272 F. 1 | 1st Cir. | 1921
Lead Opinion
This is an appeal from a decree of the District Court for Massachusetts in an equity suit charging infringement of letters patent Nos. 790,021, 790,022, and 790,023, issued to James Arkell May 16, 1905, on applications filed December 21, 1901, July 17, 1903, and May 26, 1904, respectively. The first patent is for a process for making stretchable crinkled paper from finished paper for wrapping or packing purposes; the second is for a machine for making such paper according to the process of the first patent; and the third is for a process and a machine for making paper of this character, in which the extent of the crinkling is regulated to allow the required amount of stretch. The patents are owned by the plaintiff. The defenses are anticipation, noninvention, and non-infringement.
The process of No. 790,021 consists in taking suitable finished paper, moistening or saturating it in one or two baths, smoothing or stretching it laterally, pressing it against a smooth cylinder, so that it will closely adhere thereto, bringing it in contact with an obstruction, known as a doctor blade, which crinkles the paper, and then removing and drying the paper; the crinkles rendering it stretchable.
The machine of No. 790,022 for carrying out tlie process of 790,-021 consists in substance of a tank 9, in which rotates a drum 10, curved cross-rods 63 and 65 to laterally stretch the paper, a smooth roll partly submerged in tank 17, a press roll %7, a ¿octor blade 36, and a carrier J9 to, receive the crinkled paper as it comes from the doctor and carry it away to the driers.
In No. 790,023 the process and machine are in all substantial particulars the same as the process and machine of the patents just spoken of, with the single exception that the carrier is so constructed that its speed may be regulated with reference to the' speed of the roll and the discharge of the crinkled paper at the doctor as to take out a definite portion of stretch in the crinkled paper and leave in it the amount desired.
“21. Tlie process of making stretchable paper, such as is suitable for wrapping or packing purposes, which consists in passing finished paper through*5 a saturating bath; depositing it in a wet state upon a smooth-surfaced roller; thereafter squeezing it in close adherence to said roller; crowding the wet paper back against itself, while adhering to said roller, and thereby forming crinkles in the paper; and drying the paper thus crinkled, and rendering the crinkles permanent and the paper stretchable.
“22. The process of making stretchable paper, such as is suitable for wrapping or packing purposes, which consists in passing iinished paper through a saturating bath; depositing it in a wet state upon a smooth-surfaced roller ; thereafter squeezing it in close adherence to said roller; crowding the wet paper back against itself, while adhering to said roller, and thereby forming crinkles in the paper; and drying the paper thus crinkled, and rendering the crinkles permanent and the paper stretchable; the wet paper being extended laterally before it is crinkled.
“23. The process of making stretchable paper, such as is suitable for wrapping or packing purposes, which consists in wetting finished paper; depositing it in a wet state upon a smooth-surfaced roller; wetting the paper again while on said roller; thereafter squeezing it in close adherence to said roller; crowding the wet paper back against itself while adhering to said roller, and thereby forming crinkles in the paper; and drying the paper thus crinkled and rendering the crinkles permanent and the paper stretchable.”
There are five steps called for by claim 21: (1) Wetting the finished paper, by passing it through a saturating bath; (2) depositing it in a wet state upon a smooth-surfaced roller; (3) thereafter squeezing it in close adherence to the roller; (4) crowding the paper back against itself, while adhering to the roll, causing the crinkles in the paper; and (5) drying the paper thus crinkled. In claim 22 there is an additional step — that of extending laterally the wet paper before it is crinkled. In claim 23 the lateral extension is omitted, but, as an additional step to claim 21, provision is made for rewetting the paper while it is on the roller.
In patent No. 790,022 the claims in issue are Nos. 5, 7, 11, 15, 17, 20, 24, 35, 38, and 39. The only claims that we need to quote are 7, 11, and 35. They read as follows:
“7. In a machine for making stretchable crinkled paper, the combination of a smooth-faced receiving-roll adapted to have the paper deposited thereon; a doctor associated with said roll, and against which the paper is carried on said roll for crinkling; a receptacle containing a bath through which the paper passes before it reaches the receiving-roll; and a pressure roll arranged to press the wet paper in close adherence to the receiving' roll."
“11. In a machine for making stretchable crinkled paper, the combination of a smooth-faced receiving roll adapted to have the paper deposited thereon; a doctor associated with said roll, and against which the paper is carried on said roll for crinkling; a receptacle containing a bath through which the paper passes before it reaches the receiving roll; a pressure roll arranged to press the wet paper in close adherence to the receiving roll; and means for extending the paper laterally after it has been wet and before it reaches the doctor.”
“35. In a machine for making stretchable ciinkled paper, the combination of a smooth-faced receiving roll adapted to have the paper deposited thereon; a doctor associated with said roll, and against which the paper is carried on said roll for crinkling; means for wetting the paper while on the receiving roll; means for wetting the paper before it roaches the receiving roll; and a pressure roll arranged to press the wet paper in close adherence to the receiving roll.”
The dements of claim 7 are: (1) A smooth-faced receiving roll; (2) a doctor associated with said roll, and against which the paper is
In patent No. 790,023 the process claims in issue are Nos. 12, 15, 16, 20, and «22, and the machine claims are 29, 30, and 33. We need only refer to claims 16 and 33, which read as follows:
“16. The process of making stretchable crinkled paper, which consists in pressing wet finished paper in close adherence to a roll, then crowding the wet paper while adhering to said roll back against itself to crinkle the paper, then delivering the wet crinkled paper to a carrier which travels at a greater speed than the paper is delivered from the crinkling roll, whereby the wet crinkled paper is stretched and the crinkles reduced, and drying the paper so as to make the reduced crinkles permanent and render the paper stretchable.”
“S3. In an apparatus for making stretchable crinkled paper, the combination of a roll to receive the paper; means for wetting the .paper; means for crowding the wet paper back against itself while adhering to said roll to crinkle it; a carrier for the paper arranged to travel at a greater speed than the wet crinkled paper is delivered from the crinkling roll so as to reduce the crinkles; and means for drying the paper to make the reduced crinkles permanent and render the paper stretchable.”
The steps contained in the process set out in claim 16 are; .(1) Pressing wet finished paper in close adherence to a roll; (2) crowding the paper while adhering to the roll back against itself to crinkle it; (3) then delivering the crinkled paper to a carrier, which stretches it by traveling at a greater speed than the paper is delivered from the crinkling roll; and (4) drying the paper.
The elements in claim 33 are: (1) A roll to receive the paper; (2) means for wetting the paper; (3) means for crowding the wet paper back against itself while on the roll to crinkle it; (4) a carrier arranged to travel at a greater speed than the crinkled paper is delivered from the roll, so as to reduce the crinkles; and (5) means for drying the paper.
In the court below it was held that the process of making crinkled stretchable paper, from moist paper in process of manufacture, by striking it while on a roll against a doctor, was old (Lysle, 414,5.57, 1889; English patent to Lewer & Edwards, No. 1927 of 1894) ; that the process of making such paper from heavy finished paper when wet was old and well known as early as December, 1895, as shown in the patent granted to Bartlett Arkell, No. 565,587, of August 11, 1896, applied for December 5, 1895; and that the process and apparatus for the manufacture of crinkled paper from thin finished paper when wet was also shown in tire patent granted to Bainbridge, No. 548,108, October 15, 1895; that, although Bainbridge did not pass his thin finished paper through a saturating bath before it reached the crinkling roll, he nevertheless provided a tank Ly means of which the fin
Having given due consideration to the arguments of counsel and the proofs submitted, we are of the opinion that the conclusion reached by the court below in dismissing the bill as to patents Nos. 790,021 and 790,022 was right, and for the reasons stated, without regard to the alleged prior use of Allen.
“the invention seeks to produce stretchable crinkled paper in which the extent of the crinkling is reliably regulated with reference to the particular work which the crinkles are required to perform when the paper is in active use,” and that “the wheels (>% and GS are removable, so that wheels of varying sizes may be substituted for either or both. This enables the ratio of the diameter of these wheels to be varied as desired, so as to regulate the amount of crinkle in the paper as finally finished.”
The plaintiff contends that, inasmuch as the specification discloses that the invention resides in reducing the stretch in the crinkled paper a predetermined amount, the claims should be read as limited in that respect to the disclosure of the specification. If we regard them as thus limited, the question presented is whether the claims involve invention or are infringed; it being conceded that the prior art does not disclose a process or device that anticipates them. In the court below it was held that the claims did not involve invention, and, if they did, were not infringed.
In Bainbridge, No. 548,108, the crinkled paper is taken from the doctor to the drier by means of a carrier, and in the specification it says that the crinkled paper “falls directly upon the traveling receiver and conveyer P, and is carried away to the drier * * * without disturbing or pulling out the crinldes formed therein, * * * ” and that “there is no strain upon the paper which would have a tendency to destroy the crinkled effect in any degree.” This would indicate that Bainbridge had conceived the idea of regulating the speed of the' carrier with reference to the speed of the crinkling roll, so that the crinkled paper would be moved on the carrier at the same speed it came off the doctor, and thus avoid any perceptible stretch.
In the patent to Eysle, No. 414,557, the crinkled paper is carried from the doctor over the roll g to the drier roll B; the drier roll and the roll g being operated by power; and in the specification it is stated that— i •
“After passing over the edge of the doctor plate the web [crinkled paper] may pass directly to the guide-roll g, the speed of the latter and of the drying cylinder B being so regulated that it will not draw the web forward any faster than it is crowded over the edge of the plate [the doctor], so that there will be no tendency to smooth or straighten out the wrinkles formed in the web by reason of the crowding to which it has been subjected in its endeavor 'to pass the edge of the plate.”
This patent, as well as the one to Bainbridge, discloses the idea of regulating and reducing the speed of the transfer means with reference to that of the crinkling roll and the paper as it comes off the doctor, so as to maintain the stretch or crinkles in the crinkled paper; the "movement of the paper as it comes off the doctor being at a less speed than that at which it was carried when on. the crinlding roll.
It being an obvious thing and well known that the stretch in the crinkled paper as discharged from the doctor would be reduced if the transfer means with the paper upon it were made to travel faster than the speed at which the paper was moving when discharged from the doctor, and it being disclosed in the prior art that the amount of stretch put into the crinkled paper at the doctor could be maintained during its transfer by giving the transfer means a given ratio of speed with reference to the speed of the crinkling roll and of the discharged paper, we think that it did not involve invention to change the ratio of speed between the transfer means and the crinkling roll by increasing the speed of the transfer means a fixed percentage so as to take out a given percentage of the-stretch in the paper, either as a step in the process
The decree of the District Court is affirmed, ’with costs to the ap-pellee.
Dissenting Opinion
(dissenting). It is beyond dispute (1) that nobody before Arkell had ever made any sort of crinkled paper having a stated and predetermined amount of stretch, and that such paper when first manufactured by him was a new product; (2) that Arkell’s machine, the patents on which are in question, was invented by him to make such paper, and that nothing identical with that machine in construction, and nothing which would accomplish the same result had previously been devised. These facts seem to me almost conclusive on the issue of invention.
Moreover, there is no evidence, except the recitals in the patent to B. Arkell, which I shall refer to later, that anybody before Arkell had crinkled in any practical way finished heavy paper in a manner which preserved the free “stretchability” essential to the uses here in question. The only previous crinkling of heavy paper had been in connection with the original manufacture, and with the object of making a thick elastic paper for carpet linings and packing — an essentially different article from Arkell’s and not adapted to the same uses.
Remaking a finished product may well involve difficulties, which are not present when the same result is obtained as part of the original process of manufacture, and which cannot be solved simply by reference to that process. On the testimony of the defendant’s witness Allen and other witnesses, that was true in this instance; and it was a very different thing to crinkle heavy paper after it had been finished, from doing so by merely running it against a doctor blade adjusted to the last roller on the paper-making machine, before the paper had been dried.
The saturating bath, the squeeze roll, the lateral spreading, the second wetting while adherent to the crinkling cylinder, the carrier adjusted to retain the correct degree of crinkling, all as embodied in the Arkell machine, constitute a set of unified operations which admittedly had never before been brought together, some of the essential steps in which, e. g., the separate squeeze roll, the rewetting, and the adjustment of the carrier, were wholly new, and which achieved a new and valuable result. This constituted patentable invention. Grinnell Washing Mach. Co. v. E. E. Johnson Co., 247 U. S. 426, 38 Sup. Ct. 547, 62 L. Ed. 1196. To say, as my Brethren in effect do say, that some of the elements being old, and those which are new being obvious as connecting steps between those which were old, therefore the combination or process as a whole lacked invention, seems to me not in accord with the established law on the subject of invention.
Great stress is laid in the majority opinion on certain recitals in the patent to B. Arkell, dated August 11, 1896 ; but his testimony as to those recitals, and the state of the paper-making art at that time, is ignored without discussion, and I think without sufficient reason. He is not contradicted. Evidence to contradict him on the state of the art could certainly have been obtained by the defendant, and no doubt it would have been presented, if what he says were not true. The usefulness of the bag which he patented was recognized, but he was unable to obtain crinkled paper suitable for making it before his father’s inventions here in question, a lapse of several years.
In order to negative invention, it devolved upon the defendant to prove that the crinkling of finished heavy paper in such a way as to produce and retain free “stretchability” of a predetermined amount was something which anybody skilled in the paper-making art could have done at the time of the patents in suit. The evidence, in my opinion, is far from justifying such a finding. Controlling the “stretchability” of the product by varying the speed of the carrier had never been even suggested. As applied to the Arkell machine it was a thought not lacking in brilliancy and of great value, which, as it seems to me, was by no means anticipated by the knowledge that in crinkling machines the speed of the carrier had to be adjusted to the rate at which the paper came off the doctor blade. The moving parts of any machine have to be in adjustment with each other; but it does not follow that all results which can be obtained by .variation of the adjustments are obvious.
The paper as it came from the doctor blade was crinkled more than necessary for actual use, and was so shortened that much of it was wasted. It was essential to avoid this loss, and at the same time to make sure that the product would have the requisite capacity to stretch freely. Arkell was tire first to accomplish this result, and was the first to crinkle successfully finished heavy paper. To this extent, at least, I think that his patents are essentially pioneer patents, and entitled to the liberal construction accorded such grants. On the reasoning of my .Brethren, Watt’s conception of the steam engine involved no invention, because the' expansive force of confined steam was previously known and cylinders and pistons were in common use.
If there be doubt on the question whether these patents show invention, the long public acquiescence in them entitles the patentee and his assigns to have that doubt resolved in his favor. The patents ha^e been outstanding about 13 years. This is the first time their validity has ever been questioned in court proceedings. They are of recognized, value, and this long acquiescence clearly shows that the public familiar with the art to which they belong has not supposed that they lacked invention or were invalid on that ground. Such public opinion
Holding these views, I am of opinion that several of the mechanical and process claims are not void for lack of invention and have been infringed.
See Cadillac Motor Car Co. v. Austin, 225 Fed. 983, 141 C. C. A. 105, for discussion of a very similar question, and also, as to wlutt constitutes invention, Proudfit Loose Leaf Co. et al. v. Kalamazoo Loose Leaf Binder Co., 230 Fed. 120, 144 C. C. A. 418; Frey et al. v. Marvel Auto Supply Co., 236 Fed. 916, 150 C. C. A. 178; Ohmer Fare Register Co. v. Ohmer et al., 238 Fed. 182,
