUbstantially as set fQrLh." GRESHAM,
The papedspassed from a supply reel over and in contact with a 'heated cylln4er, which revolves partly submerged in a vat containing
HAMMERSCHLAG
MANUll!a,
co.
'11.
587
meHed paraffine, thus receiving the wax,to and over a heated roller which diffuses the wax equally, then to and 'over a scraper which removes the surplus wax, and finally to and over a polishing roller. A scraper , is also attached to the cylinder that takes up the melted paraffine and · applies it to the paper, and this scraper is applied between the trough and the place of contact with the paper, for the purpose of removing surplus wax, and distributing the remaining wax uniformly over the cylinder. A full description of the process, step by step, and the means of carrying it out, will be found in Hammerschlag v. Scamoni, 7 Fed. Rep. 584. In an elaborate opinion in that case, Judge BLATCHFORP held that Hammerschlag's invention was new and useful; that he was, a pioneer in the art,-the creator of a new industry or article of commerce; and in sustaining the fifth claim gave it a bro9.d and liberal construction. This decision was followed in the Third circuit (Hamrnerschlag v; Garrett. 9 Fed. Rep. 43) by Judge BUTLER, the circuit judge concurring; also by Judge LOWELL in the First circuit. in Hamrnerschlag v. Wood, 18 Fed. Rep. 175. In referring to the broad construction given to the fifth claim by Judge BLATCHFORD, Judge LOWELL said: "I am myselfof opinion that the claim may and should have this liberal construction." It is true that, on a motion in Hammerschlag v. Garrett to commit the defendant for contempt, the court held the fifth claim was not entitled to the liberal construction given to it in the Scamoni Case; but on a similar motion in the latter case, before Judge BLA'rcHFoRD, he adhered to this first interpretation of this claim, and held that dipping the web itself into a hath of' wax, instead of dipping the cylinder into the bath, and carrying the paper over the cylinder, Wl:!-S an infringement of the fifth claim. It is not necessary to refer to other cases for infringement of the fifth claim, in some of whil1h the complainant obtained preliminary Or perpetual injunctions,while failing in others, on the ground, however, that the proof did not show infringement. The two English patents granted to John Stenhouse in 1862, and the American patent, No. 97,983, granted to Cheney and Milliken, as assignees of Stenhouse, December 14, 1869, are relied on here, as they were in the three cases above cited, as a complete anticipation of the Hammerschlag invention. Other patents and machines are also relied on as anticipating defenses; but I shall not notice them further than to say that if the fifth claim, broadly interpreted as it was by Judges BLATCHFORD and LoW1i:LL, was not anticipated by Stenhouse, it was not anticipated at all. ,The Stenhouse invention was for a new improvement in rendering wood, leather,paper, and textile fabrics less pervious to air and liquids, and less liable to decay, by coating or impregnating thlllli with paraffine. In one of his specifications, Stenhouse thus speaks of his invention: "One way in which! treat leather and textile fabrics is as follows: ! take a plate of iton or other metal, the upper surface of which is quite and this! heat to a temperature of 130 to 250 Fahrenheit, or even higher able., either by placing it over a suitable furnace, or byxneansof low or high
588
FEDERAL. REPORTER.
pressure steam, or a metallic or other bath. .On this plate I stretch out the cloth or leather which I wish to coat or impregnate, and hold it tight and flat. by means of a frame, or some other suitable arrangement. When it has be· come sufficiently warm to soften or melt the paraffine easily; I then rub over it, on the wrong side of the cloth, a flat rectangular block of solid paraffine, so as to coat its surface as evenly as possible. The cloth is then strongly compressed by meansof,a hot fiat-iron or hot rollers, or other suitable arrangement. in order to distribute the paraffine more equally among the fibres. * * * This plan will serve also for preparing water-proof paper. A thorough incorporation of the paraffine with the cloth is completed by calendering between hot metallic rollers, as in the previous case. * * * When fabrics of considerable length have to be treated with paraffine, the process can be made continuous by passing them over oue or more hot metallic rollers coated with paraffine from working in a bath of that substance. The excess of paraffine is removed by means of what is called a gauge-spreader, haVing a gauger,or ttniie fixed about it, and furnished with screws so as to regulate the amonnt ofparaffine applied to the rollers. The amount of paraffine can also be regulated by means of a brush or similar apparatus, also acting on a roller; the thorough incorporation of the paraffine into the fabric being subsequently completed with hot rollers, by means of which any excess of paraffine can also be removed." Judge held .that there was nothing in the Stenhouse patents which allticipated reissued patent No. 8,460.. It is insisted by the defendant's counsel that no drawings of a machine in accordance with the Stenhouse patents were shown to Judge BLATCHFORD; and Judge LOWEI,L, and that they held the Hamm erschlag invention was not disclosed in the Stenhouse patents without understanding those patents, or the prior state of the art. The defendant cannot thus avoid the force of the opinions of these two learned judges. In disposing {)f the contempt motion in the Scamoni Case, Judge BLATCHFORD again considered the reissued patent and the Stenhouse patents, and stated that, while no. drawings accompanied the latter, he had carefully examined the specifications. The defenqallt makes waxed paper on two machines, which are so nearly alike that they need not be noticed separately. He passes a web of paper from a supply reel under a heated pipe or guide, which is submergedin a bath of paraffine, and then passes the paper up between two cylinders or squeeze-rollers which are located over a vat containing the melted paraffine. These squeeze-rollers remove the surplus wax, force the wax into the fibre of the paper, and smooth or polish the surface. In short, the defendant, by his machines, makes waxed. paper by the action of heat, pressure, and,' friction; the process being substantially the same as the process covered by the fifth claim under the broad construction already referred to. The complainant's expert witness, Knight, in'speaking of the defendant's machines and process, says: "Referring to the fifth claim in reissue No. 8,460 and compJainant's exhibits ·Bancroft Patent' and ·Bancroft Machine No.2,' I find that the operation of the machine made in accordance with said exhibits would carry outtlie process pointed out in said fifth claim in all its essential conditions of spreading and forcing the wax upon and through the paper, removing surplus wax, and smoothing the surface by the combined agency of heat, pressure, and
HAMMERSCHLAG MANUF'G
589
friction. In the words of Judge LOWELL, Ifind that the wax is spread, equalized, polished, and diffused by the defendant's machine. The lower roller, or cylinder, in defendant's machine is described in the exhibit' Bancroft Patent ' as of polished metal. In the exhibit · Bancroft Machine No.2,' it is shown hollow, and connects with steam-pipes, which serve to heat the bath of melted wax, and to remelt the wax, and to smooth the surface of the waxed paper after it leaves the pressure rolls; while the upper pressure cylinder or roller is described in the exhibit' Bancroft Patent' covered with a jacket of rubber, or other suitable material, and suitable means are provided for carrying the web of paper under the surface of the melted wax in the bath, as in several other mechanisms which have been enjoined in the course of litigation under the fifth claim in question. The manifest and necessary effect of the apparatus shown and described in the exhibit' Bancroft Patent,' and rep,resented in the exhibit' Bancroft Machine No.2,' will thus be to spread and diffuse the wax on and through the paper. to remove surplUS wax, and smooth the surface of the waxed paper, by the combinen. agency of heat, pressure, and friction; and the defendant's apparatus, therefore, in my opinion, carries out all the essential conditions of the art or process pointed out in said fifth claim of reissued patent 8,460." Adopting, as I do, the broad construction that has been given to the fifth claim, I think this witness was correct in saying that the defendant makes waxed paper by a method which is essentially the same as the Hammerschlag process. One of the reasons urged against the identity of the two processes, and against infringemerit of the fifth claim, is that the defendant passes the paper under a roller submerged in a bath of paraffine, thus applying the wax to both surfaces of the paper, and then passing it through 'two squeeze-rollers located over the vat. The defendant may not observe the same order in the various steps of the process that we find described in the reissued patent, but it does not follow that the processes are different because the various steps do not succeed each other in precisely the same order. The invention being for a process or an art, the inventor was not restricted to the particular means described in his patent for carrying out his process. In speaking of the defendant's machine and process, in Hammerschlag v. Wood, JUdge LOWELL said: "The defendant's machine, considered as a combination of particular devices. differs somewhat from that, of the patent, and is more simple; it gets rid of one cylinder. The principal difference is that it passes the web through the bath dIrectly, instead of passing the cylinder through it, and then passing the paper over the cylinder. I find, however. that the wax is spread, equalized, polished, and diffused by the defendllnt's machine, and, if the fifth claim of reissued 8,460 is to have the broad interpretation which JUdge BLATCHFOn» appears to me to give it, it is done in a substantially similar way." The record in this case contains the same evidence, in the way of alleged anticipating machines and patents, that has been before the courts in prior suits involving the validity of the claim in question, and additional cumulative evidence of the same character. It may be that, with the Stenhouse machines, and other devices described in the record are capable of being used to some extent in waxing paper, and that with slight modification some of them could be used
590
sU9cessfully for that purpose; but the evidence shows that, prior to the invention, the supply of waxed paper was limited and expensiV'e, and imperfect in quality. It remained for Hammerschlag to devise a means or process of producing lin article superior in quality and finish to anything that had been previously produced, and in quantities which brought it within the reach of the public. His patand at ent has been sustained by the courts in a number of contested cases; and a proper regard for uniformity of decision, especially in litigation of this character, should incline other courts to hold the patent valid against the same, or substantially the same, defenses, until all controversy over its validity is put at rest by a decree of the supreme court of the United States.
LANDESMANN
v.
JONASSON
and others.
(Circuit Court, 8. D. New York. September 4, 1887.) PATENTS
In letters patent No. 296,021, of April!, 1884, to Jacob Landesmann, for an improvemeJ;lt in that class of ladies' cloaks known as" Russian Circulars, "the improvement consists in extending the inner front parts to the back seams, making a close fitting waist, and leaving the outer part loose and flowing. Held, that the improvement was not patentable, neither the tight-fitting garment nor the outside part being new, and the ordinary skill: of those practicing the artofcloak-me;king being adequate to put the nvo together. .
FOR
INVENTIONS-IMPROVEMENT IN CLOAKS-INVENTION.
In Equity. M. B. Philipp, for orator. Wm. A. Jeilner,for defendants. WHEELER, J; This suit is brought upon letters patent No. 296,021, dtlted Aprill, 1884; and granted to the orator for an improvement in that class6f ladies' cloaks known as "Russian Circulars," which consists in extending the inner front parts to the back seams, making a closefitting waist, and leaving the outer part loose and flowing. The defenses set up and relied upon are that this improvement does not constitute a patentable invention; and that, if it does, the orator was not the first into contem. ventor. The statute authorizing the grant of patents plate that the invention for which a patent may be granted must be out. side of the ordinary skill of those who practice the art to which the invention belongs. Rev. St. U. S. § 4888. There were among those practicing this art designers of styles for fashion, as well as for the comJort of the wearers, and makers to carry out the designs. There were cloaks with close-fitting waists before, as well as these on which the improvement was made with the flowing outer portions. What was accomplished, and what was claimed in the patent, was the putting of a tight waist into a Russian circular in place of the: former loose waist. This new style appears to have gone into extensive use for a time, and