OVAL WOOD DISH CO. V. SANDY CREEK, N. Y., WOOD MANUF'G CO.
record that the two alleged infringing machines were designed by Woodward, and constructed according to his designs, and that they were made, used experimentally, and offered for sale by the defendants Barrett. In the absence of any further evidence, we think this creates such a presumption of privity between the parties that all estopped from disputing the validity of the patent. . Telegraph Co. v. Carey, 22 BIatchf. 34, 19' . On the question 9,f infringement, we entertain no doubt. In the two machines constructed by Woodward and which the plaintiff says infringe the patent, the driver is continuously in operation, or, in other words, the automatic starting and stopping mechanism controls the tack feed only, while, in the machine covered by the patent, both the tack driver and tack feed are controlled by the automatic starting and stopping mechanism. There are also other differeIices in constructional details, having special reference to the starting and stopping mechanism. It may be that these allege,d infringing machines are an improvement upon the invention covered, by the Woodward patent in suit, but they still have all the essential elements of the best form of that invention, and therefore must be held to infringe it. Decree of the circuit court affirmed.
OVAL WOOD DISH CO. et al. v. SANDY CREEK, N. Y., WOOD MAN1':-!i"G CO. (Circuit Court,N. D. New York. March 5, 1894.) No. 5,959.
The defense of prior use must be established beyond a reasonable doubt.
SAME-Two PATENTS FOR SAME INVENTro".
After an inventor has secured a patent for a concavo-convex dish cut or scooped from a block of wood by a revolving curved knife working alternately with a fiat facing-off knife, and another patent for a machlile for thus making the dish, he cannot secure a thlird valid patent for the process of making the dish, as it would be, practically, a new patent for matter covered by the prior ones. Plummer v. Sargent, 7 Sup. Ct. 640, . 120 U. S. 442, followed. The Smith patent, No. 273,773, for a wooden dish, is restricted by the specification to a dish cut or scooped from a block of wood by a revolVing curved cutting knife or its equivalent, and as thus construed shows invention and is valid. The Smith patent, No. 276,198, for a machine for scooping out wooden dishes from a block of wood, and consisting of a revolving curved cutting knife and a fiat facing knife, shows invention of a high order, and is entitled to a reasonable application of the doctrine of equivalents. Infringement of a patent for a machine for scooping out wooden dishes is not avoided by making the cutting knife oscillate instead of revolve, and the flat facing knife reciprocate vertically instead of revolve around a shaft" for in each case the devices are mechanical equivalents.
SAME-INVENTION-WOODEN DISH MACHINES.
In Equity. Suit by the Oval Wood Dish Company and Seth H. Smith against the Sandy Creek, N. Y., Wood Manufacturing Company for infringement of certain patents relating to wooden dishes.
HiI'l,' foI"complainants. James P. Foster and
Arthur Stem, and Lysander " , , 'Wilson" fordeffndant.
, ThIS ;i"ari eqUity action, based upon three letters patent,granted tQSeth H.Sniith and nowowp,ed by the,compl,+1pants; A. 322,017,gran,ted July 14, 1885" for, a ,1rnife' for. dish blanks, .is included in tl].e ,decide«I at the argument that it was not infdng¢ql '"The acti,op, is, therefore; upon the other three. ' the,se",;No. 273,7,7,3, '\Va"s granted M,arch" 13,,1883,', for a, wooqeq, plate. " The :was filed November 22, 1882. No. 276;198, was April 24, 1883; for a machine for wooden, plates. application wa,s. filed, January 27, 1883", 'No., 278,828, was g,l,'anted June 1883, for the qf cutting ,articles from ,. ;Wq9d. The application was filed 1883..' In brief, thEm, t4e patents are first, for a machine, Second for tlle process ,of the machine, ancl third, for the produci'of'the machine. ' '" " , 'No: 273,773. The speciftcatiop ,of this patent; which is first in order of time, ' ,j says:
"This invention relates to plates or dishes tor butter, berries, and for other purposes; anll.:it consists of a segmental in cross-section, and with a level or upper edge, the same being cut or scooped in a single piece from the' face of a block of wood. as will be hereinafter, fully des<;ribed and particuIarlypointed out In the claims. *, * * :My Unproved plates lire made ot wood hia single piece by cutting them from the face of a, block, across thegra,in ot the latter. This is done by means machine which I subject of a separate application tor letters patent, and which ootnprises a revolVing curved-knife for scooping' or cutting the shells from thetace of the and a fiat facingknife for fllcing ofrthe block after each stroke of the cutting knite. ,By this facing-off 'proce$s; which takes pla:ce Intermittingly' with the operation of the cuttb1g-knife, the upper edge oteach shell is ofr smoothly, thus preventing splitting or slivering, and causing all the, dishes or shells cut by the same machine to be of exactly the same size and shape, so that, theytna,' be nested together in the sma.llest possible space for transportation."
All the claims are involved. ' They are:
a block ot wood in concavo-convex forni, as, ttl\ "article of manufacture,. · , " .,·'' "2. .} or dish cut or scoQped,from, the face 'of a block of wood in concavo-ct>l;l.vex form ,and segmentally incross-section, as an article ot man"1. A plate or dish cut or scooped
'I."" , '
"3. A plate or dish consisting of a shell cut or the face ot a block, of' wood form and with horizontal upper edges, as an artiC1e of' mantilacture. '" ' "4. A'plat'eor disli consisting of a: shell' ,cut or the face of a block of ""600 'in concavo-convex torm, segmentally' in cross-section, and with upper edges as an article of manufacture,"
The defense is that the claims are too broad and the patent void ' for that reason.
OVAL WOOD DISH CO. 11. SMWY CR!'J!'JK,N. Y., WOOD MANUF'G CO.
The invention of this patent, as stated in the specification, relates to a machine for cutting continuously from a block of wood concavo-convex shells, plates or dishes, serving as packages for . butter, berries and for other purposes. The invention consists in certain improvements in the construction of the said machine. The specification describes minutely the construction of the machine and proceeds :
"After moving the follower back, a block of wood of the propel' size is placed in the trough and clamped by the dogs. When the machine is started the block is fed to the knives or cutters, which are to be so arranged in relation to each other and to the feed that the feed shall take place after the curved . knife completes its passage across the face of the block and before the facing knife reaches the edge of the same, while the latter must nearly· or quite complete its throw before the cutting knife comes into action. The function of the latter is to cut from the face of the block shells or cOl)cavo-convex dishes, while the facing-knife before each throw. of the cutting-knife faces off the block, thus causing the cuttinglmife to cut always from the face of the block, and make all the shells cut of exactly the same size and shape."
The claims involved are the first and second. lows:
They are as fol-
"1. A machine for cutting concavo-convex shells continuously from a block of wood, the same comprising in its construction a revolving curved knife having both its ends attached to the driving-shaft, and a facing-knife attached radially to a shaft located at an angle to the driVing-shaft, substantially as set forth. "2. In a machine for cutting concavo-convex shells.. continuously from a block of wood, .the combination of a revolving ClU'ved knife having both its ends attached to the driving-shaft, a facing-knife attached radially to a shaft located at an angle to tbe driving-sbaft, and mechanism for feeding a block intermittingly to said knives after the throw of the cutting-knife and before the throw of the facing-knife. substanti!111y as set forth."
The defenses are that, with the claims limited as the defendant insists they must be by reason of the prior art, they are not infringed.
The specification of this patent states:
"This invention relates to an improved art or method of cutting continuously from a block of wood concavo-convex or curved articles, such as thin plates or dishes suitable for grocer's packages and for other purposes; and my invention consIsts In the improved method of cutting the said articles continuously in such a manner that they shall be of exactly the same size and shape and with smooth level edges so that no finishing process shall be necessary in order to make them ready for the market, this being accomplished by first cutting a properly-shaped shell from the face of a block of wood by a single pass of a rapidly-revolving knife having both ends secured to the shaft or axis on which it re.volves in· front of the face of the block, and next facing off the block by means of a straight knife or cutter, which Is secured at an angle to and revolves with a shaft located In a line with the line of feed. * * * In carrying out my invention it is my purpose to avail myself of a machine embodying in its construction a bent or curved knife mounted upon a revolving shaft, by: means of which the article is cut or sliced from the end of the block, and a straight knife mounted upon l,'evolving shaft at an angle to the first one, for facing off the block. It w.illbe understood from this that the plates, dishes or other articles cut from the bloCk will be true segmental in cross section. segments of a circle the center of which is the center of the shaft carrying the cutting-
. FEDlllRAL BEPORTER, vol;
knIfe, whIle In longitudInal section'tJi,\llr,:shape wlll be regulated by that of thecuttIng.knife. If a block of wood were contInuollsly a reo 'arranged asa'escribed; lwlthoutlntermlttingly facing otrthe, block, the knIfe woUld eventually' begin cutting at the edge of: the block, .1ihtlS being ]Jkely to /ilplitor sliver. ,the edges of the articles, and under,all circumstanceS,C'\lttlng so thin and uneven that each plate,dISh, or other article would 'req1llre 'to be faced or finished oft before it woUld be marketable. By my invention these objections are overcome. 4! · · By. the process. herein descrIbed wooden plates, dishes, and other like articles may be manufactured in a most excellent manner and at a trifiing cost." ,
The clanns are as follows:
articles. or Shells continuously from a block, which consists in cUttIng said shells trom the face of the block by a single pass of a rapidly-revolving knife having both ends secured' tc)'the shaft or axis on whIch It revolves in front (If the face of the block, as set forth. "2. :rn'the art of cutting wooden articles or shells continuoufIlly .from a block, the herein-d.escribed. process of faclng oft the saId block bY" )Ileans of a straight knife or cutter' whIch Is secured at an angle to and revolves with a shaft located In a line with the line of feed, substantially as set forth. "3. The herein-described ,art or process of Clltting concavo·convex wooden articles or shells continuously from a block, which consists In alternately (luttlng a shell from the face of saId block and facing oft the block by means substantially as described, as herein set forth."
"I. Tbeherein-descr'lbedart or method of cutting concavo-convex ,wooden
The defellses ftrst, that the _patent is void for the reason that the patentee could not have a patent for the machine and the product and. also for the process, within the doctrine of Miller v. Eagle Co., 66 845; 14 Sup. etc., Co. v. Mosler, 127 U. S. 354, .8. Sup. Ct:, 1148, ap.d,. second, .that. it is functional, describing merely the action of the machine. Infringement is not disputed. Two defenses, applicable to all 'of these patents, relate to an alleged prior use by Dewitt O. :reck and another by James and Wilson McConnell. Prior Use. Neither the Peck: nor the McConnell prior use has been established to the satisfaction of the court. It is doubtful if the court could find for the defendant upon this issue if it were only necessary to establish' the defense by a· preponderance of proof. Surely the defense has not been established beyond a reasonable doubt. Such a doubt wiU,it is thought, find lodgement in any fair, impartial mind after reading this 'testimony. There can never be a decree for a defendant in these controversies until such doubt:iS removed. That it exists here is enough. The Telephone Case, 126 U. S. 546, 8 Sup. ct. 778; Tatum v. Gregory, 41 Fed. 142; The Barbed-Wire Paten-t, 143 U·. S. 275, 284, 12 Sup. Ct. 443, 450; Mack v. Spencer, etc., Co., 52 Fed. 819. There is a marked contradiction between tthe witnesses of the defendant and the complainants on this issue, but the latter, from their, surroundings, their means of and the corroborating data which they produce, are certainly as likely to be correct as the former. The court is not satisfied that what Peck did was prior to November, 1882, the date ()fthe Smith i:nvention. The . letter written by Peck in April, 1884" is of itself almost sufficient to raise a relliSonable doubt. This letter is as follows:
OVAL WOOD DISH CO. fl. SANDY CREEx, N. Y., WOOD MANUF'G
. "Pierson, Mich., April 7, 1884. ''The Smith Manufacturing Co., Detta, O:-Gents: I am thinking quite strongly of engaging in Clltting out bUJtter-pIates. and therefore would like a machine. We have plenty of timber and I have a steam power. and would like information as to the amount of power used and speed of cuttIng, also, the royalty and sale. Please inform me in full. "YoilrS, respectfully, D. W. C. Peck."
Is it possible that he could have written this letter if he had perfected a machine for cutting butter-plates nearly two years before? Clearly not, unless upon the theory that he had become a pronounced paranoiac during the interim. The attempt to establish the prior use of the McConnell machine was a complete failure. The McConnell structure was not before the Smith invention, but even if it had been it would have been valueless as an anticipation. Putnam v. Hollender, 19 Blatchf. 48, 6 Fed. 882; Adams v. Jones, 1 Fish Pat. Cas. 527. The Process Patent. Is the process patent valid? It is contended by the defendant that it is void in view of what is shown in the dish and machine patents, previously granted. The application as originally filed November 22, 1892, embraced claims for the product, process and machine. On the 9th of January, 1883, the examiner wrote as follows:
"As presented the application describes and claims a machine and a product which cannot be prosecuted in a single application. · · · A division of the case will therefore be required before further action can be had upon the merits."
It will be observed that the examiner did not decide that a patent with claims for a process and a product could not issue, but only that a patent with claims for a machine and a produot could not issue. However, as a result of this ruling the inventor divided the application, leaving the original specification to stand for the dish only and on the 27th of January, 1883, he filed a new application for the machine and on the 31st of January, 1883, he filed a completed application for the process. The application for the process patent was filed two months after the application for the product patent and four days after the application for the machine patent. Two patents cannot issue for the same invention. This is rudimentary. Where two such patents issue to the same person the second Pl!tent is void. The case of Miller v. Eagle, etc., Co., supra, is the latest and the most pronounced case on this subject. By that decision the following propositions are established: A second patent cannot issue to the same party for an invention actually covered by an earlier patent, although the claims of the two patents may differ, the latter patent protecting certain features of the same invention not protected by the earlier patent. When a process and a product are so identical that the former creates the latter and only so, there are not two distinct and separable inventions. The subject matter of a second patent, in such circumstances, is sO inseparably involved in the first as to render the second invalid. v.60F.no.2-19
OVAL WOOD DISH
'lI. SANDY CREEK, N. Y., WOOD MANUF'G CO.
seen the product patent does not cover every wooden plate or dish; Such a construction would, be absurd. . The only common sense interpretation of the patent is that it refers to a dish made by the machine of the second patent, or its equivalent, or by a similar method. This is not left to conjecture. The patent expressly reo fers to the machine and says the plates are made by a revolving cutting knife and a flat facing knife working alternately, by which process thin, tough,flexible dishes are made of the same size and shape which may be nested together in the smallest possible compass. A dish haVing these characteristics and the features coY, ered by the claims is a new article possessing advantages not ex· isting before. A dish not having' these features, but made by hand,for instance, in attempted imitation of the complainants' dish would not infringe. The dish of the patent is not carved, turned, pressed or sawed; it is a scooped dish-a dish scooped from a block of wood by a revolving curved knife, or its equivalent. In no other way can this dishi be made. The Machine Patent. Regarding. the machine patent invention is not disputed; at least the . operating under a similar machine covered by a later patent, is hardly in a position to dispute it. Complainants' machine is most complete and ingenious. Mechanical skill could never have produced it. It required a high order of inventive, talent. The problem to be solved was one of unusual difficulty. The dishes must be strong, light, thin and of uniform size, they must be cheap, they must not sliver or split or lose their shape, they must be capable of being packed in a small space so that they can be transported conveniently and without injury. . It is idle to as· sert that one who has constructed a machine' which has overcome all these obstacles, a machine which has created a new art and supplied commerce with over a hundred million of such dishes an· nually, is not entitled to a place among inventors. Moreover, as before stated, he is entitled to liberal treatment at the hands of a court of equity. All of the elements of the patented combination are concededly old. Indeed, the Lackersteen, English patent, which describes a machine for making match sticks, contains all the elements but the curved knife, and the Manning patent, which covers a machine for making barrel staves, contains all of the elements but the facing-off knife. These are the defendant's best references. Nei· ther singly nor united would they suggest the combinations of the claims involved. The same assertion can be maintained if to the Lackersteen and Manning machines are added all the bread cutters, the peach stoners, the straw cutters and the vegetable slicers with which the record abounds. So far are these removed from the complainants' machine that it is thought they are entitled to a reasonable application of the doctrine of equiYalents. No machine ever did before what the Smith machine does and the complainants are entitled to hold as an infclngement a machine which does the same thing and accomplishes the same result, even though
for the purpose of avoiding inThe chtim,s might. have been broader. Nothing in of. the art required the .limitations upon· which the defendant relies, and it should be the endeavor of the court not to permit these limitatio¥ to deprive the inventor of the fruits of hi,s if it can be done with()Ut violence to the well-known canons,of construction. . Infringenient. The first machine used by the defendant concededly did not infringe the machine patent for the reason that it employed no fa· cing Im!l.fe and the dishes made by this machine did not infringe the third and· fourth claims of the product patent for the reason that they did not have hOrizontal upper edges. ' Subsequently a machiIre was used by the defendant which possessed every element of complainants' combination. The only material differences are that defendant's cutting knife .was. made to oscillate instead of revolve and the facing knife to reciprocate vertically instead of revolve around a shaft. Both move in. the same plane and do identically .the same work. That this. construction was adopted for the of evasion Is very apparent. It· is thought that the changes adopted by the defendant were equivalents for the parts the 'identical functions in the combinations of the claim$ an.d'. this is true of both the machines used by the defendant "*l:\ie1i contained· facing-off knives. The fact that the facingoff ",as· dbne in the second machine by two knives, each cutting haIf way across the face of the block is immaterial. The <lompla.i'nants are entitled to a decree for an injunction and an upon the claims of No. 273,773 andthetlrst and ilea· ond claims of No., 276,198, but· without costs.
THE HAYTIA.N REPUBLIO. KODIAK PA.OKING 00. v.THE HA.YTIAN REPUBLIO.
(District Oourt, D. Oregon. February No. 3,624.
Where a vessel is in, the custody of the marsbal, his receipt of a W8.l'o rant of arrest. in another suit, with intent to levy it, is a constructive levy, notwithstanding that he returns the warrant "Withheld," because he was advised that he had no right to make service on a vessel in custody, as it was, at the suit of the United States.
In admiralty.. On exceptions to service. Libel by the Kodiak Packing Company against the steamship Haytian Republic. Exceptions overruled. C. E. S. Wood, for libelant. W. H. Gorham and O. F. Paxton, for claimant. BELLINGER, District Judge. On and prior to January 17,1894, the Haytian Republic was in the custody of the United