CONTINENTAL PAPER BAG CO. v. EASTERN PAPER BAG CO., 150 F. 741

LOWELL, Circuit Judge. This is a bill in equity to restrain the infringement of letters patent No. 558,969, issued to Liddell for an improvement in paper bag machines. The following claims are in suit: “

(1) In a paper-bag machine, the combination of a rotating cylinder provided with one or more pairs of side-folding fingers adapted to be moved toward or from each other, a forming-plate also provided with side-forming fingers adapted to be moved toward or from each other, means for operating said fingers at .at definite times during the formative action upon the bag-tube, operating means for the forming-plate adapted to cause the said plate to oscillate about its rear edge upon the surface of the cylinder during the rotary movement of said cylinder, the whole operating for the purpose of opening and forming the bottom of the bag-tube, and means to move the bag-tube with the cylinder. “

(2) In a paper-bag machine, the combination of the rotating cylinder provided with one or more pairs of side-folding fingers adapted to be moved toward or from each other, a forming-plate also provided with side-forming fingers adapted to be moved toward or from each other, means for operating said fingers at definite times during the formative action upon the bag-tube, operating means for the forming-plate adapted to cause the sail plate to oscillate about its rear edge upon the surface of the cylinder during the rotary movement of said cylinder for the purpose of opening and forming the bottom of the bag-tube, a finger moving with the forming-plate for receiving the upper sheet of the tube and lifting it during the formative action, power devices for returning the forming-plate to its. original position to receive a new bag-tube, and means to move the bag-tube with the cylinder.” “

(7) In a paper-bag machine, the combination of the rotating cylinder with the bag-tube provided with one or more pairs of folding-fingers adapted to be moved toward or from each other, a forming-plate also provided with forming-fingers adapted to be moved toward or from each other, means for operating said fingers at definite times during the formative action upon the bag-tube, operating means for the forming-plate adapted to cause the said plate to oscillate about its rear edge upon the surface of the cylinder during the rotary movement of said cylinder for the purpose of opening and forming the bottom of the bag-tube, and connecting mechanism for timing the movements of the rotating cylinder and the forming-plate.” In order to decide this case, it is agreed that only claim I need be considered, and that the decision upon the other claims will follow that reached regarding claim 1.

The Circuit Court found claim 1 to be valid and to have been infringed by the defendant, and it decreed an injunction accordingly. From this decree the defendant has appealed to this court. The several defenses set üp are as follows: 1. The defendant alleges that the invention of the patent in suit, whatever that invention may be, was not made by the patentee Liddell, but by Hunter, his patent solicitor.

He contends that from between the formal blanks which had been signed by Liddell, Hunter withdrew the specifications which had made part of the application at the time of its signature, and that afterwards, before filing the application in the Patent Office, Hunter inserted other specifications without Lid-dell’s knowledge. We do not feel ourselves required to review the evidence adduced to support this theory. It is insufficient to establish that the serious crime alleged was committed by Hunter. 2.

The defendant alleges that its machine is built in accordance with a patent to Claussen, No. 598,497, and that Claussen’s invention antedates that of the patent in suit; hence he urges (1) that Claussen anticipated the invention of the patent in suit, and so the patent in suit is invalid; or (2) that the two inventions are different, and so there is no infringement. But Liddell’s invention is carried back to January 7, 189C, and no drawing of Claussen made before that time shows any operative combination which anticipates it.

For a full treatment of this subject we refer to the opinion of the learned judge of the Circuit Court. 3. The important issue is noninfringement. The patent in suit is concerned with folding the bottoms of S. O. S. paper bags. In the prior art this had been accomplished both by a folding-plate reciprocating upon a plane, and by the operation of fingers upon a cylinder. The folding-plate and the cylinder had never been combined. The complainant urges with much probability that the reason why they not been combined lay in the difficulty of operating a pivoted folding-form upon the surface of a cylinder.

Two circles external to each can be in contact at but one point, while, in order that the folding-plate may operate, its end, as it moves upon a pivot, must remain for som'e distance in contact with the' surface of the revolving cylinder. The problem may be solved by causing the pivot or axis of the folding-plate to yield away from the cylinder, or by causing the surface of the cylinder to be depressed away from the folding-plate.

The patent in suit adopts the first device, the defendant’s machine the second ; and the crucial question before the court is this: Under all the circumstances of the case, is the second method, as compared with the first, within the doctrine of equivalents ? The defendant’s machine is within the letter of the claims of the patent. These are broadly drawn. The only clause with which we need concern ourselves is that which claims “operating means for the forming-plate adapted to cause the said plate to oscillate about its rear edge upon the surface of the cylinder.” The nature of the means is not specified.

There is no express reference to the specifications, and in them the patentee twice makes it clear that he does not intend to confine his invention to the particular means described.

Thus he says: “In place of those devices for controlling the movement of the plate, E, relatively to the cylinder, C, the said plate may he moved or operated by any other suitable means. * * * It is evident that the mere mechanism for securing the several movements to the different parts may be modified or changed in various ways without departing from the spirit of the invention, andi I do not, therefore, confine myself to the details of construction here shown.” This breadth of claims would imperil the patent were the real invention less broad, but the defendant has not pointed out, and we have been unable to find, any operative combination of a rotary cylinder and a forming-plate oscillating thereon earlier than the patent in suit.

If, therefore, the patent is valid, it has a wide scope, and the mechanical arrangement used by the defendant is fairly within its terms. The machine of the patent in suit is mechanically operative, as was shown experimentally for the purposes of this suit, but it has not been put into commercial use. No reason for the nonuser appears in the evidence, so far as we can discover. The defendant’s machine has been an assured commercial success for some years.

It was suggested at.the oral argument that an unused patent is not entitled to the protection given by the extraordinary remedy of an injunction.- This contention was not made in the defendant’s printed brief. While this question has not been directly passed upon, so far as we are informed, in any considered decision of the.Supreme Court, yet the weight of authority is in favor of the complainant. Fuller v. Berger, 120 Fed. 274, 56 C. C. A. 588, 65 L. R. A. 381; Bement v. Nat. Harrow Co., 186 U. S. 70, 88, 90, 22 Sup. Ct. 747, 46 L. Ed. 1058; Heaton Peninsular Button Fastener Co. v.

Eureka Specialty Co., 77 Fed. 288, 25 C. C. A. 267, 35 L. R. A. 728; Crown Cork Co. v. Aluminum Stopper Co., 108 Fed. 845, 868, 48 C. C. A. 72; Broadnax v. Central Stockyard Co. (C. C.) 4 Fed. 214, 216; Consol. Roller-Mill Co. v. Coombs (C. C.) 39 Fed. 803; Campbell Printing Co. v. Manhattan Ry. Co. (C. C.) 49 Fed. 930. As we find the claims in suit to be valid and to have been infringed by the defendant, the complainant is entitled to an injunction, and the decree of the. Circuit Court must be affirmed. The decree of the Circuit Court is affirmed, and the- appellee recovers costs of appeal.