40 F. 577 | U.S. Circuit Court for the District of Northern New York | 1889
The complainant sues for the infringement by tbe defendants of three patents granted to Oliver H. Hicks, — the first being No. 825,410, dated September 1, 1885, for “Package of Toilet-Paper;” the second being No. 325,174, dated August 25, 1885, for “Toilet-Paper Fixture;” and the third being No. 357,993, dated February 15, 1887, for “Apparatus for Holding Toilet-Paper.” All of them relate to cognate subject-matter; the first being for toilet-paper when put up in specified form, and the others being for apparatus for holding the paper, and permitting it to be removed for use.
The first patent is invalid for want of novelty. The subject of this patent is well stated in the claim that' appeared in the application for the patent,1 filed July 10, 1885, viz.:
“As a new article of manufacture, a bundle of toilet-paper, consisting of one or more lengths of paper formed into a flexible continuous band of oblong or oval shape, the short rounded ends of said bands serving as guides for determining the proper points at which the paper is to be separated in order to produce sheets of a size desirable for use, and affording also the most advantageous surfaces upon which to tear the paper. ”
The only novelty in this patent consists in putting up the paper in the form of an oblong or oval shaped roll. It was old to put up such paper in the form of sheets cut the proper size for use. It was old to put it up in the form of cylindrical rolls; and when it was put up in such rolls it was sometimes in one continuous or unbroken sheet, and sometimes in a sheet perforated transversely at given intervals, so that it could be easily torn from the roll in pieces of a predetermined length. It would not seem to involve invention to put up paper in the form of oval or oblong rolls which had commonly been put up in the form of cylindrical rolls; but, however this may be, it is abundantly shown in the proofs that it was likewise old to put up the paper in the exact form of the patent. The old oval rolls shown in the patent to Peacock, and those like “Defendants’ Exhibit No. 24,” were of smaller size than the roll preferably contemplated by the patent, but there is no patentable difference between them. Although the rolls of the patent are not new in a patentable sense, they are peculiarly useful when employed in fixtures like those of the second and third patents, and the real invention of Hicks consists in devising the fixtures in which the paper is to be arranged.
The second and third patents in suit are for a fixture to be used with oval-shaped rolls of toilet-paper, and which is designed to arrange the paper so as to prevent more than a given quantity of it from being withdrawn from the package at a single operation, and so that in-the act of withdrawing that quantity it shall be'automatically severed from the package, leaving pendent from the package a free end to serve as a means for -withdrawing a like quantity by the next operation. The fixture consists of a back plate, two arms rigidly connected therewith, extending outwardly therefrom at right angles; a fiat metal core plate, upon which the roll of paper is designed to be mounted, pivoted on the outer end of the arms, and made somewhat heavier on one side of its pivot than on the
“It will be observed that the plate or blade, M, performs the functions of a stop for arresting- the forward rotation of the roll, and holding the roll while the section of paper is being removed, as well as the function of severing- said section of paper; and its importance as a stop is as great, if not greater, than its importance as a cutter, since the stopping of the roll, coupled with the continued movement o£ the free end of the paper, must necessarily cause the severance of the paper at some point at or near the point the end leaves the body of the roll. ”
The specification also states that the outer edge of the blade, M, may be made either plain or serrated.
The fixture thus described is an ingenious and meritorious invention. It immediately commended itself to the public as a simple and efficient device by which toilet-paper could bo economically and readily several from the roll in pieces of convenient length. It dispensed with the necessity of putting up the paper in sheets, or in rolls perforated transversely to enable it to be detached in pieces of the requisite length for use. But in view of the “Albany Fixture,” a fixture at the time in common use, and in which cylindrical rolls of perforated paper were employed, the essence of the invention is, in such a construction or arrangement of the blade and core plate in reference to one another, that when the latter is rotated the blade will not permit it to pass by. If there were room enough between the two parts to permit the core plate to pass the blade, the apparatus would cease to work when the thickness of the roll of paper should be less than the space between the blade and the core plate.
The second patent contains five claims, each of which is for a combination in which the roll of paper and a knife or cutter (the blade, M,) are elements. The third claim, which is the only one alleged to he infringed by the defendants, is as follows:
“The combination, witli an elongated or oval oscillating roll of toilet-paper, actuated in one direction by a pull upon its free end of a stop constituting a knife or cutter, co-operating with the roll to sever the unwound portion therefrom when the roil has reached the limit of its motion when so actuated, substantially as described.”
The defendants manufacture and sell a fixture known as the “Universal Fixture,” together with oval-shaped rolls of paper to accompany it, and be used in it. Their fixture does not contain a cutter, and this is
Hie law of contributory infringement has no application to the case, filial doctrine rests on the principle that he who concerts with another to do a wrong is an abettor, and equally guilty with the one who actually commits it. Here no wrong has been committed.
The complainant cannot rely upon the inconclusive statement, elicited upon cross-examination from the defendant Wheeler, to establish a sale by the defendants of paper with fixtures which lmd not been sold by the complainant. Tt would be mere guess-work to infer from that testimony that the fixtures thus sold were not originally made and sold by the complainant. The affirmative upon the issue of infringement is with the complainant, and the onus of proof is not satisfied merely by showing a. state of facts from which infringement may be conjectured.
The third patent describes the fixture of the second patent, but its claims are for combinations in which the blade has the functions of a stop, instead of a knife or cutter, as in the claims of the second patent. The claims of this patent alleged to be infringed by the defendants are claims 1, 2, 3, and 5. These claims are as follows:
“(1) The combination, with an oscillating roll oí toilet-paper, actuated in one direction by a pull upon its free end of a stop for arresting the roll at the limit of its motion when so actuated, whereby, upon the arrest of the roll, a portion unwound from it may be removed, substantially as described.
“(2) The combination, with an oscillating roll of toilet-paper actuated in one direction by a pull upon its free end of stops for arresting the roll at the limit of its motion when so actuated, and also for arresting the motion of said roll at the limit of the oscillation in the opposite direction, substantially as described.
"(;5) The combination, with an oscillating roil of toilet-paper, having its bearings out of line with its center of gravity, and actuated in one direction by a pull upon its free end of a stop for arresting the roll at the limit of its motion when so actuated, whereby, when the roll has been arrested, and the length of paper removed, the roll will automatically resume its normal position, substantially as described.”
“(5) The combination, with the supporting arms, of an oscillating core plate, weighted on one side of its pivots so as to cause the roll supported by it to automatically resume its normal position after being oscillated, and a stop for limiting the motion of said plate, substantially as described.”
For the reasons stated in considering the validity of the first patent, oval roll paper was old at the time when the device of the patent was invented. ■ Inasmuch as novelty does not reside in the combination of an-old element with other old elements, when no new mode of operation results from their conjoint action in the new combination, none of the claims of the patent can be sustained as valid which are to be read as
The fifth claim is for a combination of all the parts of the fixture, and can he interpreted as one in which a core plate and a stop, so constructed and arranged with reference to each other that they cannot pass one another when the core plate is oscillated, are elements. The two parts are described by letters of reference to the drawings in the specification,— the stop as “M,” and the core plate as “F;” and, although the language of the specification does not point out anything in respect to their relative dimensions, the drawings show that they are of such breadth, respectively, that the core plate cannot be rotated past the stop in either direction. It is apparent that, if this feature of relative dimensions were ignored, the parts would not co-operato, or would only co-operate imperfectly, to perform the functions assigned to them of arresting the roll of paper when mounted and rotated. The core plate of this claim is weighted on one side of its pivots. This is effected when the pivots are arranged eccentrically to the core plate, or by attaching them centrally thereto, and having one side of the core plate heavier than the other. In such a combination the transverso bar of the Universal fixture is the equivalent of the blade of the patent. When a core plate is used in the Universal fixture which is weighted or hung so that, its depending side, when rotated upwardly, will he arrested by the transverse bar if there is any paper left in the roll, and will fall by its own gravity, that fixture infringes the fifth claim of the patent. Such a core plate is sometimes used in that fixture, and the complainant is accordingly entitled to an injunction and an accounting.
The defenses which rest on the prior use of the Coffee fixture, and the prior invention of Richardson, do not meet the fifth claim of the patent, as thus interpreted. Coffee did not employ the core plato, and Richardson did not employ the stop of the patent.
The complainant is not to recover costs of the suit.