UNION PAPER-BAG MACHINE CO. fl. WATERBURY.
389
mechan ism, Stl bstanti ally as specified, for givin g it the necessary movements." "(4) In a cake-machine, the combination, with a material box, of a pan-supporting table, and mechanism for vertically moving one towards and away from the other, whereby, when the machine is in operation, the material flows from the nozzle upon the pan, and, when the deposit is made, the connection between the deposit and the box breaks, substantially as set forth." It is not con,tended that the defendant has not used mechanism cov-
ered by claim 4. The plaintiffs contend that claim 1 has also been infringed. In the defendant's machine the dough-box does not move vertically, but is stationary, and the endless apron moves vertically up and down to and from a stationary dough-box. The answer sets up in defense that, prior to the invention by the patentee of the improvements covered by his patent, they were used at the city of New York by various persons named, and also at Chicago,IlL, by two persons named. This defense is satisfactorily established 'by the evidence in regard to claims 1 and 4, in respect of machines like that used by the defendant, with a vertically-moving endless apron. So, also, is the defense. in regard to the same machines which the answer sets up were in public use by the same persons, and at the same places, for more than two years prior to the application of the patentee for his patent. The bill is dismissed, with costs.
UNION PAPER-BAG MACHINE
Co. et al. v.
WATERBURY
et al.
(Oircuit (JOU1't, S. D. New York.
July 13, 1889.}
1.
PATENTS FOR INVENTIONS-REISSUE-PAPER BAGS.
Reissued letters patent No. 10,083, granted April 11, 1882, to Mark L. Deering, describe an invention consisting in a novel mode of folding and pasting a piece of paper into the form of a quadrangular, flat-bottomed bag. The original patent described the process as follows: "By making. in a sheet of paper or blank the folds, Band C, then pasting together the two ends, A, A, forming the body or tube of the bag, then forming the fold E, at one end of said body or tube, and the inwardly projecting triangular folds, H, H, side folds, G, G, and fold, I, upon which is then folded the lap, J, secured in place by pasting." The reissued letters omitted in terms the second step, "forming the fold, E, at one end of said body or tube," hut recited as its second step, "then spreading open one end of said body or tube." Held, that this was the equivalent of the original, as it involved the previous formation of the fold, E, or an equivalent determination of the part of the tube to be made into the bottom of the bag. SAllIE.
2.
The reissued patent contained a second claim for "a bag consisting of a bellows-sided tube having a satchel bottom and inward triangular folds, which form part of its two sides wheu distended." The application for the original contained !l. claim similar to this for a bag, irrespective of the process. bu.t it was rejected. apparently because anticipated, and the claim was withdrawn. lIeld, that the patentee thereby waived his claim for a bag as a new article of manufacture, and that the reissue was obtained for the mere purpose Of enlarging the monopoly of the patent. SAME.
3.
Under such circumstances it is immaterial that the application for a reissue was made within two years from the time of the original grant.
390, 4.
,FEDERAL REPORTER,
vol. 39.
In the process described in the patents granted subsequent to the patent in suit to William A. Lorenz and William H. Honiss. the determination of the transverse line to define the par't of the paper that is to be made into the bottom of 'the bag is effected by the use of a presser plate which marks the line without doubling back tbepart df the paper to be manipulated, as is done in the patent in suit, and the order of'making the final laps, Land J, is changed. , so that lap J is made first. Held, that the differences are immaterial, and bagamade under these patents infringe complainants' patent.
SA.ME-INFRINGEMENT.
,In Equity.. Bill for infringement of letters patent. George l1arding and Francis T. Ohambers, for complainants. ' Albert II. Walker , and Frederick H. Betts, for defendants. ',",
.W"p.r"ACE, J. this suit is brought upon reissued letters patent No. 10,083;dated Apri111, 1882, granted to Mark L. Deering, assignor to the Union Paper-Bag Machine Company, for improvements in the manufacture. of paper bags. The original patent was granted to Deering, May Ii, 1880, imd the application for the reissue was filed November 29, 1881. The defendants are manufacturing paper bags by using mafor which were granted to William A. Lorenz and William H. Honiss, subsequent to the date of the patent in suit. The defenses are non-infringement, the invalidity of the reissue, and priority of invention by Felix W. Leinbach. 'fhe invention which is described in the patent consists in a novel mode of folding and pasting a piece of paper into the form of a quadrangular, flat-bottomed bag. The invention is an ingenious and very useful one. The bag can be folded into a flat piece of paper, and thus a large number can be included in a bundle, occupying but a small space, in a convenient form for transportation, and ready for immediate use; and the grocer has merely to grasp it at the upper side, and" give it a flip through the air" as he lifts it from the counter, and it at once becomes a square box, which will stand upon its bottom. 'fhe shape and symmetry of the package when filled, and, the facility with which its contents can be wholly emptied, there being no folds or loose pockets inside, commend it at once as a simple, servicable, and exceedingly convenient contrivance. The conr.eption that such a bag could be made was a felicitous one; but the development ,of the conception into the completed invention by selecting and pursuing the necessary folding and pasting operations to transform the piece of paper into the bag would seem to have involved hardly more than the exercise of the ordinary skill of the calling. The description of the invention, as set forth in the specification of the reissue, is, without material changes, the same as in the specification of the original. The nature of the invention is such that an adequate understanding of it must largely be derived from the drawings which illustrate it. The specification and drawings point out the process of making the bag to consist of five operations, some of which are merely folding operations, and some of which involve pasting besides folding. These are: (1) A fold to make the well-known bellows-folded tube, and the pasting of the sideEl folded in. (2) The folding of one end of the
UNION PAPER-BAG MACHINE 00. V. WATERBURY.
. 391
tube over upon thebody to 1nake the lap, E. The making of this lapis . only necessary to define the part of the paper to be operated upon to make the bottom. (3) The turning up of the part defined by the lap, E, at about a right angle to the body of the tube, distending it, and forming across the ends a crease, F, as shown by the drawing, (Fig. 6.) This is done by pushing inward the paper above the crease, and folding it down upon the to make the laps, G, G, shown in the drawing. (Fig. 5.) This manipulation of the bag ·forms, not only the two side laps, G, G, but also the triangular folds, H, H, as shown in Fig. 5. The two remaining operations necessary to complete the bag involve pasting, as well iiS folding, to make the laps, I and J, and are such obvious ones as not to require description. The only part of the whole process which is not perfectly simple and obvious is that which involves the making of the side laps, G, G, and the triangular folds, H, H; and it would be manifestly impossible to describe the precise method of manipulating the paper to make these side laps and triangular folds otherwise than by showing the form in which the paper is to be folded. The claims of the reissue are as follows: "(1) The herein-described process or method of forming paper bags, by making, in a sheet of paper or blank, the folds, Band C, then pasting together the two sides, AI, A2, forming a bellows-sided hodyor tube of the bag, then spreading open one end of said body or tnbe, then forming the inwardlyprojecting triangular folds, H, H, side laps, G, G, and laps, I, J, which latter are secured in place by pasting or otherwise, substantially as described. (2) A bag consisting of a bellows-sided tube having a satchel bottom and inward triangular folds, which form pa!'t of its two sides when distended." The claim of the original patent was as follows: "The herein-described process or method of forming the bottoms of paper bags, by making, in a sheet of paper or blank, the folds, Band C, th pasting ill together the two ends, A, A, forming the body or tube of the bag, then forming the fold, E, at one end of said body or tube, and the inwardly projecting triangular foldS, H, H, side folds, G, G. and fold, I, upon which is then folded the lap, J, secured in place by pasting or otherwise, substantially as set forth." The paper bags made by the defendants embodv, although with immaterial differences, the invention described in the claim in the complainants' patent. The determination of the transverse line to define the part of the paper that is to be made into the bottom of the bag, which in the patent is effected by doubling over the part upon the body of the tube, is effected in the process of the defendants by the use of a presser plate, which marks the line without doubling back the part of the paper to be manipulated; and the order of making the final laps, I and J, is changed, so that the lap, J, is made before lap, I, instead of subsequently, as in the process of the patent. The making of a transverse line to define the part of the tube to be operated on according to the method of the defendant is an equivalent of the method of the patent, as appears by the patents to Howlett of 1874, and Webster of 1875; and the relative order of making the two final laps is a matter merely of expediency, and is stated to be so in the specification of the patent. Of course it is immaterial that the instrumentalities by which the several operations are
FEDERAL REPORTER,
performed are,in the one case, the machinery used by the defendants, anli, in the other, the manual manipulation of the paper without the assistance of machinery. The consideration that the invention of this chinery has invested the invention of the patent with its principal com· mercial value cannot derogate from the rights of the complainants. The more serious queiStions in the case are presented by the defenses, which assert the invalidity of the reissue and the priority of the invention by Leinbach. The first claim of the reissue omits a recital in terms ofthe second step of the process described in the specification, and in this respect differs from the claim of the original; but this step, or an equivalent one, is necessarily implied by the words "then spreading open one end of the tube," which appear in the claim of the reissue, and were absent from the claim of the original. This language is to be read as importing into the claim the operation of "turning up the lap, E, at a right angle to the body of the tube, and distending it, as shown in Fig. 5," as described in the specification; and this operation necessarily requires the previous formation of the lap, E, or an equivalent determination of the part of the tube which is to be made into the bottom of the bag. This seems to be not only a fair interpretation of the first claim of the reissue, but the construction which its language imperatively requires. It follows, therefore, that this claim is, in substance, the claim of the origillalpatent. TIle second claim of the reissue, if it could be upheld as valid, would subordinate to the monopoly of the patentee any bellows-sided, satchelbottom bag, having the inward triangular folds, irrespective of the process or method by which the bag is made; consequently the claim is for a broader invention than that specified in the claim of the original patent. According to the testimony of the expert witness for the complainants, it would enable the patentee to appropriate the invention shown in the patent to Daniel Appel, granted September 9, 1879, the application for which was filed a few days subsequently to the original application of Deering. The application of Deering had been prepared with a view to a claim for a bellows-sided, satchel-bottom bag, irrespecti ve of the process of making the fold and laps, and contained a claim which was, in substance, like the second. claim of the reissue. This claim was rejected by the patent-office, apparently because it was anticipated by the old bellows-folded bag; and the applicant amended his application by with. drawing the claim. He could have readily pointed out that the rejection was based upon false premises, or could have amended his claim so as to remove any doubt of its correct phraseology. Instead of doing this, he acquiesced in the actio.n of the office, and accepted a patent with a claim for the process only. Under these circumstances it must be held that the patentee waived the claim for the bag as.a new article of manufacture, and that the circumstances are inconsistent with the theory that there was any mistake inadvertently committed in the terms of the patent as granted. It is plain that the reissue was obtained, not for the purpose of correcting a mistake, inadvertently committed in the wording Df a claim) but for the mere purpose of enlarging the monopoly of the
THE
EXCELSIOR.
393
patent; and, under such circumstances, it is quite immaterial that the application for the reissue was made within two years from the time of the original grant. Mahn v. Harwood, 112 U. S. 3.54, .5 Sup. Ct. Rep. 174; Coon v. Wilson, 113 U. S. 268, .5 Sup. Ct. Rep . .537. The question of fact presented by the defense of the priority of invention of Leinbach is close; but the conclusion is reached that this defense has not been so cogently established as to overthrow the presumption arising from the granting of a patent. It will not be profitable to enter upon an analysis of the testimony. It must suffice to state that the testimony ot Mr. Edson, Mr. Allison, Mr. Brightman, and Mr. Fletcher, to the effect that Deering exhibited to them, respectively, previously to March, 1878, bags substantially like the bag f)f the patent, is accepted as true. The usual decree for an injunction and an accounting is ordered for the complainants, but without costs, and conditioned upon the filing of a proper disclaimer of the second claim.
THE EXCELSIOR. BRYANT v. THE EXCELSIOR. (Circuit Court, E.
n. New
York.
July 10, 1889.)
COI,LIRIO::"I-BETWEEN STEAM AND SAII,-LIGHTS-NEW YORK BAY.
A steamer, properly manned. was going down the bay of New York, bound to sea. The nigllt was clear. but dark. and the steamer. heading S. by W" was running at about 9 or 10 knots per hour. The master noticed a white light ahead. but upon examination could discover no colored lights. He concluded that the light was on a vessel going in the same direction with the steamer, determining to pass on the west side, changed his course half a point. After going ahead a few minutes, he discovered that something was wrong, and immediately stopped his engine, and reversed, but it was too late to avoid collision. The vess:el carrying the white light proved to be a schooner bound into port, heading N. by E. After seeing the steamer's lights she luffed a little. Held, that the collision was caused by the faults of the schooner in exhibiting a white light, and in failing to display a green light, as required by international rules 1885. Affirming 33 Fed. Hep. 554.
In Admiralty. On appeal from district court. See 33 Fed: Rep. 554. Goodrich, Deady & Goodrich, for libelants. Charles H. 'J'weed and Robert D. Benedict, for claimant. BLATCH}WRD, Justice. In this case I find the following facts: 1. On the evening of December 14, 1886, the steam-ship Excelsior;
was going down the bay of New York, bound to sea. She was well and competently manned, tackled; and appareled, and her lights were set and burning according to law. Her master, who was a competent navigator, was on the bridge, and in charge of her navigation. She had a competent lookout,-the first matc,-properly placed: forward, and a·t;.'
