"To 'have produced ii,t<> have preserVed it, to have matured it, constitute the immortal claim of England upon the esteem of mankind." It should bell, sourte bf profound. congratulation to the patriotic and the law'-abiding that even the apparent necessity to proceed by information ill cases of thisclass has ,departed; that the people ora unified country are laboring peacefully in the rich fields 'of an advancing civilization; thl1tctil11e is rare; that the impartial and law-respecting investigations olthe wand juries;will bring to the bar of justice the willful lawbreaker, but will in all likelihood discountenance the sinister and malevolent informer who has used the powers of the government to purvey to his malice, or his greed for the perquisites of the witness for prosecution.
HUBEL
v. WALDIE. ale
SAME
fl.
(Circuit Court. 8. J).Nt1IJJ York. June 26,1888.'
t.
The sixth claim of letters patent No. 10,807. issued to Frederick A. Hubel. February 8.1887. for an improvement in machines for cutting off gelatine capsules, being the third reissue of No. 187.279, dated February 13, 1877. described as "the removable mould plate. bearing a series of capsule moulds. secured thereto at regular intervals. combined with and arranged to be held . by and withdrawn from the supporting frame when used for the purposes , ' set forth." is not an extension of the claim in the first reissue, No. 8,440. described as "the plate. R. C, in combination with a series of capsule moulds intervals. substantially as and for the purposes set secured thereto at forth, " the specificatlOns necessarily making a removable frame a part of the combination. 2. BAME-ANTICIPATION.
PATENTS POlt INVENTIONS-REISStJ'E-ENLAltGEMENT---MACHINES J:l'Olt TING GELATINE CAPSULES.,
CuT-
. The said sixth claim is not anticipated by the machines made by Dundas Dick in 1865. described as having moulds connected with frames like window frames. moving up and down, which were attached to the machine. the moulds being brought, by means. of a circular motion, over knives fastened to a stationary circular railway, the frames not being removable in any proper sense of the word.
·
In Equity. On bill for an injunction to restrain the infringement of ·a patent. The first suit is by Frederick A. Hubel against James Waldie, committee of Dundas Dick, who was the owner of letters patent No. 305,867, issued to W. A. Tucker; September 30, 1884. Frederick H. Betta, for plaintiff. A. G. N. Vermilyea, for defendants. SHIPMAN, J ·. These two bills in equity are based upon the alleged infringement of letters patent No. 10,807, dated February 8, 1887, to Frederick A./Hubel, for an improvement in machines for cutting oft' gelatine capsules. The original patent, No. 187,279, was dated Feb-
lIPBEL fl. WALDIE.
415.
rQary;13,1877; the6rst reissue, No. 8,440, was Octobed, 1878; the second .reissue, No. 10,437, was dated January 15, 1884. These two actions llre brought to restrain the us{'! of the same machine, which the second defendant uses under authority from the first. A suit in equ:ity for the alleged infringement of reissue No. 10,437, by the use of the same machine, was tried in this court in1886. The sixth claim of that reissue, and the only one which was iufringed, was held to be for a different invention from that claimed either in the original patent or in the first reissue, and to be void because application therefor had been postponed for an unreasonable time. The original patent, the first and second reissues, a description of the patented and the defendant's machines, and the history of the litigation upon the patent are given in the opinions in that case. Hubel v. Dick, 28 Fed. Rep. 132, 656. No written opinion was given in the case tried upon No. 8,440. After that decision, thC3 plaintiff surrendered No. 10,437, and obtained No. 10,807, fOI;thepurpose of avoiding the objections which had been made to the sixth claim.. Thequ stion in tllis case turns ,upon the validity of the sixth claim of No,. 10,807, which is as follows: "6. The removable mould pIil.te, bearing a series of capsule moulds s,ecured thereto at regular intervals, combiued with, and arranged to be held by and withdrawn from, the supporting frame, and when used as and for the purpOlleB set forth." . The first reissue was seasonably applied for to correct the manifold imperfectionsofthe original patent; its sixth claim being for "the plate, R, 0, in combination with a series of capsule moulds secured thereto at regular intervals, subl:ltantially as- and for the purposes set furth." If the corresponding claim of the present reissue is for a different invention from tha,t described in and secured by the sixth claim of the first reissue, it is void by reason of the delay in applying for it. The contention of the plaintiff is that it is.for the same invention, which a just constructionofthe quoted claim of No. 8,440 secured, and is so guarded that it claims nothing which may be considered as having been abandoned in No. 10,437· The patented invention gave to the public the first efficient and successful automatic capsule cutting machine. It had no predeeessor. The moulds and plate of the sixth claim are a series of moulds or pins arranged in rows, at regular intervals from each other, and secured in upright positions in a plate called a "mould plate." Mere hand plates with moulds were old, but the specification of reissue No. 8,440 pointed out that the moulds secured to the plate "are withdrawn from the frame by turning down the projection, u, and then they are immersed in the proper depth in the gelatine prepared for the purpose. After the moulds have received a coating af the gelatine of sufficient thickness, the slides, R, 0, are placed on the platform, D, in such position that .ea,ch of the moulds ill presented to the spaces between the cutters.» After tpe capsules have been cut, the slide is withdrawn, placed in the drying kiln to allow the capsules to dry,and a. fresh plate is inSo much time is required to dry the cap'3ules, and to cool the Uloulds, that 960 plates are necessary to form a ,,"ai-king set for one cut-
416
FEDERA.L
R'EPORT1:k.
ting machine, working at an ordinary rate of speed, so as to the machine to be constantly in use. It is obvious that plates or slides removable from aframe into which they can be inserted with their tine-covered moulds, and by means of which they are presented to the cuttting mechanism, are necessary in an automatic cutting-machine. Th,e invention ofthis part 'of the mechanism was a removable plate or slide, with its moulds, in connection with a frame supporting the same when in place, and necessarily permitting the plate to be removable and withdrawn for the purposes of the machine. Inasmuch as the sixth claim of the reissue was for the plate moulds" as and for the i purposes set forth,'.' and the description was of a plate neceBsarily removable to and from a, frame, and the force of such words puts into the combination of specifically named parts "such other parts or devices as the purposes named in the specification render necessary; in order that the parts specifically'mimed may be operative," I think that the plate, with its moulds, of this claim, is the plate removable to and from a frame, thus making the frame a member of the combination. The law being rigorous against the validity of unreasohable with expanded claims, I am not in favor of giving elastic constructions to old claims for the purpose of sustaining a reissue, but I think that the sixth claim of No. 807 is a return to, and not a new departure from, an unstretched construe:: tion of the sixth claim of No. 8,440, and is also limited to the use of combination in a cutting-machine. The infringement ofthe sixth claim was proved; and was not denied by any testimony in the record.'. was contended by the plaintiff, upon this hearing, that the and fourth claims were also infringed. This point was not made upon the trial ofthe Dick Case, and I think was properly given up. Those claims are confined to the particular cutting mechanism which is made use of in the machine, and which is described in the patent.' The Dick machine of 1865 is again relied upon by the defendants as an anticipation of the sixth claim. !thad moulds connected with frames,like window frames, moving up and down, which were attached to the machine. These moulds are said to have been brought, by means' of a circular motion, over knives fastened to a stationary circular railway. These frames were a very different thing from the removable mould plates of the Hubel machine; they were not removable in allY proper sense of that word. In fact, the two machines and their respective subcombinations have very little in COUlmon with each other. There is nothing else in this record, or in that of Hubel v. Dick, upon reissue No. 10,437, which is of importsubject ofinvention or patentable novelty. The testimony ance upon in the case upon No. 8,440, which, by stipulation, may be read and considered here, and which is applicable to the sixth claim, was directed to the fact that mould plates having a series of capsule moulds secured thereto at regular intervals were old; but that testimony has become unnecessary in view of the statement in the nature of a disclahner ill the present reissue, which is as follows: . "I do not claim broadly any mould plate having a series of capsule moulds, as dishes 80 arranged, and plates with a handle at the back, have been pre-
·CELLULOID
CO. fl.' AMERICAN ZYLONITE CO.
417
viollsly d'escnbed as used simply' by moulding certain forms of capsules; I only claim a mould plate having the moulds secured thereto at regular mtervals, when the same is used incombination with the frame of an organized capsule cutting so as to' be held' therein and removable therefrom." .
Let there be Ii. decree for the plaintiff against an infringement ofthe sixth claim of the patent in suit, and for an accounting in respect to the .' use of that claim.
CELLULOID MANUF'G
Co. et al. v.
AMERICAN ZYLONITE
Co. et ala
(Oircuit (Jourt. S.
n. New
York.
June 26, 1888.)
cuffs haTing outer sheets or layers of celluloid and an interlining of textile or tlbrous materials. Parkes (English patent No. 2,859, of 1855) made sheets' of collodion, (gun-cotton dissolved in alcohol,) and also cementedtogether sheets of different substances, as alternate sheets of collodion and cloth. 1;3ut . as Boon as the solvents were evaporated. the collodion became brittle and flaky, and,was useless as a material for collars and cuffs. In the Ray & Taylor UnitedStatea patent No. 48,239, for a paper collar or cuff enameled with a compoaition of collodion and gelatine, the aurface of collodion ia made to ad· here to paper by meana of an intervening layer of gelatine, but ia not aub·' stantial, liable to unevenness, and to have air'pubbles, and to be imp.erfectly; attached to the paper, and is not water-proof. lIe/d, that the Sanborn patent is not void for want of novelty. . ' SU(lb patent being for a new material. and an original invention, and not for a collar. the principle of Gardncr v. ,1!crz, 118 U. S. 180,6 Sup. Ct. Rep. 1027, that a patent cannot be taken foran old article when. made for the first time out of an old material, merely because the idea of its suitability has occurred, has nOI'Pplication. , '" A sheet of being of itself unsuitable for collars and cuffs, and thelie having been no previous knowledge that its icombination with ari interlining would render it snit,able for such purpose. the fabric is not merely anew a1'" ticle. of commerce without invention. . ' . . . .
I.
SAME-'!NVENTION.
8.
SAME..
I .. "
.;..
.'
4.
SAME-INFRINGEMENT.
Upon one side of a fabric of two layer. of mn'slin with an intervening'layer of paper. furnished by one defendant,·;the other defendant attaChed a Iliyer of returned it to theflrst. with knowledge that it was to be made into collars' and cuffs. The latter then' cut out the blanks somewhat larger than the finished article. and turned over the fabric at the edges, having cut away the muslin surface so as to make the .edge thinner. The edges are securedwith paste, and thus two outer sheets of zylonite with an interlining of muslin and paper are produced. Defendants claim that they simply make a collar by turnin,lt ahem upon an unpatented fabric. Held, an infringement. Following 80 Fed. Rep. 487.
In Equity. Bill by the Oelluloid Manufacturing Company and the Celluloid Novelty CoJllpany against the American Zylonite 'Com.plmy, the Standard 0911ar Oom.pany, .And, tpe Taylor &. Tapley ManufacturingCompani, to v.35F.no.6-27 '
