OpenJurist

MORGAN ENVELOPE CO. f1. ALBANV PERFORATED. WRAPPING PAPER CO.

1577

MORGAN ENVELOPE CO.

v.

CO.

PERFORATED WRAPPING PAPER

et al.

(Citrcuit COUrt, N. D. New York. December !0,1889.)
L

PATENTS FOR INVENTIONS-ToILET-PAPER PACKAGES-NOVELTY.

Letters patent No. 325,410, granted to Oliver H. Hicks, September 1, 1885, for a "package of toilet-paper," the olaim of which was for "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 whioh the paper is to be separated, * * * and affording also the most advantageous surfaces upon whioh to tear the paper, " are invalid for want of novelty· Letters patent No. 325,174, granted to Oliver H. Hicksl August 25, 1885, for a fixture to be used with oval-shaped rolls of toilet.paper, ola1Illed (3) "the oombination, with an elongated or oval oscillating roll of toilet-paper, aotuated in one direction by a pull upon its free end of a stop constituting a knife oroutter, co-operating with the roll to sever the unwound portion therefrom when the roll has reached the limit " of its motion when so actuated." The fixture was durable, and designed to last for many years, while the paper might be used up in a short time. Held, that a sale of such rolls of paper manufactured by defendants, mounted on fixtures which have been preViously made and sold by complainants with paper mounted thereon, was not an infringement.

.. SA.'lIE-ToILET-PAPER FIXTURES-INll'RINGEMENT.

8.

Letters patent No. 357,998, granted to Oliver H. Hicks, February 15,1887, claimed "(1) the combination, with an oscillating roll of 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; (2) the "combination, with an oscillating roll of toilet.paper, " etc., "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; (8) the combination, with an oscillating roll of toilet·paper having its bearings out of line with its center of gravity, and actuated in one direction bya pull upon its free end of a stop for arresting the roll, * * * wnereby, when the roll has been arrested, and the length of paper removed. the roll will automatically resume its normal position." The fixture consisted of a back plate, two rigid arms extending outwardly at right angles, a flat metal core plate on which the I roll of paper is mounted, pivoted at the outer ends of the arms, and heavier on one side of the pivot than on the other, and a blade, extending between the arms at their inner end, acting as a stop and a cutter. The fixture sold by defendants dif· fered only io that its arms were hung loosely on the back plate by means of a hinged transverse bar, which acted as a wben oval rolls, mounted ou a sufficiently wide core plate, were used with It. 'Ihis fixture was a duplicate of an old one in common use at the date of the patent, which used cylindrical rolls on wooden spreaders, except that it had sometimes the core plate of the patent aod oval rolls when· it did the same"work. HeW. that, as the core plate was not an element of the above claims, if they were infringed by a sale of defendants' fixture with oval rolls of paper, they were invalid for want of novelty; and If the stop described were an essential element of them, they were not infringed.
SAME.

SAME.

"

The fifth claim of No. 857,9\18 was for "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, aod a stop for limiting the motion of said plate." Held, that this claim was in· fringed by defendants' fixture whenever a core plate was used, weighted or hung so that its depending side, when rotated upwardly, would be arrested by the trans· verse bar if any paper were left on the rOll, and would fall by its own gravity.

In Equity. On bill for infringement of patents by the Morgan Envelope Company against the. Albany Perforated Wrapping Paper Company and others. Church &: Church and B. F. ThurBton, for complainal;1t. A. J." Todd, for defendant&. . v.40F.no.l0-37

FEDERAL REPORTER, Vol.

40.

WALLACE, J. The complainant sues for the infringement by the defendants of three patents granted t:o OliverH. Hicks,-thefirst being No. 325,410, dated September 1, 1885, for "Package of Toilet-Paper;" the second being No. 325,174, dated August 25. 1885, for "Toilet-Paper Fixture;" and ithe third being No. 357,993, dated' February 15, 1887, for "Apparatus for Holding Toilet-Paper." All of them relate to cogn/,tte. the first being for toilet-paper when put up in specifiedform, and the others being. for apparatus for holding the paper, and permitting i,tto be,removed for use. . The first patent is" iIilValid for want of novelty. The subject of this patent is well stated" in the claim that appeared in the application for the patent, filed July 10, 1885, vjll.: "Asa new article bundle of toilet-paper, consisting of one or ,more paper ,formed Into a flexible continuous band of oblong or oval shape, the short rounded ends of said bands serving as guides for determining proper points the, i?aper is to be separated in order to produce sheets of a size desiraJjle for )lse, 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 form ,of jl.noblong or ovalshaped roll. It was old to put up stich paper in the form of sheets cut the proper size for use. It was old to put it up inthe formof 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 trsIlsversely at given intervals, so that it could be easily torn from the rollin pieces of a predetermined length. It w()wdnot ,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 cylmdriCJl1 rolls; but, 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. , . old ova] rolls shown in the patent to Peacock,and those like "Defendants' Exhibit No. 2<,1:," were of smaller size than the roll' preferably by the ,patent, bqt there is no patenta:ble difference between them. 'Although the rolls of the patent are not new i:I:l,8.;patentable sense, they Me peculiarly useful, When employed in fixtures1ike those of the second and. third patents, and the real invention Of 'Hicks consists in devising·the·. in whi,ch the paper is to be arranged. . ,!J:'hesecond and third patents in lilUit, 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 a given quantity of it from being withdJ:lIown from the package at single operation, and so that in 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 withdrawirig a like quantity by the next operation.' The fixture consists of'a ,back plate, tW()arms rigidly conneoted therewith, extending out.wardlytherefrom at right angles; a flat metal core plate, upon which the roll of paper is deeigned,tobe monnted,pivoted on the outer end of the arms, and made somewhat heavier on one side of its pivot than on the

a

1l0RGAN ENVELOPE

PERFOWATED';WBAtPPING PAPER· CO.

579

other; and a blade, extendingbettweeIithe arms at their'inoerend, whiclli pel'forms[tlIe:functions of both a stop and a cutter·. The blade fdrward :f!l.omthe back plate sllfficieritly to' allrest the core plate, andlil1lit its motion when rotated in either direction. In operation, after the roll of paper has been mounted upon the core plate so that a free end is depending, the free end is pulled by the person who desires to use the paper., and This pull rotates the roll upwardly until it is arrested by the when its rotation is arrested, one end of the package rests upon the blade, and the depending end of the paper is severed at the edge of the blade by another pull. Thereupon the weighted core plate, pivoted,aa described,swingsback the package automatically until the otherenq isfl,l'rested by the blade, when it resumes its original position. The specification states: "It will be observed that the plate or blade, M, performs the functions Qf a stop for arresting the forward rotation of the roll, and holding the rollwhlle the section of paper is being removed,. as well as .the function of se'vering said section of pape.r; and its importance .as a stop is as great. if not greater.than its iinportance 8$ aeutter, since the stopping of the roll, couplild with the tinued movement of the free end of the paper, must necessarily cause·theseverance of the paper at some point at or near the point the eud 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 itselfto the public asa simple and efficient qevice by which toilet-paper could be economically and readily \levered from the r611 in pieces of convenient length.· It dispensed with the necessity of putting up the paper in sheets, or in rolls perforated trang.. versely to enableit 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 blatle and the core plate. The second patent containsnve 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 be infringed by the defendants, is as follows: "The combination, with an elongated or oval oscillating roll of toilet-paper. actuated ill one direction by a pUll upon its free end of a stop co'nstituting a knife or cutter, co-operating with the roll to seVer the unwound portion therefrom when the roll has reac,hed the limit of its motion when so actuated, sub.tantially as described." The defendants manufacture· and sell a fixture known as the "Universal Fixture;" together with oval-shaped rolls ofpape,r to accompany it, and be used in it. Their fixture does not>contain a cutter, and tJ;Us is

680

DDERALBEPORTEB,

vol. 40.

by the complainant. The complainant asserts, however, tLll.t the defendants infringe this claim because they sell rolls of oval toilet-paper manufactured by them, in conjunction with Of mounted upon fixtures which had been previously made and sold by the complainant with rolls of pap'er made by the complainant. The fixtures thus sold by the defendants were once lawfully purchased, with paper mounted therein, from the complainant, and after the paper was used up the purchasers sold the fixtures to the defendants. ' In other words, the case is as though the defendants were charged with infringement because they sell rolls of oval paper which they manufacture to persons who have bought the paper and fixtures from the complainant, and, having used up the paper, wish to get more to use with the fixtures. The sale .of the paper to those who have a lawful right to use the fixture, and to use both the fixture and paper together, is not an in.vasion of the rights of the complainant. i The paper,as an element of th. patented invention, is one for temporary use only. The fixture proper is a durable device, which is designed to last for many years; while the foIl of paper may be completely used up in a few days. This circumstance repels any inference that the right of a purchaser to use the fixture does not survive the life of the pa per. The purchaser who buys a machine or device, patented or unpatented, without any restriction as to the mode or extent of the use to which he may apply it, acquires all the rights of the seller, and may do with it whatever the seller might have done if he had not parted with it. He acquires the right to use it, to repair it, and to sell it to others;. and those to whom he If the original vendor is the licensee of the sells acquire all owner of the patent of the whole monopoly in the use and sale of the article, a purchaSE! of the article from him is, in. legal effect, a purchase from the owner of.the patent. The sale of the article transfers the monopoly right in the article itselfwithout qualification. HoUiday v. MatheBOn, 23 Blatchf, 239,24 Fed.· ltep. 185. If the purchaser may lawfully repair the artiqle,or remove a Pl1r1;of it and substitute another, it is quite immaterial w,:hether he does it by. his own hands or procures another to do it for him; and if the act when done by himself does not violate the rights of the owner of the patent, it does not when performed by another at his request. ,So, also, the purchaser, instead of repairing the article himself, or procuring another to do it for him, may sell the article in the condition in which it is to another, and the latter acquires all his right to repair it. These rights are all incident to the property in the article itself. The purchaser does not acquire any rights in the monopoly directly, but he does acquire the right of unrestricted ownership in the article he buys as against the vendor, including, as an inseparable incident, the right to use and enjoy it as his own, and to transfer his title to others. On the other hand, when the owner of the patent sells the patented article under circumstances which imply that the purchaser is not to acquire an unqualified property in the thing purchased, as where a license accompanies the transfer, :the purchaser's rights are limited to the extent impliedb),·the license, or the other circumstances. The right to repair apatente<i bought of the patentee) or to supply a part which
i

MORGAN ,ENVELOPE CO. tl. ALBANY PERFORATED WRAPPING PAPER CO.

581

has become inoperative or worn out, is distinctly declared in Wilson: v. R0U88eau,4 How. 647, and in Wilson v. Simpson, 9 How. 109. If it did not exist, the value of most patented articles would be materially lessened, and thus the owner of the patent, as well as the public, would fail to derive the full benefit of the invention. There is nothing inconsist-' ent with these views in the case of Cotton-Tie Co. v. Simnwns, 106 U. S; 89, 1 Sup. Ct. Rep. 52. There the patented article was sold, "Licensed to use once only," and after it was practically worn out, and the right of the purchaser to use it had terminated, another person, who bought the parts as old iron, reconstructed them anew into the patented article. Ifin this case the fixtures had been worn out, or had in any other way fully subserved the use for which they were intended when sold, the doctrine of that case would apply. The law of contributory infringement has 'no application to the case. That 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 had not been sold by the complainant. It would be mere gues,;-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 of toilet-paper, actuated in one direction by a pull upon its free end of a stop for arresting the roU 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 litllit 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. ' "(3) The combination, with an oscillating roll of toilet-paper, having its bearings out of line with its center of gravity, and> actuated in one direct,ion 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 bas been arrested,and the length of paper removed. the roll will automatically resume its normal tion, substantially as described." "(5) The combination, with the supporting arms, of an oscillating coce plate, weighted on one side of its pivots so as tocause 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...·

IIS2

.fn mn i

'1

,.,

FEDERAr:. BB?ORTER,VOl.

4{).

It i'1i'dneilltbd: for ,theoom.pluimtn,it that the Univfersatfixtu're sold by defendaUtslis'an infringement of·thefiftb claim., and that when that fixttu,eis'!uJJed! with oval.,shaped, packages of. paper the combinations ,of the other ,iClaitIia are infringed. ThiaJixture has a back plate and arms, a.:tlat metal core.plate"which is pivoteditito them, and is heavier:OD one side of its pivot than ,on the other. The arms, instead from the.back plate at right angles, and being with it, as theY!tQre in the "fixture of the patent, are hung looselY,upQn the back plate by means, of a transverse bar, to which theyare."ttached. This bar:ishinged to the back plate. In use, after the paper has· been mounted 'upon the core plate, and the free end upward until it comes in contact with the transverse bar. If the package is so large that the arms will not carry,itbeyondthetraosverse bar, it isstopped,and in that paper: is more likel:Vto be,isevered where ,it is in contact with the bar than at any. other place. When perforated, paper is ueed, as it is largely with the Universal fixture, the llliradds a resistance to the rotation of the paokage which caUses the paper to break on the line of the perforation.. To this ,extent the transverse bar operates as a stop, but it is obvious that the baok plate itselfwould.,operate as a stop, and that the transverse bar only does. somewhat more efficiently the work which would ,be done by the, back: plate if the arms were immovably attached directly to it. When cylindrical rolls of paper are used in this and are ,mounted on a cylindrical core plate,which is usually the case, the transverse har performs.no; other function than that of carrying the :arms. When, however, oval rolls are used in it,and are mounted pna core plate ofa width beyond its pivoted center, which prevents it from passing by the transverse bar when rotated, the transverse bar/performs the functions of a stop. ,When a weighted core plate of the requisite shape and ditnensions is used in it with the oval roll paper, the parts perform the functions of the fixture described in the specification, and shown in the drawings of the patent, except the cutting operation. The several parts of this fixture, exdusive of the core plate, conJointly when the oVal.roU of paper, just as they do when used ,with the cylindrical roll. Tl).ey do precisely the same work which the Albany fixture does when used with oval rolls of paper, and by the same mode of operation·. The Universat fixture is a duplicate in all its parts 'of the old Albany fixture, except"that; instead of the cylindrical wooden the roll or Illtper is mounted in the Albany fixture, in plate of the patent. The defendants "filll both the fixture and' oval paper ,to be used in it. ,For the reasons stated in considering the validity of the first patent, t1val roll paper was old at the tinH!whell the device of the plitent was in.vent,ed. , a,s noveltY4 ,,?,es,'',not r,eside in the cOlllbinat,ion, of an elemetlt with' 4ther oid no new mode of ,operation action iqthe new combination, none of the claims of the patent can be sustainEldas valid which are to be read as

)fORGAN ENVELOPE CO.". A.LBANY PERFORATED WRA.PPING PAPER CO.

588

for a combination consisting of the oval roll and the parts found in the Albany fixture. The core plate is not an element of either the first or the second claim of the patent, and it follows that if the Universal fixture, when used with such a roll, is an infringement of these claims, the claims are invalid. If these claims are given a more limited interpretation, by which a stop structurally such as is described in the specification is .an element, the defendants do not infringe them. The same conclusions obtain respecting the third claim. The specific core plate is not an element of that claimj and the oval roll of paper, if hung on a cylindrical core plate in the Universal fixture or in the Albany .fixture, would have "its bearings out of line with its center of gravity," as described in the claim.. The fifth claim is for a combination of all the parts of the fixture, and can be interpreted as one in which a core plate anda stop, so constructed and arranged with reference to each other that they cannot pass one l:!Jl-. other when the plate is oscUlated, are elements. The two parts Jl:re described by letters of rElfElrence to the drawings in the the stop as."M," and the core plate as "Fj" and, although the language of the specification does not point (lnt anything in respect to their relative dimensions, the drawings show that they are of such. breadth, re-: spectivelY,that. the core plate cannot .bEl, rotated palilt the stop iI;l either direction. It is apparent that, if this feature of relative dim.ensiollS were or would only i111ignored, the parts would not perfectly, to perform the functions assigned to them of arresting the roll of paper when' mounted and rotated. The core plate of: t4is claim is weighted on one,side,of its .pivots, This is effected w;hen the pivpts 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 cOIl)bination the transverse bar of the Universal fixture is the equivalent of the blade ofthe 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· be 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 interpreteq. Coffeedid not the core plate, and Richard. son did not employ the stop of the patent. . . The complainllPtis not to recover costs of the suit.

584"

FEDERAL REPORTER,

vol. 4.0.

HEYSINGER

et al. f1. Rouss.

(CfrcuU CO'Wrt, S.,D. New York. December 10,1889.)
PA.nNTS POR

,The question of the of a patent, is re8 adjudicf(ta, where it bas been adJUdioated by another judge 6f the same circuit, and the parties 1'.0 the two aotioll8 are the same, and the·records substantially identical.

ADJUDICATA..

In Equity. Joshua Pusey, for complainants. John J. Jennings, for defendant.
COXE,J. This is an infringement suit, based upon letters patent No. 218,300, granted to Mills and Hershey, August 5, 1879, for an improvementin bliir-crimpers. The patentWf1s declared invalid by Judge SHIPMAN in tbe circuit court for ;the' district of Connecticut. Hershey v. B14kesley, 33 Fed. Rep. 922. That the'parties to that action are, in legal contemplation, the same as the parties to the suit at bar, and that the records in the'two actions are substantially identical, is conceded. The defendant has taken some additional testimony, but the complainant's proofs 'are the same in evetjrespect as those presented in Hershey v ·. Blakesley. I have examined the recOrd and briefs, to discover. a plausible theory :Upon which the twO causes can be distinguished, so as to justify a re-examination of theissues presen,ted. I find none. The court is now asked to pass upon thesaIfie questionwhich, after deliberate and careful coDsiqerati<)ll, has been decided by another judge of the same circuit, upon precisely the same testimony. There is no precedent for such a course. The matter ieres judicata. The bill is dismissed.

POPE'

MANUF'aCo. ".

Jersey.'

JOHNSON.

December 2, 1889.)

,

(Circuit Oourt, D. New

P.lTBNT6 'JOlt INVBNTIONS-PRELIMINARY lNJPNCTION-LA.cHEs. ,

On bill for discovery and accounting of sales of J;latented articles by defendan' under an agreement with complainallt, a' prelimlOary' injunction Will not be' granted to restrain defendant from proceeding further under the agreement, where more than three years have elapsed between defendant's first default in making returns and the filing of the bill, and the delay is not explained, and a final decree may be had in less than five months.

In Equity. On bill for discovery, accounting, and injunction. plication for preliminary injunction. Wetmore &; Jenner, for complainant. Philip J. O'Reilly, for defendant.

Ap-