American Fibre-Chamois Co. v. Buckskin-Fibre Co.

¶19TAFT, Circuit Judge,

¶20after stating the facts as above, delivered the opinion of the court.

¶21While the action of the court with respect to the Heott patent has been assigned for error, no argument pointing out the error of the court below in its decision thereon has been made, orally or on the brief. Where counsel .for an appellant or a plaintiff in error liles a brief and makes an oral argument, and does not allude in either to any of his assignments of error, he must be taken to have waived it. This court cannot be expected to examine the assignment of error, and find the reasons for reversal itself. The action of the court below, in so far as it sustained the demurrer to that part of the bill seeking to restrain an infringement of the Heott patent, must therefore be affirmed.

¶22We have only to consider, therefore, the correctness of the court’s ruling in sustaining the demurrer to the bills so far as they sought a remedy against the infringement of the McLauchlin patent. The rule is now well settled that a defendant to a patent infringement hill may raise the question on demurrer whether the alleged invention, as disclosed by the specifications of the patent, is devoid of patentable novelty or invention. Richards v. Elevator Co., 158 U. S. 299, 15 Sup. Ct. 831; West v. Rae, 33 Fed. 45. It is also well settled that, in considering the question of the validity of a patent on its fact', the court may take judicial notice of facts of common and general knowledge tending to show that the device or process patented is old, or lacking in invention, and ihat the court may refresh and strengthen its recollection and impression of what facts were of common and general knowledge at the time of the application for the patent by reference to any printed source of general information which is known to the court to be reliable, and to have been published prior to the application for the patent. Brown v. Piper, 91 U. S. 38. The presumption from the issuance of the patent is that it involves both novelty and invention. The effect of dismissing the bill upon demurrer is to deny to the complainant the right to adduce evidence to support that presumption. Therefore the court must be able, from the statements on the face of the patent, and from the common and general knowledge already referred to, to say that the want of novelty and invention is so palpable that it: is impossible that evidence of any kind could show the fact to be otherwise. Hence *512it must follow that, if the court has any doubt whatever with reference to the novelty or invention of that which is patented, it .must overrule the demurrer, and give the complainant an opportunity, by proof, to support and justify the action of the patent office. This is the view which has been taken by the supreme court, and the most experienced patent júdges upon the circuit. New York Belting & Packing Co. v. New Jersey Car-Spring & Rubber Co., 137 U. S. 445, 11 Sup. Ct. 193; Manufacturing Co. v.. Adkins, 36 Fed. 554; Blessing v. Copper Works, 34 Fed. 753; Bottle-Seal Co. v. De La Vergne Bottle & Seal Co., 47 Fed. 59; Industries Co. v. Grace, 52 Fed. 124; Goebel v. Supply Co., 55 Fed. 825; Hanlon v. Primrose, 56 Fed. 600; Dick v. Well Co., 25 Fed. 105; Kaolatype Co. v. Hoke, 30 Fed. 444; Coop v. Development Inst., 47 Fed. 899; Krick v. Jansen, 52 Fed. 823; Manufacturing Co. v. Housman, 58 Fed. 870; Davock v. Railroad Co., 69 Fed. 468; Henderson v. Tompkins, 69 Fed. 758. Referring to his previous decision, Judge Blod-gett said in the case of Manufacturing Co. v. Adkins, 36 Fed. 556:

“In West v. Rae, 33 Fed. 45, this court sustained a demurrer to a bill charging infringement of a patent on a device for protecting woolen blankets from insects by incasing them in paper bags, on the ground that, within the common knowledge, it was old to wrap or incase wooiens in paper to protect them from dust or insects. At the time I announced the decision in that case, I stated that its effect might be to encourage counsel to demur to bills for infringement of patents in’ cases where they, from their special knowledge of the art, might be of opinion that the device covered by the patent was old. And my anticipations in that respect have been fully realized, as that decision has already produced in this court quite a bountiful crop of demurrers in this class of cases. But the court must meet each case as it arises, and, in sustaining demurrers like this, keep strictly within the field of common knowledge. The practical difficulty and danger is in defining where special knowledge leaves off, and common knowledge begins. The judge must always be careful to distinguish between his own special knowledge, and what he considers to be the knowledge of others, in the field or sphere where the device in question is used. But when the judge before whom rights are claimed by virtue of a patent can say. from his own observation and experience, that the patented device is, in pirinciple and mode of operation, only an old and well-known device, in common use, he may act upon such knowledge. The case must, however, be so plain as to leave no room for doubt. Otherwise injustice may be done, and the right granted by the patent defeated, without a hearing upon the proofs. The judge must, on'all such questions, vigilantly guard against acting upon expert or special knowledge of his own, instead of keeping strictly within the field of general or popular knowledge. While I do not intend to lay down a rule, I am free to say that I should not feel justified in holding a patent void for want of novelty, on common knowledge, unless I could cite instances of common use which would at once, on the suggestion being made, strike persons of usual intelligence as a complete answer to the claim of such patent."

¶23In Krick v. Jansen, 52 Fed. 823, Judge Townsend said that a demurrer should not be sustained to a bill for infringement of a patent unless the want of patentable novelty was “palpably manifest.”

¶24Is it within common knowledge that the process described by McLauchlin in his specifications is old? We think not. In his specification, McLauchlin refers to the prior art, admits that the treatment of matted fibre for the purpose of using the same in place of cloth, and of giving it the flexibility necessary for that purpose, *513by rubbing or crushing it between knobbed rollers, was old. But he points out that, by such processes as had theretofore been used, the surface of the fibre; was abraded, and the material itself thereby lost, in a large measure, its strength. The process, for which Me-Lauchlin sought a patent, was that of first moistening the sheets of matted fibre, and then pounding them in a dampened and crumpled condition. The moistening was to be done with a mixture of 20 parts water and 1 part gelatin. The question is whether it is a matter of common knowledge that the way to render wood-fibre paper soft and pliable, without injury to its strength or smoothness of surface, is to moisten it with a thin water solution of gelatin, to crumple it and pound it in a moistened condition, and then ¡o dry and smooth it. It is, of course, generally known that the moistening of fibre of any kind will make it, for the time being, more flexible; but common knowledge would probably lead us to suppose that the moistening of such a material as paper, while it would for the time render it more flexible, would make its surface very much more subject to abrasion, and render the whole texture very liable to injury and destruction. Rossibly a review of the art by an expert will show that to treat paper in a moistened condition by pounding or irregular pressure for the purpose of rendering' it flexible without loss of strength was old, but such a process is not within our common knowledge. Certainly, to use Judge; Blodgett’s standard, we cannot cite instances of common use of this process or a similar process which would at once, on the suggestion being made, strike persons of usual intelligence as a complete; answer to the claim of such patent. The court below referred to a leather machine for making leather more flexible by pounding. It seems to us that the very great difference between the character of leather and paper is enough to show that the use of a device with respect to one does not indicate its useful application to the other. Again, allusion is made by the learned judge, in his opinion, to an article in the Polytechnic Review, 1877 (volume 3, p. 40), in which the following statement is made of Japanese Uses of paper.

“Paper Is also often used as a substitute for cloth for umbrellas, rain coats, etc., and even for dress cloth. ‘Shibu’ and the ‘Ye-no-abura’ are the means employed for rendering' the paper waterproof. This cloth is generally made of paper alone, by boating it to make it soft, and impregnating it with a gummy substance to make it more resistant to the action of water.”

¶25The learned judge also referred to the description of the making of paper cloth in Japan given in the second volume of the Encyclopedia of Chemistry, published in 1879 (page 534). That description is as follows:

“The mode in which paper cloth ‘warranted to wash’ Is made in Japan is thus described: Take some of the paper called ‘hosho,’ or some of the best ‘senka,’ and dye it of the color required. Boil some of the roots called ‘kon-niaku-no-dama,’ with the skins on. Try them with the inner portion of a rice stalk. When it penetrates easily they are sufficiently boiled. Peel them, let the water run off, and then pound them into a paste. Spread this paste on either side of the paper, and let it dry in the sun till quite stiff. Then sprinkle water upon it till it is thoroughly damp, and leave it in that state for a night. The next morning roll it upon a bamboo of the thickness *514of the shaft of an arrow, and force it with the hands from either end into a crimple in the centre. Unroll it, and repeat this process two or three times, rolling it from each side and comer of the paper. Then crimple it well in the hands, by rubbing it together till it becomes quite soft, and then sprinkle water on it again to damp it. Pull it out. straight and smooth, fold it up, and pound it with a wooden mallet. It may then.be put into water as much and as often as is desired, without sustaining injury, having become a strong and lasting material. Boxes, trays, and even saucepans, may be made of this cloth, and saucepans thus manufactured sustain no injury over a strong charcoal fire. Bags may be made of it, in which wine may be put, and heated by insertion in boiling water. Paper thus prepared may be used for papering windows, and, without being oiled, will withstand the rain.”

¶26It is well settled that, in taking judicial notice of matters of common knowledge, tlie court may refresh its recollection by reference to standard works. Brown v. Piper, 91 U. S. 38. In that case a patent had been issued for the process of freezing fish, and keeping them in a frozen state of preservation, in a close chamber, by means of a freezing chamber, having no contact with the preserving chamber. There the court took judicial notice of the fact that the ice-cream freezer, as a matter of common knowledge and use by the people throughout the country, was operated on substantially the same principles; and, having thus pointed out one well-known instance easily within the actual knowledge of the court, it referred to articles in the encyclopedia showing the preservative effect of cold, — a principle belonging to the general domain of knowledge and science. But in this case the learned judge at the circuit was not able to point, within his personal knowledge, to any process similar or analogous to that here patented. He was obliged to refer to descriptions of processes used in Japan, which we may reasonably suppose did not refresh his recollection with respect to the process there described. They wei*e not instances of a process generally in vogue in the same or kindred arts well known to ordinary life. Indeed, it is very doubtful whether much light is thrown upon the Japanese processes, by the descriptions above given. It is also doubtful whether the paper “warranted to wash” is like the material produced by the complainant’s process. It is by no means clear that the process described in the Polytechnic Review is one which involved the dampening of the paper, and the pounding of it in a dampened state. We are clearly of opinion that there was sufficient doubt about the novelty, utility, and invention of the complainant’s process to require the overruling of the demurrer, and a hearing of these questions upon issues made by the answer and proof.

¶27It is also contended that the process described is a mere mechanical process, — an aggregation of functions, — within the limitation announced by the supreme court, through Mr. Justice Brown, in the case of Locomotive Works v. Medart, 158 U. S. 68, 15 Sup. Ct. 745. In that case the patent was for an improved process in manufacturing belt pulleys, formed of a wrought metal rim and a separate center, usually a spider, and usually made of cast metal. The process of manufacture was set forth in detail, and consisted *515of the following steps: (1) Centering the pulley center or spider; (2) grinding the ends of the arms concentrically with the axis of the pulley; (3) boring the center; (4) securing the rim to the spider; (5) grinding the face of the rim concentric with the axis of the pulley; (6) grinding or squaring the edges of the rim'. It was held that, on the face of the specifications and claims, the patent was not for the mechanism employed, nor for the finished product of manufacture, but was, in effect, for a process of solely mechanical steps, and that a valid patent could not be granted for the mere operations of a piece of mechanism, or, what was the same thing, for the function or functions of a machine. We do not think "that the present case comes within the principles announced. The treatment of paper in this instance is of a character to change its quality, giving it new and useful attributes. The moistening of it, and the treatment in a moistened condition, is more or less chemical in its character. In Cochrane v. Deener, 94 U. S. 780, which Mr. Justice Brown cites in Locomotive Works v. Medart, the patent was for a process in manufacturing flour, which consisted in passing the ground meal through a series of bolting reels, composed of cloth of progressively finer meshes, which passed the superfine flour, and retarded the escape of the finer and lighter impurities, and by which the superfine flour was separated, and the impurities were so eliminated as to produce superfine flour. It was held to be valid, and the patent was not limited to any special arrangement of machinery. In that case Mr. Justice Bradley said:

“A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series o"f acts, performed upon the subject-matter to be transformed and reduced to a different state or thing. If new and useful, it is just as patentable as is a piece of machinery. In the language of the patent law, it is an art. The machinery pointed out as suitable to perform the process may or may not be now or patentable, whilst the process itself may be altogether new, and produce an entirely new result. The process requires that certain things should be done with certain substances, and in a certain order; but the tools to be used in doing this may be of secondary consequence.”

¶28It seems to us that the present case is dearly within that of Cochrane v. Deener, and even more nearly to be likened to a chemical' process than was that.

¶29The third objection made to the validity of the patent is one which can only be made in three of the cases appealed from, to wit, those in which the Seymour Scott patent was also made a part of the bill. It is said that the Seymour Scott patent so clearly anticipates the McLauchlin patent, on the face of the specifications, that the McLauchlin patent must he held to be had. We do not think that, without evidence, it is clear that the material in the Scott patent is to be subjected to tbe breaking rollers while in a dampened condition, through this might be developed by proof of tbe process of paper making referred to in tbe Scott patent. There is nothing in the Scott patent with reference to the crumpling of the paper, or the pounding of it in its crumpled condition. The crumpling of the paper is not expressly made a part of the claim., but it is described as a part of the process, and, if an essential *516part of the process, then it should he read into the claims. The specification in the Scott patent requires the paper to he subjected to "suitable size.” That of the McLauchlin patent requires that the paper shall he moistened by a thin solution of gelatin, — preferably, 1 part in 20. What "suitable size” is in the Scott patent, and whether it would suggest the use of the thin solution of gelatin mentioned in the McLauchlin patent, are all questions upon which the court cannot now pass, without evidence of experts in paper making before it.

¶30The decrees in these various cases dismissing the bill as to the McLauchlin patent will be reversed, with directions to overrule the demurrers and require answers; while the decrees, in so far as they dismiss the bills on the Scott patent, are affirmed. In view of the fact that this result shows that it was unnecessary for the complainant to bring second actions, the order as to costs will be that the costs of the appeals in the three cases (Nos. 332, 333, and 336) in which bills were filed on the McLauchlin patent alone will be taxed to the appellees, while in the three cases (Nos. 334, 335, and 337) in which the three cases were filed on both the Scott and the McLauchlin patents the costs will be taxed to the appellant; and it is so ordered.