740
F.lDERAL REPORTER,
vol 52.
CELI.ULOID MANUF'G
Co.
'/1. ARLINGTON MANUF'G CO.
et ale
(C(rcuit Court of AppeaZ" Third C(rcuit. November 15, 1892.) PATENTS FOR INVlINTIoNS-LnnTATION OF CLAIM.
Letters patent No. 199,008, issued February 5, 1878, to the Celluloid Mllnufaotul' ing Compllony, for an "improvement in the manufacture of sheets of c",Uuloid and other plastic compositions, .. while covering an invention of a primary charllocter, and therefore entililed to a liberal construction, llore restricted by the terms of the cilloims and speciJlCllotions to the use of llo slab of celluloid fastened for the purpose of planing into thin sheets to llo /rrooved or ohanneled plate through the agency of hellot, pressure, and the contraotile energy of the material in cooling, and are therefore not infringed by a devioe made under pllotent No. 387,947, issued August 14, 1888, to Franois Curtis, wherein the celluloid slab is held on a perfeotly smooth plate by atmospheric pressure and adhesion only. 44 Fed. Rep. 81, affirmed.
Appeal from the Circuit Court of the United States for the District of New Jersey. In Equity. Bill by the Celluloid Manufacturing Company against the Arlington Manufacturing Company and others for infringement of a patent. The circuit court dismissed the bill, (44 Fed. Rep. 81,) and complainant appeals. Affirmed. Rowland an and Frederic H. Betts, for appellant. John R·. Bennett, for appellees. Before .ACHESON and .DALLAS, Circuit Judges, and WALES, District Judge. ACHRSON, Circuit Judge. This is an appeal from the decree of the circujtcourt of the United States for the district of New Jersey in a suit in equity brought by the Celluloid ¥anufacturing Company, the appellant here, against the Arlington ManUfactuting Company and others, for the alleged infringement of letters patent No. 199,908, dated February 5, 1878, fQr Itn "improvement in the'manUfacture of sheets of celluloid and other plastic compositions," granted to the first-named company, as assignee of John W.Hyatt, the.inventor. The case, as presented to us, involves the single .question of infringement, and the determination of that question depends upon the construction:to be given to certain of the, claims of the patent·. The invention (the specification of the patent declares) "relates to an ,improved apparatus and process for t.he manufacture of sheets of plastic composition, and, in the present ;ustance, is applied to the article known ail 'celluloid.'" At the openiqg of the specification the following explanatory statements occur: ".Heretofore the great obstacle to successfully planing or reducing plastic Or pliable material to sheets ,by securing it upon a surface and then feeding it ,to, a fixed cutting edge been that the material was apt to rise from the sUrface supporting it, ar,td fide up the knife; thus cutting the material irregularly, or arresting the op'erll.tiou. Rel'lce, to hold the slab of material firmly upon the surface sustaining it pending the operation of shaving or planing it into strips has been esttlemed a great desideratum" and is one of the objects effected by the mechanism and process hereinafter set forth." "The objects of the inyention are accomplished by causing the union in a single slab of a number Qf !ilheets or pieces of celluloid, this being effected 1Iy
CELLULOID MANUF'G 00. V. ARUNGTON MANUF'G 00.
741
means of pressure and heat, which contemporaneously amalgamate the sheets into a slab, and also force portions of the under side thereof into channels or inclined grooves in the surface upon which the slab rests, which grooves are so arranged that upon the hardening and shrinking of the material the por. tions thereof in the grooves operate as a series of hooks or clutches to retain the slab in place, after which the plate supporting the slab is placed upon a machine for planing, whereby the material is shaved or planed off in sheets or pieces of any desired thickness, according to the capacity of the machine. the sheets being subsequently dried in open frames, Whereby they acquire and retain formation." It is further stated that unseasoned celluloid, when heated above 150 0 Fahrenheit, becomes plastic, and can be easily manipulated so long as it is warm, but, becoming cool, it ha:odens, and while losing its caloric has a slight tendency to shrink. The specification proceeds to set forth an apparatus whereby the objects of the invention are accomplished, and describes the base or bed plate, upon which the slab of celluloid is to be mounted, as having in the central portion of its upper surface a slightly raised boss, the entire upper surface of which is covered by grooves and intermediate ridges or elevations; these grooves, on either side of the vertical longitudinal center of the boss, inclining inward and downward towards the vertical central longitudinal plane of the plate. The purpose of this construction, it is stated, may be effected, though not so satisfactorily, by means of apertures of any sired form which have an inclination downward towards the said plane; the apertures, or some of them, on opposite sides of the said center of the plate, having similar inclinations towards the said central plane. The described operation of forming the slab and fixing it securely upon the plate is briefly this: A number of rough sheets of crude celluloid are superposed, one above the other, upon the bed plate in a chase or mold, and by the application of hydraulic pressure and of heat the celluloid is softened and solidified, the lower part of the plastic mass being forced into and completely filling the grooves on the face ofthe boss. Then, after the application of water or other cooling agent, whereby the celluloid is chilled and hardened in place, the chases, or sides of the press, are removed, II and the material is found in a homogeneous slab secured upon the boss." The specification here states: "Being exposed to the air, the celluloid shrinks somewhat, which causes the portion thereof which has been forced into the inclined grooves to operate as clutches or hooks, grasping the metal with immense power, and holding the slab firmly by a tension towards the center against any movement odorce, either lateral or upward. Thus is the prime object of the invention accom· plished." We do not deem it necessary to set forth with particularity the other two steps of the Hyatt process, namely, the cutting and drying of the sheets, and hence we pass over so much of the specification as relates to the same and to the devices employed therein. Near the close of the specification we find the following paragraphs relating to the first step of the process: .. It is obvious that, after one of the slabs has been shaved off, leaving only a thin film of celluloid upon the plate, a second slab may be secured thereon
742
.(;'1 n'r
ltEDERAL REPORTER, voL
52
by or othersuitab1E; solvents, that will cause the slab wlth'tfllH'Ihl1l'ernalningupon the'plate. when the st-db'thus manfpull11'ted as thUtighlsecured upon ,', ' the plate hi the'tbllnnel.'Jlfrst above detltiletl. O J , "The'pla'te,iAi i!Jay)begrooved laterally 01' otherwise, and bars of wood tie. cured in the grooveS'8cJ.'8S to be flush with, or slightlyaboV8{the surface of the plate, formed upon thiS formation." Then fo11o"l:1 ,this. pregnant statement: "The purpose of retaining the slab in position may be effected also by ver· tical apertures In the plate, or, in fact., apertures or elevations of any order In or upon or about which tpe plastic composition can be forced, and there permitted to harden; the essence of this. element of the invention being to affix a plate (slab) of plasticoomposition upon a plate immovably by combined heat and pressure and subsequentcoolinf{." . The patent has 31 claims, but ,by the defendants of the 28th, 30th, and 31st cbtimsonly is affirmed. Those claims are as fol· lows: ' , "(28) The within-described process making sheets of plastic cOmposition, which conllists-First, In forming and causing the adhesion of a slab of the' composition to a Illate; second, subjecting such slab to the operation of a plane to reduce it to:sheets: and, third, drying the sheets thus produced in a frame, substantially "sset forth." "(SO) A slab ,of plastio composition. fixed upon a bed or plate by the means substantially as herein specified, fc;>rthe purpose of enabling the division or of'theslab, substantially as set forth." "(31) A pl'lte II slab of plastic composition affixed thereon by means of heat aJid pressure, substantially as set forth, and for the purposes specified." The court below was of the opinion that the letters patent in suit are limited to an 'apparatus .alldprocess whereby the slab of celluloid is affixed to a supporting Burface during the operation of planing it into sheets by the employment of the contractile power of the material developed in the cooling of the heated mass, and therefore adjudged that the defendants did not infringe allY of the chUms of the patent by the use of an allmetal plate; having a perfectly surface, to which the block of celluloid is held by atmospheric pressure and adhesion only, agreeably to the method described in and coyered by letters patent No. 387,947, dated 14, 188,8, issued to Francis Curtis, assignor to the Arlington Company, olle of the appellees. The c,onstruction which the court l:>elow thus gave to the patent in suit is the same, it reo ceived in the case of Celluloid Ma,nuj'g Co. v. American Zylonite Co., 31 Fed. Rep. 904, a suit on this patent in the circuit court of the United States for thedistrkt of Massachusetts, Mr. Justice GaAY there delivering the of the pow-to If the court below was right in its views as to the scope qf the HYlitt patent, its conclusion upon the question of infringement was indisputably correct, for clearly, in the practice of the defc;mdants' u}ethod of securing the slab of celluloid to a smooth metal plate, the contractile force of the material is not utilized. l'his the appellant's expe;t:tjMr. Brevoort, concedes. He testifies that in the defendants' m"ethod" there is no holding due to, the shrinking of the material
CELLULOID MANUF'G CO. f1. ARLINGTON MANUF'G CO.
743
as it cools;" and he admits thatif the claims are limited to a block fixed to the plate 'tby the power it exerts in shrinking, then the defendants do not infringe." We are therefore brought to the consideration of the controlling question, what is the true construction of the patent in suit, with partioular reference to the three claims alleged to be infringed by the defendants? Now, we agree with the appellant that the patent describes and claims a process. But what is the nature of. that process? The specffication no uncertain answer. From first to last-as our above quotations demonstrate-it lays special stress upon the shrinking quality of the celluloid in cooling, and its consequent exercise of a contractile agency in holding the slab to the plate in a fixed position, while it is subjected to the strain of the plane. Thus, at the outset, it is stated that,upon the hardening and shrinking of the material, the portions thereof in the grooves a series of hooks or clutches to retain the. slab in place. Then, after describing the operation of forming the slab by heat and pressure, it is stated tliat upon exposure to the air the celluloid shrinks somewhat, which causes the portions which have been forced to act as clutches or hooks, grasping the metal into the inclined with immense power, and holding the slab firmly by a tension towards the center against any mO\Tement or force, either lateral or upward. Then follows the significant declaration, "Thus is the prime object of the invention accomplished." In the face of this announcement, how can it be said that the utilization of the contractile energy of the slab is not a necessary feature of the patented process? But this is not all. The specification proceeds to state that the purpose of retaining the slab in position may be effected by vertical apertures, or by apertures or elevations of any order, in or upon or about which the plastic composition can be forced, aod t.here permitted to harden; "the essence" of this step of the invention being to affix the slab upon a plate immovably" by combined heat and pressure and subsequent cooling." The subsequent cooling is thus declared to be of tbe substance of the invention. It will be perceived that Hyatt's real discovery was not that celluloid, in cooling, would shrink, but that the contractile energy thereby developed could be tumed to the achievement of that which had been "esteemed a great desideratum," namely, the affixing of a slab of the material upon the sustaining surface immovably; and the conception is well expressed in the first claim of the patent: II A slab of material secnred upon a surface through the operation of the power it exerts in shrinking acti.ng upon two or more elevations or depressions on or in the surface on which the slab is placed." The specification throughout contemplates the interlocking of the slab with the plate by its own action-its contractile power-under heat, pressure, and subsequent cooling. This is the underlying principle of the invention disclosed by the patent. No other agency for accomplishing the desired result is suggested, nor is any other fairly deducible from anything set forth in the specification. The method, briefly referred to, of uniting homogeneously a second block with the film of celluloid left
744
FEDERAL REPORTER,
vol. 52.
on the plate, obviously is a mere modification of the first-described operation, .and introduces no different principle. Nor does the suggested form of plate, with bars of wood secured in the grooves, so as to be flush with or slightly above the surface of the plate, indicate any departure from the interlocking and clinching action. In his original deposition, Mr. Brevoort,upon this point, testified: like the first one, contemplates an interlocking of the slab with the plate; the woOd presenting, by reason of its structure, spaces within which portions of the block could penetrate and harden." .
This, we think, is the natural and correct view, und it is confirmed by the testimony of Mr. Hyatt,who states: "Before I made use of either of these particular forms of apertures, I the block of celluloid to adhere to a piece of coarse-grained wood, by Dl!lans of solvents of the ceUul.oid. and also by heat and pressure. which cauB.ed the celluloid to enter the pores or intel'stices of the wood. and which held the blocks while being cut into sheets." ,
.; But, as we have seen, the defendants not only dispense with all apertures, and elevations and their equivalents,-using a persmooth surface all metalplate,-but they employ a force to retain lthe slab of celluloid in place entirely different from that of the Hyatt inIvention, and operating in a different way. In a word, the two processes jdiffer in principle. I Now, undoubtedly, where an invention is meritorious, and of a pri. :mary character, as seems to be the case here, the patent should be liberso as to secure to the patentee his real invention as he lally ,has disclosed it to the public by his specification; and, if it be for a proIcess, he should be protected from the unauthorized practice of it by !others, by whatsoever modes or Jorms of apparatus they may apply the iprocess. Tilghman v. Proctor, 102U. S. 707; Machine Co. v. 1129 U. S.· 263;. 9 Sup. Ct. Rep. 299; Bene v. Jeantet, 129 U. S. 683, 9 ISU.P. Ct. The appellant's pretensions, however, far transcend ithe limits of these settled and just rules. Virtually the appellant claims :all means, however differing in mode of action and principle from the ,process described in the patent, whereby a slab of celluloid is caused to !adhere to a plate for the purpose of planing it into sheets. But a con!struction which would so expand the appellant's exclusive rights is al:together inadmissible under the terms here chosen to express the invention. McClain v. Ortmayer, 141 U. S. 419, 12 Sup.- Ct. Rep. 76. As was said with reference to a patent for a process in Tilghman v. Proctor, 102 U. S. 729,730, so is it to be said here, that the true meaning of the claims is to be sought·by comparing them with the context of the specification; the description therein contained giving to the claims the proper construction and qualification. Moreover, claim 28 is expressly for "the within-described process," and each of the three claims here in question has the clause, "substantially as set forth," which connects the claim with the specification, and thus limits it. The Complanter Patent, 23 Wall. 218.
HUNT V. MOLINE PLOW CO.
745
In this connection we deem it worthy of notice that claim 30, as originally formulated, read: "A slab of plastic composition fixed upon a hed or plate by mechanical or adhesive action," etc.; but, pending the proceedings in the patent office, the applicant, by his own voluntary act, it would seem, amended the claim by striking out the words, "mechanical or adhesive action," and substituting the clause, "by the means substantially as herein specified,"-a change which appears to us to indicate an intention on his part entirely inconsistent with the position upon which the appellant now insists. Upon the most careful consideration of the whole case, we cannot avoid the conclusion that the court below rightly construed the specification and claims of the patent; and accordingly the decree must be affirmed.
HUNT ". MOLINE PLOW
(Circuit Court, N. D. DUnois, So D. Ootober 8t, 1899.) PATENT8 POB INVENTIONB....LIOENBE-RoYALTY-REBCI8810N OP CONTRACT.
Before the issue of a patent the patentee agreed to grant an exclusive 1I0enS6 to manufacture under it, in consideration of the licensee's agreement to pay a certain royalty, the agreement prOViding that, if the licensee should decide at any time not to continue making the patented device, then the license and the agreement should be surrendered withoutdamagcto either party. The licensee, having found that the patent, when issued, did not include all the claims he supposed it did, notified the patentee that he could not go on with the contract, paid him royalty on all the machines made up to that time, and proceeded to make others under a different patent, embodying substantial changes in the machine. BeZd, that. the pav. entee was not entitled to royalty after he received said notice.
In Equity. Suit by Homer H. Hunt against the Moline Plow Company for an accounting for royalties for the use of a patent. Bill dismissed. John G. Manahan, for complainant. Bond. Adams & Rickard, for defendant. BLODGETT, District Judge. The bill in this case seeks an accounting from the defendant to the complainant for the use of a patent, of which the complainant is assignee, granted to George W. Hunt, September 25, 1883, for a "wheel plow." The facts as they appear from the proof are substantially these: The patent in question was applied for by George W. Hunt on the 14th of December, 1882, and in the spring of 1883, some time in April, he brought to the shop of the defendant in Moline, nI., a plow, which he represented was constructed in accordance with his patent. Some of the officers and managers of the defendant exam. ined the plow, and from that inspection concluded that it would be a useful and profitable plow for the defendant to manufacture; and after some negotiation the parties entered into an agreement, which is called "Exhibit D" in the proofs, in the following words: