| U.S. Circuit Court for the District of New Jersey | Jul 11, 1893
The complainant, the A. B. Dick Company, filed its bill, of complaint in this cause against the defendant, William G. Fuerth, to restrain an alleged infringement of letters patent No. 377,706, granted to one John Broderick, February .7, 1888, for a “prepared sheet for stencils,” the title to which, by .mesne assignments, is now in the complainant. In the specifications of the letters patent Mr. Broderick declares that he has invented certain new and useful improvements in preparing sheets for stencils or transmitting printing sheets; that in the practice of his invention he employs a thin porous sheet of material, impregnated or coated with a gummy or waxy substance, or other material impervious to ink, and of such porosity, and a gummy or waxy filling of such consistency, that when the impregnated or
Them are three claims in (lie letters patent, which are as follows : í
‘•(1) A transmitting printing shoot, consisting- of a thin, porous sheet, through which ink is readily transmitted, such as Japanese dental paper, or yoshino. tilled, or coated with a substance imxicrvions to ink, as paraffine, substantially as described. (2) A transmitting printing sheet, consisting of a thin, porous sheet, through which ink is readily transmitted, such as Japanese denial paper, or yoshino, filled or coated with a substance impervious to ink, as paraffine, and having this filling dr coating removed at the points or lines of printing, substantially as described, for the purposes specified. (3) A prepared sheet for stencils, consisting of a sheet of Japanese dental paper, or yoshino. coated with a substance impervious to ink, substantially as described.”
Of these claims only the second and third are involved in this controversy. Looking at the invention, then, broadly considered, it seems to consist of a novel stencil, or rather, perhaps, a new transmitting printing sheet, extremely thin in substance, which is coated or tilled with some soft waxy substance impervious to ink, and yet is so porous (hat in the removing of the tilling or coating of wax; at any point by pressure, the sheet itself, without disturbance of fiber, becomes open to (he transmission of ink through it. Ko that the result arrived at by Mr. Broderick in his invent ion, if it be, indeed, an invention, is this: That the stencil is
“The preparation and manufacture of stencils was witbin the domain of common knowledge among persons skilled in the art, and each element in each claim was well known, and the function which each element would perform, combined with other elements specified in each of the claims, wds 'well known. The alleged invention required only mechanical skill, and no more than ordinary knowledge and judgment in the selection of a more or less porous paper of a class and kind then well known in the market and to the*837 li-ade, and in common and public use for file same purposes, and prepared in the same way, and of varying porosities, according to the style and character of the work required.”
Of course, if the argument of counsel, sound in itself, had been fortified by facts in evidence, it would have ended this litigation, in this court at least; but, after a most careful consideration of the matters involved in this controversy, I am unable to assent to the conclusions insisted upon by the defendant as being well founded.
I do not think it necessary to examine minutely each one of the alleged anticipating patents, nor to x>oint out all the particulars which differentiate them from the invention of Broderick. Nor can it be necessary to consume time in explaining just what the state of the art displayed. It is true beyond question that the- elements which, combined, appear in and characterize the stencils in common use, as well as the inventions covered by the letters patent, are, in cases where i>ax>er forms the basic material, without exception, porous [taper upon the one hand, and a tilling or imx>regnation or covering of wax upon the other. But I do not find any stencil known to the art which would fail to come within the definition of a stencil as already given; that is to say, in each case the figure or letter or pattern which is to be copied by the use of a stencil is primarily formed by cutting or perforating in some wise through the subsrance, plate, or material, or whatever it may be, which bears the coating of wax or gummy substance. Thus, in some of the patents,' the thin pap)er covered with wax is laid upon a roughened under-surface, and the figure to be copied is then traced over it; pressure being had, ihe sharp roughness of the under-surface penetrates through the thin, pjorous paper, causing openings, minute to be sure, but very close together, making an almost continuous cutting, through which ihe ink is transmitted to the sheet upon which the printing is to be done. In others, peculiar kinds of acid ink are to be used, which eat through the fibers or a material of the surface supporting the wax, and so practically make the stencil by cutting’ through the surface of the stencil itself. In yet other instances the writing or printing is done by a notched or roughened wheel of small diameter, which forces its way through the fibers or surface of the material. The result in each case is the same. The basic material is cut through or perforated. All these devices differ, I think, from the 'improved stencil now under consideration. Does this latter stencil show invention? It is very difficult to define what invention is. It certainly is not reasoning. It does not arise from any logical deduction. A necessary conclusion from certain admitted premises will not support it. Inferences sach as a man of ordinary intellect would naturally draw when he is possessed of the ordinary skill and knowledge of the art in respect to which the inference may he drawn, falls very far short of being invention. But if one creates, not only by the operation of mind, but as well actually, physically, new means by which is necessarily obtained a certain specific end, means which are novel to the creator as well
Now, as we have seen, before Mr. Broderick’s alleged invention, stencils were made for copying purposes by cutting through or perforating the basic plate or material. The letters to be copied, or the figures or the words or the designs, were bodily cut out of the material which formed the basis of the stencil. The result was that in all the stencils which had been made previous to the invention of Mr. Broderick serious difficulty had been encountered, especially with certain letters called “loop letters;” such, for instance, as B, D, O, P, and Q. It was impossible to make these letters perfectly, simply from the impossibility of supporting the center" part of the letter, in any other way than by attaching it to the body of the stenci-l, thereby making the letter 'itself imperfect; or, if not so attached, the letters would, so far as the loops were concerned, become a mere open space, without exhibiting the peculiar inner lines of the letters themselves, which gave them their distinct form and shape, and when used as stencils would cast upon the paper simply a blot. It was to overcome this defect in all stencils, and to make a perfect letter or design or figure, that Mr. Broderick made his invention. He discovered, after a long search and many experiments, that the paper known as “Japanese dental paper,” or “yoshino,’-’ was so very porous that its fibers need not at all be cut or destroyed or abraded in the manufacture of stencils; and that, if he covered yoshino paper with a waxy or gummy substance, very soft in consistency, and then removed by pressure only the wax in conformity with the shape of the letters, figures, and designs which he desired to print, the ink would be easily transmitted in the printing process through the paper where the wax had been removed, without requiring any severance or disturbance of the fibers of the paper itself. In making loop letters, therefore, by this method and means, the inner part of the loop would still be firmly a part of the stencil itself, the fibers running- from the loops to the body of the paper not being disturbed or cut or weakened in any degree. Hence a perfect letter or design or figure was produced. It is apparent, therefore, that there is -a very great difference between the stencils which were described in the Broderick patent and the stencils which were generally in use, including the stencils which were covered by the letters patent relied upon by the defendant. As has been said before, in all the stencils which were known before they were 'improved by Broderick, it was absolutely necessary that the substance or material or fiber of the stencil itself should be cut or perforated in the formation of proposed letters, and in this respect they are all radically different from Broderick’s invention; for by his invention the stencil is made by removing the waxy coating, and ■by leaving intact the basic substance of the stencil plate. And just here it is well to notice that not only did Broderick’s invention
It may he argued that, after all that can be said about the advantages arising from the peculiar consistency of the wax used by Broderick, the difference between it and the harder wax of other stencil sheets is only a matter of degree; bnt this is hardly so. The primary object, of using wax on stencil sheets is simply to render the sheet impervious to ink, save where the sheet is cut away in the delineation of the object to be copied. If the use by Broderick of a softer wax than had qver been purposely used before was for this purpose alone, the question of degree might well be raised; but such was not (he only, nor the chief, use to which the wax selected by Broderick was purposed. He chose the softer wax for his stencil coating chiefly because it was to become practically the stencil. In impressing upon the softer wax the letters and figures to he copied, he easily displaced the wax itself because of its very softness, at the very points or lines of impression, and so made a perfect opening ox* place, through which the ink passing traced a perfect copy through the network of fibers left bare by such displacement. Even the defendant admits that for such purpose a hard wax is not only unsuitable, but unusable; hence there can be no question of degree raised, for the harder wax cannot be a factor in the problem solved.
In the course of the argument, counsel for defendant very strenuously insisted that one of the patents which has already been generally referred to as an anticipating patent was in reality a foundation patent for the use of Japanese paper in the construction of stencils. He referred to lío. 332,890, which was granted
Another technical defense is that the letters patent in this case were granted after examination by the officials connected with one department of the patent office without knowledge of the patent previously granted to Gestetner for Ms paper, or to Broderick for Ms file plate patent. In fact the allegation is that some one in Broderick’s interest surrepiitiously removed the Gestetner patent and the Broderick file plate patent from that division of the patent office where the patent in suit was being examined, for the purpose of keeping from the knowledge of the examiner in that department the existence of those patents. A large amount of testimony taken in the cause relates to this alleged fraud. I shall not rehearse it hem It is enough to say that, in my judgment,
ISTor do I think the objection raised by the defendant to the validity of the letters patent under consideration for want of sufficient specification of the said “prepared sheets for stencils so as to enáble those skilled in the art to make, produce, and use the same” is well taken. Taking the whole patent together, I think there can be no question that the invention and the mode of use is clearly described and set forth by Broderick, so that he who runs may read and understand. There seems to loe neither ambiguity nor uncertainty in the language of the specifications and claims. They are concise, terse, and well expressed. As is quite usual in cases of this sort, the evidence' touching infringement is contradictory. I think the weight of the testimony preponderates in favor of the complainant, and upon a careful consideration of all the testimony upon this part of the case I am of the opinion that it has been satisfactorily proved that the defendant did infringe these letters patent, as he has been charged. I think it only fair to say that while, in my opinion, Broderick’s invention displays novelty and patentability, and that he has certainly accomplished a- desired end by the creation and use of novel means, and that as such he is entitled to that protection which the law grants to a successful inventor, yet such conclusion has been reached only after much hesitation. If such judgment be based upon insufficient facts, or unsound reasoning, I am glad to know that the defendant can find his remedy in a court of review. 'There must be a decree for the complainant, as prayed for.