207 F. 380 | D.N.J. | 1913
The patent involved herein was sustained in 1905, by Judge McPherson, then District Judge for the Eastern district of Pennsylvania, in the case of Valvona v. D’Adamo (C. C.) reported in 135 Fed. 544, and again in 1913, by Judge Orr, of the Western district of Pennsylvania, in Valvona-Marchiony Co. v. Fred Perella et al., 207 Fed. 377. It has also been sustained in two or three other unreported cases, which, however, do not require special mention, since the defendant’s counsel, at the argument herein, admitted the validity of the patent in suit, but claimed that in view of the prior art, and in consonance with said decisions, it must be narrowly construed, and that, so construed, it has not been infringed by the defendant.
It is stipulated in the case that the patent in suit, No. 701,776, was-duly granted in 1902 to Antonio Valvona; that since April 9, 1910, the same has been the property of the complainant; that the three machines marked “Complainant’s Exhibit, Defendant’s Machines, _A, B, and C,” were made and used by defendant within the jurisdiction
“1. A combined mold and oven for producing biscuit cups or dishes, consisting of two metal plates connected together by a hinge and provided with handles and means for securing said plates in closed position, the opposing inner faces of the said plates being provided, one with a projecting core and the other with an indented mold in the metal of such face into which the core fits with a small sqiace between the two, and the outer faces being so formed as to be adapted to rest on the top surface of a stove either side up, so that heat may be evenly conducted through the body of the mold, all the heat absorbing and conducting sides of the mold being of substantially the same thickness, whereby a cup may first be formed with the projections downward and afterward baked in the reverse position to facilitate the baking and allow the cup to be turned out of the mold, as and for the purpose described.”
The objects and aim of the patented device are stated by the patentee as follows:
"By the use of the apparatus of this invention I make cups or dishes of any preferred shape or design from dough or paste in a fluid state that is Xireferably composed of the same materials as are emqiloyed in the manufacture of biscuits, and when baked, the said cups or dishes may be filled with ice cream, which can then be sold by the venders of ice cream in public thoroughfares or other places. In order to produce said cups or dishes, I provide a combined metallic mold and oven, consisting of two plates, as a and b, each of said iilates having a niece o projecting from its edge at one side, connected by a hinge d, and each plate lirovided with a handle e, xirojeeting from its opposite edge. The faces of the aforesaid two plates are provided or formed, respectively, with one or more cores / and dies g, one fitting close to each other. All the heat absorbing and conducting sides of the mold are of substantially the same thickness, so that heat may be evenly conducted through the body of the mold, as will be seen by reference to the drawings.
“The biscuit dough or liaste, which is of the consistency of a thick fluid, is Iioured from a can, that may be provided with one or more spouts for depositing the required quantity of paste either successively or simultaneously in each of the dies or molds g. The plates are then closed, and the cup oldish is formed by the dough being pressed into the space between ihe core / and the mold g. It is then baked by the apparatus being- placed over a gas or other fire, the formation of said apparatus enabling "it to be turned as frequently as required, and the biscuit cup thereby uniformly baked. To make these thin-shaped cups satisfactorily from liaste, with the thin walls described, and to insure their proper ‘turning- out’ of the molds in good shape, properly baked, T find it necessary to first heat the molds, then pour in the batter, and bake with the projections downward for awhile, then reverse the mold and hake in that position. This enables me to readily remove the cups from the mold in perfect condition, and to this end Í have constructed mv mold so as to enable it to be readily reversed and to occupy a stable position on the top of the gas range or the like.”
. In view of the admission made at the oral argument that the patent-in suit is valid to the extent above mentioned, the only vital question
What apparently furnishes the main reliance of the defendant in support' of his claim of noninfringement is contained in the allegation that the contour of the lower plate—that is to say, the bottom of the lower member containing the mold cavities of his machine—varies from that of the patent, and that such variation is vital, because the complainant, by the term “indented mold,” as used in the claim, is restricted to a particular form of mold, which the defendant does not use. This argument seems to be based upon a suggestion of defendant’s expert, who maintains that a mold made conformably to the term “indented mold” must have its cavity formed in part only in the plate forming the lower member of the device, the balance being positioned in a boss which projects from and below the lower face of such plate; that is to say, the defendant contends for a construction which will not be satisfied with indentations or cavities which appear in their entirety in the inner face of the lower plate, but rather for a construction which requires, that such indentations or cavities shall have corresponding protuberances or projections on the opposite and outer face of the lower plate. Manifestly, however, the term relates to and describes merely a die cavity or recess in the inner face of the lower plate, or, using the language of the claim, “in the metal of such face,” and does not even suggest, much less require, a projection opposite thereto, upon the outer face of such plate. A thing may fairly and truthfully be said to be indented when it has a hollow or depression in its surface, and this in utter disregard of whether the hollow or depression is manifested upon the opposite side by a corresponding protrusion; in other words, an indentation may exist without regard to the configuration of the opposite side of the article in which the in
At this point it may properly be remarked that the defendant at first made his mold cavities in that form; but upon being threatened with a suit for infringement of the patent in suit, and in order to avoid that charge, he thereafter made the lower plate of the machine of sufficient thickness in and of itself to contain the cavities, thereby avoiding the necessity of having any corresponding bosses or projections on its opposite side. Jt is manifest, however, that the functional effect of the device was not altered by the change. It was a rather poor expedient, admittedly adopted to avoid a charge of infringement. The functional effect of the mold is not altered, whether the lower face of the plate, in which the indentations are, is by reason of its thickness smooth and solid, as in defendant’s machine, or in the form of projecting bosses, as in the patent. As already suggested, the claim says nothing about the thickness of the plate, or of the contour or form of its lower and outer surface. All that the claim requires is that the plate should have therein indentations or mold cavities, which, as interpreted by the specification, must be sufficiently large to contain the corresponding cores of the upper plate, while at the same time leaving between them the requisite space to hold the hatter to be baked. What the defendant did, and all that he did, by way of distinguishing his device from that of the patent, in order to avoid a charge of infringement, was to increase the thickness of one of the parts; and, even if it were unguardedly and improperly admitted that this change constituted a patentable improvement, still the device as a whole would not even then escape the charge of infringement.
Another point which defendant’s counsel claims distinguishes the defendant’s device from the complainant’s has reference to the meaning which should properly he attached to that part of the claim which says:
•‘All the heat absorbing and conducting sides of the mold being of substantially the same thickness.”
He strenuously contends that this language relates to the lateral or sloping side wails of the bosses or protuberances within which are formed the small mold cavities of the lower plate. In considering this clause, it should be kept in mind that the phrase does not say that all of the sides of the molds are to be substantially of the same thickness, but only the “heat absorbing and conducting sides of the mold.” In determining which of the sides of the mold answer that description, reference must be had to the specification, from which we learn that all of the small forms in which the pastry cones or cups are baked are attached to or form a part of the larger plates a and b of the "mold and oven,” and that it is these plates which in the process of baking are, by turning the apparatus, successively exposed to the direct heat of the “gas or other fire,” and so become the “heat absorbing and conducting sides of the mold.” Thus the patentee says that his mold, evi
Counsel for the defendant has brought to the court’s attention the case of Adams et al. v. Edwards et al., 1 Fed. Cas. 112, 114, 115 (No. 53), where Judge Woodbury, in charging a jury as to the meaning of the word “substantially,” said:
“When we say a thing is substantially the same, we mean it is the same in all important particulars. It must be of the same material, when the material is important; it must be of the same thickness, when the thickness is important,” etc.
Manifestly the judge, in defining the phrase as he did, acted without due consideration, or else, as is more probably the case, was misreported, since by the language as reported he gave no effect whatever to the word “substantially” in the sentence in which he spoke of “thickness.” The reporter put him in the attitude of saying that the phrase “of substantially the same thickness” means precisely the same as the phrase “of the same thickness,” thereby leaving wholly out of
“To be estopped, by tbe action of tbe Patent Office, the patentee must be shown to have surrendered something which he now claims in order to obtain that which was allowed.”
This familiar language is instructive as to the line of demarcation between the conduct of an applicant which will, and that which will not, work an estoppel against him. The complainant is not here contending that the heat absorbing and conducting sides above indicated should not be of substantially uniform thickness, and for the purpose mentioned. Indeed, its patent is in part based upon that very condition, and its drawings show clearly the intention of the claim in that respect. What it is claiming, and what the defendant is denying, is that his apparatus infringes that portion of the claim; the defendant meanwhile, in furtherance of its contention, urging upon the court what is believed to be an erroneous definition of what constitutes the heat absorbing and conducting sides of the mold.
Indeed, a short extract from the defendant’s brief will show how little of real difference there is, according to his own contention, between the defendant’s machine and that of the patent in suit. The extract referred to is as follows:
“Tliere is no question that these machines [Complainant’s Exhibit, Defendant’s Machines A, D, C] embody the organization stated in that claim which Valvona sought to secure before he limited it by adding the qualifications in respect to the adaptability of the apparatus to rest upon the top surface of a stove, and in respect to the uniform thickness of the heat absorbing sides.”
As already shown, the defendant’s 'machines undoubtedly have a somewhat different configuration from the complainant’s on their bottom face, but not sufficiently different to prevent their action in substantially the same way, to produce the same result, by substantially the same means. .Sufficient has already been said, however, with reference to the heat absorbing and conducting sides of the mold, while as to the adaptability of the two machines to rest on the top surface of a stove nothing need be said, except that either will rest there if desired, or either cán be supported, as the defendant’s is, on trunnions, and by that means have its upp.er and lower plates exposed alternately to the fire. Under the strictest rules of estoppel that can be properly be applied to the’complainant’s case, the defendant must be adjudged to have infringed the patent in suit.
A decree will be entered in favor of the complainant, with costs, upon the ground of infringement.