82 F. 916 | U.S. Circuit Court for the District of Massachusetts | 1897
Lead Opinion
The patent involved in this litigation purports to cover an improvement in machines for attaching stays to the corners of boxes. The specification clearly describes the main feature claimed to be covered by the patent, so far as we are concerned with it, as follows:
“It has been customary heretofore, in making paper or- sirawboard boxes, to apply a stay or fastening strip over the joints at the corners of the boxes, which strip is pasted down on the outside of the box, or is folded over the edge of the box, and secured by paste, both outside ami inside of the corner; and such work, as far as I am aware, has heretofore been done by hand. My invention relates to a machine for doing this work.”
In another part of the specification the- patentee explains that, when the stay is simply placed against the exterior surface of the box comer, and not turned in or over the edge, the device may be simplified; but it is not necessary to explain this in detail. The claims in issue are 1, 2, 3, and 6, as follows:
“(1) The combination, with opposing clamping dies having- diverging working faces, of a feeding mechanism constructed to deliver stay strips between said clamping dios, and a. pasting mechanism for rendering adhesive the stay strips, f-aid clamping flies being constructed to co-operate in pressing upon interposed box corners the adhesive stay strips, substantially as described.
“(2) The combination, with opposing clamping dies having diverging working faces, said clamping dies being arranged to co-operate in pressing adhesive fastening strips upon interposed box corners, a feeding mechanism constructed to feed forward a continuous fastening strip, and a cutter for severing the said continuous strip into stay strips of suitable lengths, substantially as described.
“(3) The combination, with opposing clamping dies having diverging working faces, said clamping dies being arranged to co-operate in pressing an adhesive fastening strip upon the comer of an interposed box, a feeding mechanism constructed to feed between the dies a continuous fastening strip, a pasting mechanism for applying adhesive substance to the strip, and a cutter for severing the strip into stay strips of suitable lengths, substantially as described.”
“(6) The combination of opposing clamping dies having diverging working faces constructed to co-operate in pressing an adhesive stay strip upon an interposed box corner, one of said clamping dies being constructed to act with an elastic or yielding pressure, to enable the dies to operate upon box comers of different thicknesses, substantially as described.”
The patent in issue was thoroughly litigated in a suit commenced in the Second circuit against alleged infringers who were other than the respondents in this case, and who are not in privity with them. In the circuit court the judgment was rendered by Judge Coxe on a final hearing on bill, answer, and proofs, and an elaborate opinion was filed by him, which will be-found in Beach v. Machine Co., 63 Fed. 597. The case was also thoroughly discussed on appeal in an opinion drawn by Judge Lacombe, entitled on appeal as Manufacturing Co. v. Beach, 18 C. C. A. 165, 71 Fed. 420. The same appeal is also reported in 35 U. S. App. 667. In the court of appeals the proceeding is described as an appeal from an interlocutory decree, but by this is intended the usual decree for an injunction and an- accounting, rendered after a hearing on bill, answer, and proofs, as we have already explained. There were in issue claims 1, 2, and 3, and also some other claims which are not in issue here; but claim 6 was not considered in that litigation.
Under these circumstances, it is necessary, first of all, that wo should determine the effect to be given to the legal proceedings in the Second circuit. So far as a question of that nature appertains to issues made on applications for preliminarv or temporary injunctions, the law is well settled, as stated by the court of appeals for this circuit in Bresnahan v. Leveller Co., 19 C. C. A. 237, 72 Fed. 920, 921, and in the Second circuit in New York Filter Manuf’g Co. v. Niagara Falls Waterworks Co., 26 C. C. A. 252, 80 Fed. 924, 929. That, however, does not determine the rule applicable to cases on final -hearing, where parties respondent are not estopped by the prior litigation, and are entitled'to have their rights determined strictly in "accordance with the law and the facts as presented by them. So far as any proposition may be fully presented to the court of appeals in any circuit, and determined by it, resulting in a rule which is, and ought to be, of general application, especially when it involves federal questions, a condition of adjudications which would defeat uniformity throughout the United States would clearly disappoint the contemplation of congress in establishing those tribunals. It certainly was not the expectancy of congress that the establishment of those courts would destroy the general uniformity of adjudications in the federal tribunals touching- general principles of law, and especially touching federal questions, which has heretofore existed; nor was it its purpose to create several centers, for the determination of that class of questions, which would take on a local character, as is the fact with reference to the various state tribunals. As was said by the circuit court of appeals for this circuit in Beal v. City of Somerville, 1 C. C. A. 598, 50 Fed. 647, 652, the circuit courts of ap-
In Green v. City of Lynn, 55 Fed. 516, 518, we had occasion to consider in what way the findings and decisions of any court of authority with reference to a particular parent, on a final hearing on bill, answer, and proofs, can be made available oil a like final hearing in another court, where the respondents are not the same, and are not conclusively estopped by the prior determination. That new parties litigant are entitled to have their facts carefully scrutinized, with a view of determining whether or not they present a different case from that adjudicated in the prior litigation, is well illustrated by
“The eases cited under the second objection are not evidence in this ease. The records of them are not before us. The reports of their decision in Howard may be referred to as expositions of law upon the facts there disclosed, but they are not evidence of those facts in other eases. * * * The general language of the opinion must be construed and limited by the facts of the case.”
In Green v. City of Lynn, ubi supra, we were asked to apply the conclusion of the supreme court in Andrews v. Hovey, and the same patent was in issue in each case; but at page 518 we laid down the rules by which courts are to be guided in adapting to a case in hand the conclusions in prior litigation, involving mixed questions of law and fact, as follows:
“Of course the findings of the supreme court in Andrews v. Hovey on questions of law are conclusive on all other courts. The same is true as to its .findings of fact, with reference to any other cause in which the court perceives that the proofs are substantially the same as those which came before the supreme court. The reasons for this need not be elaborated; but this distinction is to be noted: that, when the parties are not the same in each case, the determinations of issues of fact by the supreme court do not operate strictly as res adjudicata, or as a technical estoppel, but merely upon the conscience of the inferior tribunal. How are the cases to be brought together for this purpose? An answer based on the fundamental rules of law seems simple. First, it is essential that the facts brought to the attention of the supreme court should be proven in the pending cause independently, according to the ordinary rules of evidence; and thereupon the court in the pending cause should advise itself as best it may of what appeared to the supreme court, — ordinarily from the opinion rendered by it, and, if this is not sufficient in detail, from ail informal perusal of whatever was laid before it. As this'ascertainment is. merely to inform the conscience of the court in the pending cause, and to enable it to follow the line of reasoning and conclusions of the appellate tribunal, there is no,occasion for burdening the case with the formal proof of what appeared in the supreme court, nor is there any propriety in so doing. Therefore it was that this court granted ihe motion of the complainant to strike Out the two volumes in question; and held that the defendant, if it sought to avail itself of the reasoning and conclusions in Andrews v. Hovey, must prove the substantial matters which there appeared as independent facts according to' the usual rules of evidence. 3 Rob. Pat. §§ 1017, 1175, touches this question. This portion of this work must, however, be read with care, because, as is too frequent in discussions of this and kindred questions, sufficient dis*921 crimination is not made 'between the rules touching interlocutory and ad interim injunctions and those pertaining to final hearings. The court conceives, however, that the author correctly slates the principle in section 1175, as follows: ‘The weight to be attached to any judgment in favor of a patent as evidence of its validity in future actions depends upon the identity of parties, (lie identity of issues, the identity of testimony,’ and so on. By the words ‘the identity of testimony’ the author evidently means that the same facts must be proven in each case independently. In Edgarton v. Manufacturing Co., 9 Fed. 450, the court, being asked to apply decisions in several eases to a pending patent cause, said as follows: ‘But the proofs in Brown v. Whittemore [5 Fish. Pat. Cas. 524; Fed. Cas. No. 2,033],’ meaning one of the other cases, ‘on the question of prior use and sale with the consent of the patentee, and in Edgarton v. Breck [Fed. Cas. No. 4,279],’ meaning also one of the. other cases, ‘on the question of invalidity, do not seem to have be.en the same as in the cases now before the court. * * * Of course, if the testimony in these cases was substantially the same as that in the eases heretofore decided by the learned judges in the Massachusetts circuit court, I should feel wholly bound by their decisions, and the construction of the patent given by them.’ In McCloskey v. Hamill, 15 Fed. 750, the court, touching a like proposition, said: ‘The facts which (he plaintiff proved upon the second hearing,’ meaning a second hearing in a prior cause, ‘are (he same which he relies upon in this case.’ In Celluloid Manuf'g Co. v. Zylonite Brush & Comb Co., 27 Fed. 291, the court said (page 295), ‘The facts presented by the record’ are so strictly similar io those in,’ naming a case on (he same patent previously heard by another tribunal. In American Bell Tel. Co. v. Wallace Electric Tel. Co., 37 Fed. 372. (he court spoke of ‘(he examination of the record,’ meaning plainly the record in the then pending case, made to ascertain whether distinguishable from cases theretofore decided. * * * Therefore, in applying the conclusions of Andrews v. Hovey, this court is — First, to inquire what facts are proven in the pending case by independent evidence given under the ordinary rules of law; and, second, to examine the opinions of the supreme court, and the line of reasoning and conclusions which they exhibit, and from these or otherwise — but not by formal evidence — become satisfied whether or not the proofs of which (he latter court took cognizance were substantially Hie same as those in the case at bar. If they were, its line of reasoning and conclusions bind the conscience of this court upon the questions of fact involved; otherwise they fail to do so, perhaps wholly, perhaps in part. It is true that this method of proceeding may produce a result on questions of fact differing from the latest findings of the supreme court, but in this respect we have the example of that court itself, as shown with reference to this very patent, in Fames v. Andrews, 122 U. S. 40, 7 Sup. Ct. 1073, and Andrews v. Hovey, already referred to.”
Applying all the considerations which we have thus explained to the protection of the rights of the prestad respondents in every particular. and at the same time giving the conclusions of the circuit court of appeals for the Second circuit the weight which, under the circumstances, we feel bound to give to them, whether we should regard ourselves as in any extent conclusively bound by them or not, and adding thereto the fact that those conclusions, so far as they are necessary to the case at bar, receive, after a careful consideration of them, and of the facts now before us, our own approval, the result is that we need refer only in the briefest manner to the more substantial questions raised at bar, and are able to dispose of them without difficulty. The defense pressed on us most fully and urgently'relates to alleged anticipations and the [trior state of'Che art. It appears by ¡.he opinion of Judge Ooxe in 63 Fed., at page 600, that the respondents in the prior litigation introduced 47 patents showing improvements in machines for making boxes, for inserting wire staples, for flanging boiler plates, for sticking labels and revenue stamps, for bending stiffeners for the heels of shoes, and for applying shoe-button
On the questions of anticipation and the state of the art we therefore follow the conclusions of the circuit court of appeals for the Second circuit. As we have observed, that court did not consider claim 6. This, however, is of no importance, because claim 6 contains the pith of the complainant’s invention, which was in the adaptation of the clamping dies, and was necessarily involved in the con
We are also prepared to follow that court in the conclusions contained in the opinion of Judge Lacombe, found at page 171, 18 C. C. A., and page 425, 71 Fed., adverse lo the contention so strongly urged on us, that there was some broadening or expansion of the first three claims while the applications were pending in the patent office, impairing the patent as issued. We also say the same as to the conclusions of Judge Lacombe’s opinion, found at page 170, 18 C. C. A., and page 424, 71 Fed., adverse to the further propositions, also strenuously urged on us, that the patent now before us is a mere paper one, and iliat whatever utility apparently attaches to it really belongs to machines constructed according to later devices. With reference to all of these'propositions, 1he facts before us are in all respects the same as in the prior litigation, and each of them received the full consideration of the courts at that time, so that the prior adjudications with reference thereto ought to bind us; and, in addition thereto, we are satisfied that their conclusions were correct.
As we follow the determinations in the prior litigation only with reference to the topics we have already discussed, we will have no occasion to consider the criticisms made by tlie respondents in reference thereto touching other particulars.
The respondents press the defense that the combinations of claims 1, 2, and 3 constitute nonpatentable aggregations, maintaining that, each mechanism — that is, Hie one for pasting, the oiie for feeding, the one for cutting, and the one for pressing — “produces its ax>propriate effect unchanged by the others.” The most practical and useful definition of an aggregation is that found in Hailes v. Van Wormer, 20 Wall. 353, 368, as follows: ,
“It must bo conceded that a now combination, if it produces now and useful results, is patentable, though all the constituents of tlie combination wore well known, and in common use, before the combination was made. But the results must he a product of the combination, and not a mere aggregation of several results, each the complete product of one of the combined elements.”
The complainant first applied for his patent June 10, 1885, and it was issued February 24, 1891. He discovered some errors in the drawings, which, if literally followed, would clearly have made his device inoperative. He thereupon, with'a promptness which leaves no opportunity for criticism in that particular, on April 9, 1891, applied for a reissue, which he obtained May 26, 1891. The respondents say, in substance, that, notwithstanding the defects in the drawings, any person ordinarily skilled in the art would not have been misled by them, and that, therefore, the original patent wras not, in fact, inoperative. This suit is brought on the reissue, and the respondents claim that for the reasons stated the commissioner had no authority to grant a reissue, and that it is invalid. This proposition does not seem to have been submitted to the courts in the prior litigation.
Section 4916 of the Revised Statutes provides as follows:
“Whenever any patent is inoperative or invalid, by reason of a defective or insufficient specification, or by reason of the patentee claiming' as his own invention or discovery more than lie bad a right to. claim as new, if the error has arisen by inadvertence, accident, .or mistake, and without any fraudulent or deceptive intention, the commissioner shall, on the surrender of such patent and the payment of the duty required by law, cause a new patent, for the same invention, and in accordance with the corrected specification, to be issued to the patentee.”
The application of the complainant. for the reissue, and 'the oath accompanying it, set out every jurisdictional fact required to entitle him to a reissue. They declared that the patent was inoperative by reason of the errors to which we have referred, and also that the errors arose by inadvertence. It is true that by the letter of the statute the commissioner has no jurisdiction to grant a reissue unless the jurisdictional facts exist as required by law; but the allegations made by the applicant with reference to the alleged inoperativeness and the alleged inadvertence raised pure questions of fact, peculiarly fitted to be disposed of by an adjudication of the commissioner of patents, and in no way involving any of the class of fundamental questions affecting the interests of other parties, which the
“While, according to our opinion, the reissue was not necessary, and the construction and effect of the patent are in all respects the same as though it had not been obtained, yet the application for it claimed inadvertence with regard to the description of the compactness of the material used for lining, and to the directions with reference to its thickness; so that we think that, on the whole the determination whether the specification needed amendment, and whether a reissue was essential or proper, was so much a matter of doubt, and Therefore rested so largely with the commissioner of patents, that: it cannot be properly reviewed by us.”
This case came before the court of appeals (25 C. C. A. 500, 80 Fed. 395), but the quest iou of reissue was not raised in it. The appellate court therefore did not pass on this proposition, and the decision of this court wiih reference thereto stands as yet unchallenged, and is sufficient to control us In the present case. We may add, however, that in U. S. v. American Bell Tel. Co. 167 U. S. 224, 17 Sup. Ct. 809, the court, at page 207, 167 U. S., and page 809, 17 Sup. Ct., reaffirmed the stalement that, even in matters of reissues, the commissioner of patents exercises quasi-judicial functions. We are not aware of any decision of that court which deprives him of the power* of exercisim»' such functions with reference (o questions of mere derail, and affecting no substantial right. It would be an unreasonable state of the law which, in a matter of detail of this character, would deprive both the patentee and the public of the benefit of the conclusive effect of a summary proceeding at the patent office, and would compel both to await the result of a long litigation before being able to ascertain whether a reissue was effective or otherwise, and, whether, on account of it, there existed or not a valid patent, which the one was entitled to enforce and the other bound to respect.
There is no substantial question as to the validity of the sixth claim which has not been met by what we have already said with reference to the other claims. The respondents maintain that this claim came in by amendment in November, 1890, which was afici-one Horton applied forapatent for his machine, which the respondents say is the alleged infringing machine in the case at bar. The* fact is, however, that it must have been apparent on the earliest application, filed by the complainant June 10, 1885, that what now appears as claim 6 was the real pith of his invention. Any person having any skill in the art could not have failed to have discovered this, and to have been warned, accordingly, of what might develop as the proceedings progressed in the patent office. But a conclusive answer to the proposition of the respondents is that on December 8, 1886, a claim was brought in by amendment in all respects the same as claim 6, except that it in terms limited the elasticity to the lower end of the plunger. This was a clear statement of the nature of (lie complainant’s invention as now shown in (he sixth claim, and any one fairly conversant with the topic must have seen that Ms limiting the
“This invention relates to that class of machines for applying stays to the corners of boxes and box covers, in which a rectangular mandrel is employed to support the box or cover internally, while a reciprocating plunger having a re-entrant angle in its operating face descends, and bends the stay into angular form, and presses it upon the corner of the box body or cover while the same is supported by the mandrel. The invention has for its object to provide a simple, efficient, and rapidly operating machine of this class.”
By this statement, Horton, and the respondents, who are manufacturing under him, are expressly limited to an improvement on the pith of the device shown in the sixth claim. They made that their point of departure, and bv so doing they assumed all hazards, whatever they might be, of the rights of anv person to priority with reference to the substance of the sixth claim, whether a patent had been issued, or applied for, or neither.
The respondents contend that one Jaegar obtained a British patent for exactly the same invention as that now in issue, and that this British patent has expired. It is not claimed that this patent was obtained under any authorization from the complainant, direct or indirect, or that Jaegar in fact anticipated him. So far as the record shows, it was obtained in violation of the complainant’s rights. Nevertheless, the respondents maintain that, by reason of the mere letter of the closing paragraph of section 4887 of the Revised Statutes, the complainant’s patent in the United States expired when this unauthorized patent terminated. Such a construction of the law is too unreasonable to obtain credit in any court, and is easily met by the fact that the whole section is to be taken together; and it is apparent from the first part of it that the whole relates only to patents taken out by patentees under the laws of the United States.
We now have left only the question of infringement. With reference to the sixth claim, there is no occasion for any discussion on this point. The complainant’s expert testifies, without contradiction, that the respondents’ machine has all the elements contained in this claim, and he enumerates them for the purpose of making his testimony emphatic and unmistakable in this particular. He is plainly right. There are serious difficulties with reference to the question of the infringement of claims 1, 2, and 3. These depend on their proper construction. As we have seen, the court of appeals for the; Second circuit expressed the view that they applied to every device for affixing stay strips to the outside of box corners, where-the operation is performed by the combined action of a feeding mechanism, a cutting mechanism, and a pasting mechanism, with any opposing clamp dies whose faces diverge. This permits any forms of feeding mechanism, cutting mechanism, or pasting mechanism. But each of the claims closes with the words “substantially as described.” The cutting mechanism described in the specification is of so simple a character that possibly almost any device for cutting with sharp edges would be regarded as comprehending its equivalent; but the feeding-mechanism therein described is a complicated combination, with minute details evidently intended to accomplish special functions, al-
Now', in the case at bar, as we have already said, the feeding mechanism of the combination is expressed to be of a detailed character, apparently having in view- special functions. The wmrk io he done by the resnondents’ machine is much simple)* than that which can be accomplished by the complainant’s, as it relates wholly to pasting stay strips on the outside of the corners of boxes. Therefore the strips can be made to approach the dies in the respondents’ device at right angles to the line by which they must approach it in the complainant’s device for at least a part of its operations; and for this and other reasons the respondents’ feeding device might well be much simpler than the complainant’s, and have regard to very different functions. In saying this we beat: in mind that the reciprocating plates of the respondents’ mechanism, carrying the stay strip, are generally regarded as the equivalent of the complainant’s feed rolls with their intermittent motion; but, notwithstanding this, the respondents’ device for feeding seems to omit the complicated details which are parts of the complainant’s device, as we have already explained them. The complainant: has not deemed it necessary to elaborate his case on this question, and it is possible that we do not fully under
Let the complainant ñle a draft decree for an injunction and an account with reference to the sixth claim only, such draft decree to be filed on or before the 11th day of September next, and corrections thereof to be filed on or before the 18th day of September next.
Note by the court: It is worth noting in this connection that each division of the court of appeal in England, always follows the decisions of the other division.
Rehearing
On Rehearing.
(October 8, 1897.)
On this motion for a rehearing, the complainant does not point out any mere slip or oversight on the part of the court, or any other peculiar matter which raises any reasonable probability that a rehearing would give any new result. His main purpose is to supplement and strengthen his propositions submitted in argument at the hearing. Matters of that character do not ordinarily justify a rehearing.. While the court is not inclined to insist too strictly on the application of rules of this nature, and would especially be inclined to relax them if there were not ample remedy by appeal for any errors it may have committed, it is certain that there does not appear such a degree of probability in favor of the complainant on this application as to justify the expense, delay, and vexation of further litigation in this court.'
The complainant insists that we have misapprehended the considerations that were had in view by the court of appeals for the Second circuit in Manufacturing Co. v. Beach, 18 C. C. A. 165, 71 Fed. 420, in construing claims 1, 2, and 3 of the patent in litigation. In determining- this matter, we were governed by what we found on the face of the opinion of the court, coupled with what further appeared in the case as reported. The complainant now asks to bring in the briefs submitted to the court, and also certain affidavits of counsel who took part in the arguments, for the purpose of showing that all the considerations urged upon us were also urged upon the court of appeals in the Second circuit. If in any instance, not of an exceptional character, we could be required to go into an incidental investigation of this kind, so full of labor and uncertainties that it might involve more than all the rest, even of an important and complicated case, it would result in no advantage here, because a study of the opinions on appeal and at the circuit in the prior litigation shows that the infringement of claims 1, 2, and 3 was admitted; so that the construction of them did not come in issue in the way in which it comes in issue here. Moreover, we are governed on this point by Machine Co. v. Lancaster, 129 U. S. 263, 266, 9 Sup. Ct. 299, referred to in our opinion passed down August 23, 1897, whatever may have been the view of the courts in the Second circuit. The petition for a rehearing is denied.
