NATIONAL NEWSBOARD CO. v. ELKHART EGG CASE CO., 123 F. 431

After the foregoing statement of facts, GROSSCUP, Circuit Judge, delivered the opinion of the Court: The patent is for a new product. This product differs from antecedent paper board in that it contains oils, commonly found in ink, which give to the board a toughness and elasticity hitherto unknown. The board can be manufactured from old newspapers, the ink oils formerly eliminated, being now utilized; and this, though incidental, is a valuable feature of the patent.

The validity of the patent has been sustained in the Circuit Court of the United Stateg for the District of Connecticut; and in the Circuit Court for the District of New Jersey; and is admitted in the answer of appellees. Prior to the patent in suit, newspapers were sometimes utilized in the manufacture of paper board; but in such process the effort was to separate the carbon of the ink from the oil—the oil being taken out by alkali and bleaching, leaving the carbon for coloring matter.

The alkali employed usually was soda ash, in quantities from ten to twenty pounds per one hundred weight of paper, in addition to the solution left over from the preceding operation; its causticity sometimes being increased by boiling with caustic lime. In this way the oil of the printing ink was converted into soluble soap, •and thus washed or bleached out of the pulp fibre.

It is manifest, that in practical operation, under the process mentioned in the patent in suit, the oils cannot be entirely retained; a small portion will be lost in the boiling and beating process calculated to minutely subdivide and distribute the oils throughout the .fibers. It is manifest, also, that in the process employed in the previous art, a small portion of the oils were not eliminated; no amount of boiling or bleaching could completely purify the pulp.

But in the process under the patent, the purpose is to Ipse as little as possible; in the previous art, the purpose was to elimiriate as much as possible. The processes are in purpose, and in effect, so far as is practicable, the opposites of each other. And though the purpose of each partially fails, the results are so widely different that both the process and the paper board are commercially distinct. The appellees began by making paper board in accordance with the process described in the patent.

Upon notice to take out a license they changed the process in some respects, among others in the introduction of about one per cent, of soda ash, and in the beating in cold water instead of hot water. But there was no attempt at bleaching after the boiling, and the alkali was insufficient to remove but little of the oils. Plainly the removal of the oils was not intended.

The whole testimony impresses us with the belief that the introduction of the soda ash was intended, not to bring about a product essentially different from the patented product, but to interpose a process so colorably different that it might be used as a shelter against the charge of infringement; and in this respect we are constrained to look upon the defense of infringement differently from the view taken by the Circuit Court. The decree of the Circuit Court must be reversed, with instructions to enter a decree for an injunction as prayed for in the bill.