·CELLULOID
CO. fl.' AMERICAN ZYLONITE CO.
417
viollsly d'escnbed as used simply' by moulding certain forms of capsules; I only claim a mould plate having the moulds secured thereto at regular mtervals, when the same is used incombination with the frame of an organized capsule cutting so as to' be held' therein and removable therefrom." .
Let there be Ii. decree for the plaintiff against an infringement ofthe sixth claim of the patent in suit, and for an accounting in respect to the .' use of that claim.
CELLULOID MANUF'G
Co. et al. v.
AMERICAN ZYLONITE
Co. et ala
(Oircuit (Jourt. S.
n. New
York.
June 26, 1888.)
cuffs haTing outer sheets or layers of celluloid and an interlining of textile or tlbrous materials. Parkes (English patent No. 2,859, of 1855) made sheets' of collodion, (gun-cotton dissolved in alcohol,) and also cementedtogether sheets of different substances, as alternate sheets of collodion and cloth. 1;3ut . as Boon as the solvents were evaporated. the collodion became brittle and flaky, and,was useless as a material for collars and cuffs. In the Ray & Taylor UnitedStatea patent No. 48,239, for a paper collar or cuff enameled with a compoaition of collodion and gelatine, the aurface of collodion ia made to ad· here to paper by meana of an intervening layer of gelatine, but ia not aub·' stantial, liable to unevenness, and to have air'pubbles, and to be imp.erfectly; attached to the paper, and is not water-proof. lIe/d, that the Sanborn patent is not void for want of novelty. . ' SU(lb patent being for a new material. and an original invention, and not for a collar. the principle of Gardncr v. ,1!crz, 118 U. S. 180,6 Sup. Ct. Rep. 1027, that a patent cannot be taken foran old article when. made for the first time out of an old material, merely because the idea of its suitability has occurred, has nOI'Pplication. , '" A sheet of being of itself unsuitable for collars and cuffs, and thelie having been no previous knowledge that its icombination with ari interlining would render it snit,able for such purpose. the fabric is not merely anew a1'" ticle. of commerce without invention. . ' . . . .
I.
SAME-'!NVENTION.
8.
SAME..
I .. "
.;..
.'
·
4.
SAME-INFRINGEMENT.
Upon one side of a fabric of two layer. of mn'slin with an intervening'layer of paper. furnished by one defendant,·;the other defendant attaChed a Iliyer of returned it to theflrst. with knowledge that it was to be made into collars' and cuffs. The latter then' cut out the blanks somewhat larger than the finished article. and turned over the fabric at the edges, having cut away the muslin surface so as to make the .edge thinner. The edges are securedwith paste, and thus two outer sheets of zylonite with an interlining of muslin and paper are produced. Defendants claim that they simply make a collar by turnin,lt ahem upon an unpatented fabric. Held, an infringement. Following 80 Fed. Rep. 487.
In Equity. Bill by the Oelluloid Manufacturing Company and the Celluloid Novelty CoJllpany against the American Zylonite 'Com.plmy, the Standard 0911ar Oom.pany, .And, tpe Taylor &. Tapley ManufacturingCompani, to v.35F.no.6-27 '
418
FlllDEB.A.Ii REPORTER.
restrain, the infringement of a patent. The last-named «efendant waS not served. H. and J. E.HindOn Hyde, for plaintiffs. Wdmore &- Jenner, for the Standard Collar Company. Horace lIf. Ruggles, for the American Zylonite Company. SHIPMAN, This is a bill in equity to restrain the defendants from the alleged joint infringement of letters patent No. 200,939, granted to Albert A. Sanborn, CharlesO. Kanouse, and Rufus H. Sanborn, March 5,1878, for an improved fabric for collars and cuffs. The novelty of the fabrie, and the validity of the patent, were sustained by Judge COXE in the case of lIfanufacturing 00. v. Chrolithion Collar&- Ouff{h., which was tried in this district in 1885. The patent, and the facts which the court found in regard to the state of the art at the date of the invention, are contained in the opinions which were given in that case. 23 Fed. Rep. 397, 25 Fed. Rep. 482. The facts which constitute: the alleged infringement in this case given in the opinion of t,n6 court upon a motion for an injunction pendente lite. 30 Fed. Rep. 437. .1'he history of the progressive discovery of the art of making celluloid orzylonite from and after the date of Spill's improvement, in 1869, uponPll.l'kes' previous inventions, is contained in the opinions qf this court Ma11u}acturing 00. V. Zylonite Co., 26 Fed. Rep. 692,28 Fed. Rep. 195., So much has been heretofore written upon this patent, and upon thepatet)tl!$,rela.tive to the manufacture of celluloid, that the duty of explaining at length the character and position of the patent in suit is not imperative; but it is insisted that the record contains pre-existing patents and factswhich were not ju the Chrolithion Case, and the knowledge of which ought to modify or change the result which Judge CoxEreached. It is therefore necessary to consider with care the points whicp are .claimed to have been presented with new force upon thishearirig·.. The patented article is succinctly described in the claim, as follows: "A fabric for collars and cuffs or other similar articles, having outer sheets or layers of celluloid, and an interlining of textile or fibroUs material, substantially as and for the purposes specified." The .defendants deny both the novelty and patentability of the fabric and the infringement of the patent. In reply to the question, "In which single qneof .the defen4ants'exhibita, patents, or publications do you find, in Jour opini<m, a fabric for coHars and cuffs, having outer sheets or layers of celluloid and an interlining of,t(lxtile or fibrous material?" the very "Parkes' English patent, competent expert for th.e :No. 2,359, of1855;" and further said that it was the only one which contained the prepise thing of the Sanborn patent. The services which rendered in the development of pyroxyline were great and important, but they are not contained in the patent of 1855. The object of the second part of this patent was to employ collodion or its compounds for manufacturing purposes. Collodion was and is gun-cotton dissolved in alcohol and ether, and Parkes was endeavoring to utilize it for other than photographic and surgical purposes. He says in the patont that he made sheets or. other forms by using as little of the solvent
CELLULOID MANUF'G CO. tI. AMEltICAN ZYLONITE CO.
419
as possible, so to obtain a stiff, comp,ound, . which m.aybe colored or'combined with other substances, and this he 'Workednp witnariy suitable ma-chinery, until well blended or incorpl)rated, when Wmav be rolled or pressed into sheets or other forms. Heftii'ther says that 'he;fuaae sheetS by pouring the solution upo.nglass plates, and, if required, several coats of collvdion or dissimilar s'ubstances could be used to strengthen the sheet, and, also, that he manufactured thick sheets of a compound nature by cementing several sheets together, which may be of dissilnilar substances,-thus, a sheet of collodiAn, th.en a she.et of cloth, then another sheet of collodion; or hesaturated felted goods with his preparation of gun-cotton. The use of the word "sheet" by Parkeshas been the caUse of much of the confusion that seems to exist upon the subject of novelty, inasmuch as it is assumed that this sheet of Parkes was" Parkesine," and furthermore, was 8ubstantiallythe same thing which now instantly presents itself to the mind when the term a sheet of celluloid or of zylonite is employed,whereasParkes'sheet of 1855 was not the thing whibh he afterwards manufactured, and which was known as "Parkesine, " and was wrought, like celluloid, into a variety of articles, and had no. blance to the sheet which is now known by the name of" celluloid." His sheet of dry collodion, after the solvents had evaporated, was a differ.entthing from either Parkesine or the subsequent pyroxyline compounds. As soon as the solvents which help to form a fUm of collodion upon a plate of glass have evaporated; the collodion crumples up, is fdl bubbles, and becomes a distorted, brittle, and useless piece ofpyroxyline. The plastic mass which Parkes desired to have remain, after dissolving the gun-cotton in a small portion of the solvent, cannot be successfully rolled into sheets; for as soon as the solvents have evaporated, theresidue becomes flaky and without coherence, and breaks to pieces under pressure. The compound sheet which he mentions, whether i.t is made from his rolled sheets or from his collodion films, is a thick product, which contains between the layers of cloth dry, brittle pyroxyline, and is useless for the purposes which are now under discussion. The defendants also find th«;l patented fabric outlined or prefigured in sundry patents, of which the Ray & Taylor United States patent No. 48,239 is the one upon which they most rely, which is the best of Hs class, and was 110t in the Ohrolithion Chse. The patent is for a paper collar or cuff, when enameled with a composition ofcollodion and gela.tine. The collodion is flowed over glass previously treated with nitric acid, and then left until dry. The gelatine is dissolved in water, and poured over this substance. Sheets of paper, thoroughly moistened, are placedtipon the top of the mass, which is caused to adhere to the paper by the gelatine, and, when dry, can be removed with the paper from the glass. The enameled paper is then manufactured into collars and cuffs. The object of the enamel is to resist the action of water or perspiration, and to make a collar which can be quickly cleansed, without being sent to the laundry. Recent specimens of such a fabric were' presented in evidence, which had a good appearance, and can occasionally be made forexhihition; but the fnbric, or any other fabric merely having a film of collodion
of
420
J!'EDERAL
upon its surface, is a failure for water-proof or for wearing-apparel purwill rumple and crack, its wearing capacities are poses. The unsubstantial, it is liable to; cover the paper unevenly, to have minute air bubbles,aud not to be perfectly attached to the paper. This patent and its predecessors, such as the Granger, the Rollason, and the Berard patents, were a groping after a fabric, having a water-proof covering of collodion, which was never found, because the peculiarities ofa dried film of collodion will not make a permanent and substantialsurface which can . eridure wear. of the; invention, the defen¢lants invoke the Upon the principle of 'Gardner v. Hen, 118 U.S. 180,6 Sup. Ct. Rep. 1027, that a pa,tent cannot be taken for an old article when made for the first time out of an old material, merely beapse the idea ha,!1 occurred that it would be a good thing to makeitheartiple out of that material. ,This patent is 'net for a collar, but for a neW material from which to make a collar, and decision in Gardner v. Herz has no application if the material, novel, and useful qualities, was the original invention of the patentee. . .. , It is next, and with mOre confidence, urged that it is simply a new jl,rticle of commerce, and is without invention, because, when a sufficiently thipsheet of collodion was produced in the course of the development ofJhe manufacture of that matedal, its adaptation to the requirements .of /1; collar was w.ell known or This alleged fad is not self-evident, but requires proof, and testimony does not support the defendants' position. The efforts o£.inventors had)ong ,been ineffectually di· rected to find an. elastic fabric :which sbould make a water-proof collar .l:lavipg continuously the appearance of freshly.starched linen, which preseI;ve smoothness, and neatness without. being totha laundfY, !ind pecapable of continuous,prolonged, and pleasant use. The problem was by no means analQgous to that which was of study ill which is described in Collar Co. v. Vail. Dusen, 23 Wall. p63.. It.was not sit\1plyto make.a suitably ,thin sh!3et of cell\1loid, and" when. the manufactur(;lr's;skill had produced 'the sheet" tile was fl,ccomplished; because neither previous knOWledge train .of from known facts showed that such a B.heet could be so combined with anything as to produce Exper,ttnent proved that" the tilin sheet. was. not itself such a fabnc', and no existing knowledge declared orppinted out that its combinat10n with !in interlining wQuld,makea fabric which would not refuse to.: fljtain and both whl;ln womand when not worn,'or repeat!3dcleansingand to preits untarnish,e(i whiteAesS,and therefore would not be a failure. 'fhe patentees,. copceived the, i4ea that the. desired' fabric could be furnish,ed by"the",i<iof the neW,thi)) sbeI':Jts of celluloid. It is not probable thiJlg could b(l done, b\1t they wrought truthqf which they had taken hold of, by out and l\1aterialsi and in tqat wayt4ey created ·. , :. ;, . .
REITER fl. JONES &: LAUGHLIN.
421
The last. question, and the one of most difficulty, is that of infringement. ·Upon one side of a fabric of two layers of muslin with an interposed layer of paper, which is furnishe<i by the Taylor & Tapley Como pany, the Zylonite Company attached a layer of zylonite, and sends it back to the Taylor & Tapley Company, with knowledge that it is to be made into collars and cuffs, and the method of its manufacture. The Tl:\ylor & Tapley. Company then cuts out the blanks somewhat larger: than the finished article, and turns over the fabric at the edges, having; cut away the muslin surface, so as to make the edge thinner. There is a surface of zylonite upon both sides at all the edges of the collar, except at the neck-band. The edges are made secure with paste. Thus, or two outer sheets of zylonite are produced, with an il(terlining of mus... lin and paper. The defendants say that they simply make a collar by turning a hem upon an unpatented fabric. The question in the case is whether the unpatented fabric 'has been intentionally changed intos. patented one, and not whether the change has been affected by a method which has long been familiar to the seamstress. I can add, upon. this point, nothing to the suggestions which were made in 30 Fed. Rep. 437, and which led me, upon the motion for preliminary injunction, to the conclusion that the defeudants infringe. Let there be a decree in favor of the plaintiffs for an inj unction and for an accounting.
REITER
et al. v.
JONES
&
LAUGHLIN, Limited,
et ale
(Uircuit Court,
w: D. Pennsylvania.
June 9, 1888.) ;
1
PATENTS FOR INVENTIONS-FuRNACE-PATENTABILITy-INVENTION.
Letters patent granted Febrnary19, 1878, to J; H. Helm, assignor of Howard Morton, fpr an improvement in a furnace for heating links. consisting of a crown to the :fire-chamber, .provided with a series of celIs, which are plain openings passing through the detachable crown. the upper surface of which is fnrnished with grooves in which rest rods which support tAll links while being heated, are not void for want of invention. ' The grooves in the upper surface of the detachable crown are a part of the device; It claim for the cells or holes without the grooves having rejected as non-patentable, and withdrawn before the patent issuediJi Its present f o r m . .
.
2.
SAME-ExTENT OF CLAIM,
SAME-NOVELTY.
Evidence that a person made a perforated and grooved tile for the cover of a like furnace in 1875, the year before Helm's alleged invention; that he only used it lI;.part of the time from 1875 to 1878; opposed by evidence that he did not uselt prior to the fall of 1876,-does not s.how that the above patentil void by reason of prior invention. .
In Equity. Bill for an accounting. D. for complainants. qew,Qf (.I. (Jhrist'!;f1 for .,defendan18.