American Cone & Wafer Co. v. Consolidated Wafer Co., No. 55

No. 55 | 2d Cir. | Dec 11, 1917

LEARNED HAND, District Judge

(after stating the facts as above). We think it clear that the purpose of the language used was hot to subject every future cone baker which Groset might devise to the assignment; the improvements covered by the phrase were those to that machine, not to the art in general. Every more efficient machine would be an improvement “upon” it, in common speech, but not “to” it. We attach significance to the word “thereto”, and we should attach an added significance as well to “thereunder,” if we could find any meaning for it. As it is, it seems to us rather a bit of scrivener’s verbiage. It is, of course, true that any improved cone baker might supersede that purchased by the plaintiff’s predecessors, and would therefore defeat the grant. Perhaps it would have been legal to bind Groset do assign any future machine against such a possibility; we need not pass upon that question. All we say is that, if the purpose is so broad, the language must not be so vague. Groset was free to make a new cone baker, which might successfully compete with the plaintiff, so long as it was not an improvement “to” the disclosure of his first patent.

It must be confessed that there is still great latitude open; we agree' with the plaintiff that an “improvement” need not necessarily be a physical addition to the machine, leaving all its parts unchanged. Now, it is true that it might be hard, once some reorganization is admitted as possible within the word “improvement,” to draw a satisfactory definition dialectically between one improvement and another. But we are concerned with affairs, not logic, and we look to their circumstances to understand what the parties meant. The necessities of the art fixed many of the elements of a cone baker. It must be made to receive viscous batter in a thin layer between two conical surfaces, mold and cone former, of which one, and preferably both, must be kept hot. The batter might perhaps in theory be run between the faces of fixed members, but the cone is extremely thin, and we think it apparent from common sense that their separability when the batter was poured in was an essential part of any such machine. Thus we have as inevitable features' separable conical members, movable to and from a batter reservoir, and connected with, or movable to and from, a heating apparatus.

There are, no doubt, points of resemblance between the two patents besides these; in each the mould separates to drop the baked cone and the movement of both members to and from the batter reservoir is circular, instead of being reciprocal as might perhaps have been. Beyond these we see no similar features, except those already mentioned, which seem to us inherent in any machine of the kind.- The heating system is radically different; the means to lift the cone former and the mechanism to divide the mold; there is nothing else in the machine. That some of the features are the same is not we think enough; it must appear that the old machine remains enough the same to- preserve its identity. Under just what changes that identity would be lost, we cannot say and we need not. Any decision must appear arbitrary, ■where the test is the vague language of business, and not the precise terminology of logic. We must try rather to assume the posture of the parties at the time, and consider what most men would have thought such language covered. Their test would in some measure have certainly depended upon the, extent of the change; they would have recognized that to recast the details of the whole machine mighf make it a different one, though some features remained in common. Perhaps we can do no more than to say that the extent of these changes in our judgment passes beyond the standard of identity which we think they would have accepted.

If the test may be whether the new machine will read on the claim's of the old, it docs not trouble us. Two features of the claims are not realized; ' i. e., that the mechanism to open the mold shall be at one side of the cone formers, and that the cone formers shall be pivoted. We agree with Judge Veeder that the patent in suit presents too great a departure from the earlier disclosure to fall within the contract.

Decree affirmed, with costs.