EASTERN PAPER-BAG CO. V. STANDARD PAPER-BAG CO.
63
utes of Geo. II. am} Geo. III. expressly authorized this practice. See 45 Geo. III. c. 92,48; Id. c. 58; 2 Hale, P. C. 285. The statute of 6 & 7 Viet., above quoted, required proof of criminality, and admitted copies of depositions under conditions not in this case complied with. Such proceedings rest upon statute law. Whatever may be the practice at present as respects British India, nothing appears that has relevancy to the present case. The treaty itself, as I have said, requires proof of criminality here. As I am obliged to hold that the proof produced in this case was not competent, either according to the law of congress, or according to the common law, the commitment cannot be sustained. If there were reasonable grounds to suppose that the imperfection of the consul's certificate in this case had arisen from inadvertence, or from a misunderstanding of the intention of the act of congress that the copies must beicertified to be competent evidence of criminality. the court would remit the proceedings to the commissioner for a further hearing, if it also appeared that by the general English law, or by that of British India, copies of depositions attested in this manner were in fact competent proof ofcriminality; for other proof of this fact might supply the defects of the consuPs certificate. But though inquiries have been made by the court from the first concerning the British law in this respect, nothing has been cited ftomthe text-books, statutes, or reports that goes to show that there is any such law or practice within the Britic:,h dominions as would make. these copies evidence of criminality. The prisoner must therefore be discharged.
EASTERN
.
PAPER-BAG Co. and others 'D. STANDARD PAPER-BAG Co. 'and others. l (Ch'rcuit Oourt, D. February 17,
t.
PATENTS FOR INVENTIONS-PltoCESS FOR MAXING PAPER BAGS.
Letters patent No. 258,272, granted May 28,1882, to the Eastern Paper-bag Oompany, assignee of Daniel Appel, for a process of making paper bags, the object being the production in a novel manner of a satchel-bottom paper bag, made from a strip of paper folded to form a tube, by first forming a diamond fold, then cross-folding the leading corner of the diamond fold, and subsequently cross-folding the· rearmost corner of the diamond fold, to form the last cross-fold of the bag bottom, and, together with it, the mainbodl of the bag-blank, on the line of the second cross-fold, held, in view of the prlor state of the art, not void, as lacking patentable invention.
2.
SAHEl-PROCESS.
8.
A process may be patentable irrespective of the particular form of instrumentalities used. Description of a process in an application for a machine patent does not constitute an abandonment or dedication to the public of such process, so as to estop the inventor from subsequently obtaining a patent for the process. if applIed for in two years. 29 Fed. Rep. 787
SAME-DESCRIPTION OF PROCESS IN APPLICATION.
FEDERAL REPORTER.
4. SAME-MACHINE MADE CAPABLE OF WORKING PROCESS.
. Where the defense to a suit for the infringement of a patent process is that machines embodying the process Claimed were sold and in public use more than two years before the date of the application for the process patent, such defense is not sustained by proof that the use made of the machine before that date was experimental only. and not capable of working the process. There is no real invention of a process until a machine is constructed to work the process.
In Equity. Jilrederick P. Fish, for complainants. Chauncey Smith, for defendants. COJIT, J. The patent in suit, No. 258,272, is for a process of making paper bags. It was granted May 23, 1882, to the Eastern Paper-bag Company, assignee of Daniel Appel, the inventor. This invention has for its object the production in a novel manner of a satchel-bottom paper bag, made from a strip of paper folded to form a tube; and it consists in first forming the diamond fold, then cross-folding the leading comer of the diamond fold, and sl;lbsequently cross-folding therearmost corner of the diamond fold, to form the last cross-fold of the bag bottom, and, together with it, the main body of the bag-blank, on the line of the seeond cross-fold. This, in substance, IS the language of the epecification and of the claim. In former machines, in order to give the rearmost corner of the diamond fold the forward bend necessary to form the and cross-fold, there was loss of time and power. To overcome this difficulty, Appel turns over the whole bottom of the bag after the leading corner of the diamond fold'is cross-folded, and the rearmost comer of the diamond fold is cross-folded in the operation of folding over the body 9f the bag-blank on the line of such second cross-fold. The fold of the liody of the bag-blank is called. a" blindfold," and is incident to the formation of the satchel bottom by the Appel process. By this simple invention the leadingsnd rearmost comers of the diamond fold of a bagblank are cross-folded in directions which appear opposite to each other, by movements which are in the same direction, whether performedb,r hand or by machinery. To make paper bags commercially successful, a machine must be run with rapidity. Since the invention of Appel, it is. difficult to assign any limit to the speed with which paper bags can be made. . That a process may be patentable irrespective of the particular form ofinstrumentalities used, cannot be disputed, (Cochrane v. Deener, 94 U. S. 780;) and I have no doubt that the claim of the Appel patent describes a patentable process, if what he describes constituted invention. On this point it is urged that all Appel did was to fold the body of the bag with the flap in making the second cross-fold, and that this was no invention, but is within the common knowledge and skill of everybody. I cannot adopt this view. To be sure, now that we see it done, it seems a very simple thing in making the second cross-fold to fold over the body of the bag with the entI, but it was not thought of for years, and it may almost be said to have revolutionized the art of making paper
EASTERN PAPER-BAG CO. f'. STANDARD PAPER-BAG CO.
65
bags. .The most marked improvements in the arts are often the simplest, when once discovered. In considering the history and development of 1he art of making paper bags, and the effect produced by the Appel process, Xcannot but regard it as a patentable invention. But it is said that the description of this process found in the Appel machine patent of August 31, 1880, operates as an abandonment of any claim Appel might have had for a process patent. The patent in suit was applied for September 29, 1881. The process forming its subjectmatter was described, but not claimed, in the machine patent by the same inventor, dated August 31, 1880. A little more than a year elapsed between the date of the pribr description and the date of the application for the patent in suit. Under these circumstances, -has the invention been abandoned to the public? The language of the supreme court in MiUer v. Brass 00.,104 U. S. 350; JameB v. Oampbell, Id. 356; and Mcihn v. Harwood, 112 U. S. 354,5 Sup. Ct. Rep. 174,-is cited as sustaining the proposition that the omission of Appel to claim his process invention in the machine patent was in law a dedication of that invention to the public. The supreme court in these cases was dealing with the subject of reissues under the statute. In this case we are not dealing with the law of reissues. Appel could not have secured his claim to a process by reissuing his machine patent, because it is not for the same invention. Powder Co. v. Powder-works, 98 U. S. 126; EachU8 v. BroomaU, 115 U. S. 429, 6 Sup. Ct. Rep. 229. The question we have to decide is whether the description of another invention in a prior patent by the same in· ventor forfeits hi!'! right to tllke out a subsequent patent for such invention. I do not understand that the supreme court have held that such prior des-cription is' a dedication to the public of the second invention. The invention of a machine, and a process employed in the use of the machine, being different things, it is difficult to see how the application for a patent on one should operate as an abandonment of any claim to a patent on the other: provided, of course, the application for the second patent is made before the statutory forfeiture of two years' prior use has run. This view is in harmony with the decisions of the circuit courts where the question has arisen. Vermont Farm-machine 00. v. Marble, 19 Fed. Rep. 307, 20 Fed. Rep. 117; Graham v. McCormick, 11 Fed. Rep. 859; Graham v. Geneva Lake C. Manuf'g Co., Id. 138; McMillan v. Reea, 1 Fed. Rep. 722; Hatch v. Moffitt, 15 Fed. Rep. 252; Cahn v. Wong Town On,19 Fed. Rep. 424; Collender v. Griffith, 18 Blatchf. 110, 2 Fed. Rep. 206. The patent in Buit having been applied for within two years from the date of the machine patent, there was no abandonment of the second invention, though a description of such invention was found in the pnor patent. We come now to last that machines embodying the Appel process were sold or 1D publIc use more than two yel(U"s prior to the date of the application for the process patent, September 29, 1881. This question is not free from difficulty. The ,complainants maintain that there was no such sale or public use as would bring them within the statute. Their position, in brief, is this: that the sale was not of the v.30F.no.1-5
perfected Appel but of imperfect machines, in the experimental stage of development. Appel, the fuventor, was employed by the Cleveland Paper Company, at Cleveland. October 17, 1878, the Cleveland Paper Company made a contract with the Lincoln Paper-mill Company, of St. Catherine's, Ontario, for two Appel machines. One of these machines was delivered in January, 1879, and, the second in June of the same year. The testimony, however, is conclusive on the point that these machines made imperfect bags, and that it took more than a year after the receipt of the first machine to perfect it. Appel himself went to Canada to aid in perfecting the machine. As to the third Appel machine; called the Pettee machine, the· evidence is by no means clear or satisfactory that it was in publicuse prior to September 29, 1879. Whatever use of this machine took place before this date seems to have been of an experimental character.. If· the machines sold or used prior to Sepof working the process, then it cantember 29, 1879, were not not be said that the process invention was sold or in public use for more than two years prior to the :application for the patent in suit. There was no real invention of the process until a machine was constructed to work the process.· Union Manuj'g 00. v.Lounsbury, 2 Fish. 389. Upon careful consideration, I am of opinion that none of the defenses urged against the validity of the Appel patent in suit are good, and that the patent should be sustained. Decree for complainants.
HUMPHREYS' HOMEOPATHIC MEDICINE
Co.
tl. ARMSTRONG.
(Uirouit Oourt,8. D. New Y01'k. February 22, 1887.) CoPYRIGHT-INFRINGEMENT-PRELIMINARY INJUNCTION-EVIDENCE.
On a moti{)n for a preliminary injunction to restrain an infringement of a copyright. when plamtiff has shown a copyright of a book, and a copy of a book having the same title, and has shown that defendant is publishing a book containing extracts from it, but has failed to show that the COllY shown is a copy of the book copyrighted, and defendant [email protected] that it is, held, that there is nc> ground for a preliminary injunction.
In Equity. B. P. Ryan, for plaintiff. Thomas Winsor, for defendant. WHEELER, J. Tbis is a motion for a preliminary injunction to restrain an alleged infringement of a copyright. The plaintiff has shown it copyright of a book, and shown a copy of a book having the same title, and shown that the defendant is publishing a book containing extracts from it. But the plaintiff has not in any manner shown that the copy shown is a copy of the book which was copyrighted. and the defendant denies that it is. The plaintiff has therefore failed to show any ground for a preliminary injunction. Motion denied.
