AMERICAN BOX CO.
(Ofreuft Oourt, N. D. nUn0'!8. January 13,1899.) 1.
PATENTS FOR INVENTIONS-Box MACHINE-NOVELTY.
Letters patent No. 244,919, granted July 26, 1881, to Gordon Munro, for a machine for covering pasteboard boxes with paper, consisting of a frame upon which is mounted a spindle for carrying a roll of paper, a paste box, througll which the ribbon of paper passes as it is unwound from the roll, and a guide roll for guiding the paver as it is delivered from the vaste box to the box to be covered, are not void for want of novelty. Box Co. v.-Day,32 Fed. Rep. 585, followed. Said patent is infringed by a device which differs from the patented machine only in using bent rods over which the paper passes, in place of the guide rolls described in the specifications.
In Equity. Wetlliore & Jenner and W. Furne.'18, for complainant. Curtis & Rodman, for defendant.
BLODGETT, District Judge. I n this case defendant is charged with the infringement of letters patent No. 244,919, granted July 26, 1881, to Gordon Munro for a "box illnchine." The scope of the invention covered by the patent is stated by the patentee in his specifications as follows: "My invention relates to improvements in machines for covering pasteboard boxes with paper, in which the paper is taken from a roll or coil, and passed over a roller resting in a pflste box, and over or under other rollers, to box resting upon a form adapted to revolve; and the objects of my improveffil'ntsare to produce an inexpensive machine. in which the amonnt of paste received on the paper can be.regulated, the paste or glue retained.in a warm or hot state, and the deli very of the paper froUl the coil ill adj uSlably accomplished." . Dispensing with the letters of reference, the machine described in and covered by be patent consists of a frame upon which is mounted a spindle for carrying a roll of paper, a paste box, through which the ribbon of paper, as it is unwound from the roll, passes, and a guide roll for guiding the paper as it is delivered from the paste box to the box which is to be covered. The patent contains two c1a1illS, as follows: .. (1) The com bination of the table top, A, paper roll supporting frame. paste box, F, and heating pipe F ' , with gUide rolls, L, 1\-1, N, and block, e, adapted to revolve, substantially as and for the purpose described. (2) The, combination of the tablp top, A, paper roll supporting frame, paste box. F, and adjustable scraper, K, with guide rolls and block, e, adapted to revolve. substantially as and for the purpose described." The defenses interposed are (1) want of novelty; (2) that the defendant does not infringe. The defense of want of novelty is based upon a large number of prior patents, introduced in evidence, but the principal reliance seems to be upon the Orr & Wright device, patented October 2, 1866. The case of Box Machine Co. v. Day, heard before the United States circuit court for the eastern district of (32 Fed. Rep. 585,) was upon a double
strip machine by the same inventor, being patent No. 298,879, in which the want of novelty in the patent, :was ul'ged as and the court briefly disposed of that question in the following paragraph: .. To discuss and cbn'trast theseveralexhibits relied upoo'by the defendants, and the conflicting testimony of witnesses, would serve no useful purpose. It is sufficient to say that the evidence does not show such a prior state of the art as would justify a finding against the patent., The combination seems to be new,highly useful, and, we think, shows invention." If the defense of want of novelty as to a double strip machine was so summarily disposed of by that court, the inference is certainly very strong that it would have fared no better in regard to a single strip machine. The Orr & Wright patent relied upon here was a complicated machine, in which provision was made for delivering the ribbon of paper to the box to be covered by. of a crank by an assistant to the operator who manipulated the box, and the raper ribbon for the purposes of covering being dependent entirely for the supply of paper upon the person who the the complainant's IiDachine the rolls are so loosely adJuste<i as that tb.e operator draws the paper towards ,him as is needed for the purpose the box, the tenaion being just sufficient to the paper lie upon the box as it is drawn on, and dispenses entirely with the attendant who turns the crank. The simple, and}he proofshows gone into extensive use, and is the ,fir,at and only SllccessJul machine of the kind which has been devised. Ita simplicity, I think, is the key to its success; and now that thispatenteEl has tatight the publio the requisites for such a machine, it is very easy to organize one from the old machines which were irioperativeaI?-d uselessllefore. I do not find in the numerous citations which have be'en made in this case any machines which fairly anticipate the dev+ce by the patent, and, aside from the rule of comity, which should govern in a ca:se like this; I must say that the new proof, even if there is any in. this case, does not sustain the defense of want of novelty.'" . As to the infringement, I fipd in the defendant's machine all the elements of the pla.intiff's second claim. The defendant does not use the guide rolls, L, M, N, which are in the combination of the first claim, but in plitce hf those substitutes Some bent rods, over which the paper passes before it the DQxupon which it is to be placed. There seelnS from .the proof to be;s necessity in the manipulation of the paper, in order to have it properly adhere to the box, that it should pass some distance through'the air after it leaves the paste box, so that the papel," ,I1laY become to ,some extent softened and limbered by the dampening which it receives from thA paste. At all events, the defend'ant's machinejs I?O to carry the paper fully as far from the paste bo:x:before it rea<;hesthe to bEl covered as does the complaiuant's,machinej and, while the ,paPerip;,the defendant's machine does not pass over or under ,itpl:lsEleEl over and under rods which are doubtlel:!s the equi¥alent, certain ex,t!lllt, of the rollers, as it ,keeps
the paper frolD dragging upon the table, and thereby becoming to some extent wrinkled, or some part of the $urface injured..· While, therefore, it is not so clear that the defendaritinfringes the first claim of the complainant's patent, I am fully satisfied from the proof that an infringe-ment of the second claim is clearly established; and, did I deem it necessary to find so, I think I should also adjudge an infringement of both claims by the defendant's machine. A decree finding that the patent is valid, and that the defendant infringes, will be entered, and a. reference made to a. master to assess damages.
(Circuit Court, B. D. Ohio, W. D. May 14. 1892.)
No. 4,419IJrnmGIIMlmT OJ' TIU.DB-MARB:S-AcCOUNT OJ' PROJ'lTS-NOTlCB-LAC1I1II.
In a suit. to restrain the infringement of plaintiffs' mixture trade-mark, "Gllk&Kummel, .. and. for an account of profits1 defendants filed a plea alleging that t.hey and tbeir predecessors had used t.be traae,mark for 20 years without knowledge of plalnti1l's' right, and without Intent to injnre them, and that immediately on leam· ing of such right they had desisted from such use. The only circumstance relied on to show notice to plaintiffs of the illegal use, and consequent. laches in demand· ing an account, was the fact. that they had an agency for the sale of the mixt.ure in New York citY,800 miles distant from defendants' place of buaineu. Held. that. the plea presented no suftlcient defense.
In Equity. Bill by Hermann Gilka and others against Monis Mihalovitch and others. Plea of defendants overruled. Jrfatthe:ws &- Cleveland and Smith &- Harlan. for complainants. GOBS &- COhen and 4.lfred Mack, for defendants.
SAGE, District Judge. The bill is to restrain the infringement of the complainants' trade-mark, under which a mixture or cordial, long known as "Gilka·Kummel," is and has been for many years advertieed and sold by the complainants and by their predecessor in business. There is a for an accoUlit of the profits made by the defendants by the manufacture and sale of an imitation cordial, under the name of "Gilka-Kummel," and with the use of the complainants' trade-mark. The defendants filed a plea setting up that they have continuously engaged in the business of manufacturing, bottling, and selling cordials and other liquors for the past 15 years; and that two of them, who were the predecessors of the present defendant firm, were engaged in such business for upwards of 5 years continuously, prior to such time; and that during the entire 20 years there were manufactured and sold, in the open market and in the business and trade of the defendants, and of the complainants, bottles, labels. packages, and other signs and devices similar to those set forth and described in the bill. Admitting that, in common with others in their tra<i6 and business, they have in the past, and up to the datebereinafter "mentioned, manufactured and sold, upon the ordt:r of customera,