Opinion
No. 521.
August 15, 1929.
E. Clarkson Seward and W. Saxton Seward, both of New York City, and James G. Sanderson, of Scranton, Pa., for plaintiff.
Jacobi Jacobi, of Washington, D.C., for defendants.
In Equity. Suit by the West Disinfecting Company against the United States Paper Mills, Incorporated, and another.
Decree in accordance with opinion.
Decree modified in 44 F.2d 803.
Report of Master.
This suit concerns the alleged infringement of a patent on a machine for interfolding paper towels.
On October 13, 1920, Courtney P. Winter, one of the defendants, entered into a contract with the plaintiff, the West Disinfecting Company, whereby the plaintiff acquired exclusive rights to a machine invented by said Winter for interfolding paper towels, and "upon all improvements thereon or variations thereof."
Pursuant to the terms of this contract, defendant Winter constructed a machine for the plaintiff, and subsequently secured a patent on his invention, on December 6, 1921.
The plaintiff alleges that in the summer of 1923, while Winter was still in the employ of the West Disinfecting Company, he built for the defendant corporation two interfolding machines of the same type as the machine which he had built for the plaintiff under the contract, and which were covered by his patent.
These two machines were installed at the plant of the defendant corporation in January and May, 1924. The fact of their construction is admitted by defendants, who, however, deny that these machines are an improvement on or variation of plaintiff's machine, in the meaning of the contract, or that they infringe plaintiff's patent. This later machine is covered by a joint patent, No. 1,625,566, issued to Courtney P. Winter and Dunbar A. Rosenthal, president of the defendant corporation, on December 3, 1926. The patent in suit, assigned by Winter to plaintiff, was issued under No. 1,399,098.
Plaintiff alleges that in 1926, it "began seriously to feel the competition of defendant corporation which had been established as a competitor by Winter's construction and installation of the two said machines, and plaintiff also received word from two different persons (McGarity and Ortlip) that the machines used at the plant of defendant corporation were substantially the same as plaintiff's machine. This led to plaintiff's communication to defendant Winter, Marcuse's [president of plaintiff corporation] visit to defendant corporation's plant; to plaintiff's letter to defendant corporation requesting examination of the machines by plaintiff's patent lawyer and engineer; to defendant corporation's letter to plaintiff refusing such examination, and to the institution of this suit." (Plaintiff's Brief, p. 5.)
The Contract.
The existence of the contract is admitted by the defendants. The question arises over what the terms, "upon all improvements thereon or variations thereof," mean.
It is the contention of the defense that since the contract was written before the patent was secured, its terms refer to the perfecting of that particular machine. They argue that in view of the fact that defendant Winter was the inventor of other machines for folding paper he did not intend to sign away his rights for the future to other inventions in the same field. They further say, and it appears to be true, that the contract was prepared by Marcuse, president of the plaintiff corporation, and they therefore contend that any doubts as to the meaning of the terms contained therein must be construed against the maker. They further contend that if it had been the intention of the contracting parties that Winter was not to enter the same field of invention in the future, it should have been definitely so stated in the contract. (Defendants' Brief, pp. 46, 47).
The defendants call attention to a decision in American Cone Wafer Co. v. Consolidated Wafer Co. (C.C.A.) 247 F. 335, where "the patentee of a device for baking ice cream cones made from batter assigned the patent, together with all rights and privileges thereunder, as well as all improvements that might be made thereto or thereunder. Thereafter the patentee invented a new device for baking ice cream cones, which, while bearing a resemblance to the original, was of a radically different mechanism." In this case the court said:
"We think it clear that the purpose of the language used was not to subject every future cone baker which Groset might devise to the assignment; the improvements covered by the phrase were those to that machine, not to the art in general. Every more efficient machine would be an improvement `upon' it, in common speech, but not `to' it. We attach significance to the word `thereto' * * * It is, of course, true that any improved cone baker might supersede that purchased by the plaintiff's predecessors, and would therefore defeat the grant. Perhaps it would have been legal to bind Groset to assign any future machine against such a possibility; we need not pass upon that question. All we say is that, if the purpose is so broad, the language must not be so vague. Groset was free to make a new cone baker, which might successfully compete with the plaintiff, so long as it was not an improvement `to' the disclosure of his first patent."
The cases cited by plaintiff (Plaintiff's Brief, p. 17 et seq.) show only the well-settled principle of law that the purchaser of an invention may protect himself by an agreement from the inventor to assign not only inventions then completed, or in process of completion, but all future improvements thereon calculated to make the necessarily imperfect device more nearly perfect.
In Westinghouse v. Chicago (C.C.) 85 F. 786, 793, invoked by the plaintiff, the court confirms this principle of law, and says also:
"I need not say that I concur with Mr. Justice Bradley in the general statement that `a naked assignment or agreement to assign, in gross, a man's future labors as author or inventor, — in other words, a mortgage upon a man's brain, — does not address itself favorably to our consideration.' The contravention of public policy involved in such an agreement needs no support in the argument that in such instances the public is deprived of the industrial and literary gains of the person mortgaged. A policy permissive of such enslavement goes further, and offends all sense of the dignity of manhood and of the value of individual liberty. Were the case under consideration an instance of a mortgage, in gross, of one's future labors as an inventor, I would deny, without hesitation, the remedy here invoked."
And further: "The obligation resting upon Park by virtue of his contract relates only to the perfection of what he has already sold and has been already paid for. A decree for the complainant will require him to do only what he has contracted to do touching this valve mechanism. In every other field of invention the full opportunities of his genius are still open to him."
In Stitzer v. Withers, 122 Ky. 181, 91 S.W. 277-280, it says:
"Where a subsequent patent does not infringe a former one, it is independent thereof, and will be regarded as a new patent, and not a mere improvement of the former one. * * * An improvement, as understood in the patent law, embraces the original and adds thereto or alters it. Page v. Ferry, Fed. Cas. No. 10,662. * * * A device securing the same result, but operating on a different principle, is not an infringement of a former patent (Bridge v. Excelsior Mfg. Co., 105 U.S. 618, 26 L. Ed. 1191), and is not covered by an assignment of the patent with an agreement to assign all improvements made on it."
In McAuley v. Chaplin-Fulton Mfg. Co., 217 Pa. 477, 66 A. 750, 753, the Supreme Court of Pennsylvania says:
"In determining what is and what is not an improvement, it seems to be the policy of the courts in passing upon contracts to assign improvements to construe such contracts so as to cover only improvements in the particular patent or machine which forms the immediate subject-matter of the assignment."
Robinson on Patents, § 210, defines an improvement to be "an addition to or alteration in some existing means, which increases its efficiency without destroying its identity," and in section 213: "But inasmuch as no improvement can subsist without an original on which to rest, this development must always leave the essence of the original invention unimpaired. Whenever in extending the efficiency of an idea of means, the line which separates that means from every other is crossed, through any change in its essential characteristics, identity is lost, the idea of original invention is excluded, and the result of the inventive act becomes a new and substantive invention." And again in section 215, "If the changes indicate the introduction in the idea of means of a different force, a different object or a different mode of application, it is more than a change of form, more even than an improvement — it is a separate invention."
The machine of the patent in suit had one, and only one, characteristic feature, to wit, the folding mechanism consisting in "spiral rolls of graduated pitch." The contract identified the machine by reference to a copy of the specification of the patent application. The claims of the application were all limited to the spiral rolls of graduated pitch. Clearly the machine contemplated in the contract is a machine of the specific character described in the attached specification and hence the words "improvement thereon" and "variation thereof" must be construed as referring to improvements on or variations of the machine described, that is, a machine comprising "spiral rolls of graduated pitch."
The first question at issue, therefore, is whether or not defendants' machine is an improvement to or variation of plaintiff's patent in this restricted meaning of the words "improvement" and "variation."
Before taking up the two machines in detail, it may be well to consider plaintiff's allegation that defendant Winter further violated the contract by building the two machines for the defendant corporation while he was still under contract to the plaintiff. Even if this were true, it would be immaterial, except that it would support plaintiff's allegation that the defendants acted in bad faith throughout. But from the evidence produced the master did not find this to have been proved. While it may have been questionable business ethics for defendant Winter to build a competing machine under the circumstances set forth, it was not proved to the satisfaction of the master that in so doing defendant Winter violated the terms of his contract.
It is true that paragraph XV of the contract, quoted by plaintiff, says in part: "During the continuation of this agreement and so long as the party of the second part pays to the party of the first part the weekly salary hereinbefore provided for, the party of the first part agrees not to enter the service of any other person or corporation and to give his time and attention to the construction of said folding machine."
This provision is modified, however, in the opinion of the master, by paragraph IV of the contract, which says: "That during such period of construction and in addition to such advances as provided in the foregoing paragraph the party of the second part agrees to pay to the party of the first part the sum of Seventy-Five Dollars per week for a period not exceeding six months. Should the construction of said folding machine take longer than six months, and the party of the second part elects to continue said weekly payments, then such payments so made shall also be charged to the account of the party of the first part, and may also be deducted by the party of the second part from any payments hereinafter provided to be made to the party of the first part, by the party of the second part, by way of royalties or otherwise. The advances provided to be made in this paragraph shall cease immediately upon construction of said folding machine, anything to the contrary notwithstanding."
Defendant Winter testified on page 297 of the Record that he had completed his contractual relations with the plaintiff, prior to the time he undertook the construction of the two machines for the defendant corporation. Marcuse, president of plaintiff corporation, testified on pages 419 and 420 of the Record, that Winter completed the construction of the machine in June, 1921. He also admitted, page 417 of the Record, that Winter during the term of his employment with the West Disinfecting Company, helped to build or supervised the building of six or seven machines for various purposes.
In the absence of any evidence to the contrary, it would seem to the master that Winter's agreement in a later clause of the contract not to enter the employ of any other person or corporation while on the pay roll of the plaintiff company must necessarily be interpreted in the light of the understanding in paragraph IV, and that if the advances of $75 per week were to "cease immediately upon construction of said folding machine, anything to the contrary notwithstanding," it must follow that the parties to the contract intended Winter's employment to be terminated by the completion of the construction of the machine. The undisputed fact that Winter continued on the payroll of the plaintiff company at the same salary and did other work for it does not appear to be material.
Infringement.
The plaintiff alleges first that defendants made and used in their plant at Chambersburg a machine with substantially the same construction as the interfolding machine of the Winter patent, No. 1,399,098; and, second, that the machine patented by Winter and Rosenthal is an improvement or variation of the said patent in suit and therefore comes under the terms of the contract.
In regard to the first allegation above, defendants' witnesses testified that no such machine had ever been in use at the plant of defendants. One of plaintiff's witnesses, an employee of defendant company, corroborated this testimony. Marcuse, president of plaintiff corporation, upon report from two witnesses, McGarity and Ortlip, that defendants were using a machine like plaintiff's notified Winter on September 28, 1926, at the United States Paper Mills, where Winter was then employed, that the patent in suit was being infringed by the machine of defendants, and called on him under the terms of the contract to unite with the West Disinfecting Company in a suit for infringement.
The infringement was denied and Marcuse was invited by Rosenthal, president of the defendant corporation, to come to Chambersburg and examine the machine himself. This he did in the early part of October, taking with him Ortlip, one of the two men who had reported the alleged infringement to him. Marcuse testified that he was shown all over the plant. He admitted that when he examined defendants' interfolding machine, he was disappointed at what he saw — that he had been led to expect by McGarity and Ortlip that he was to see a machine "with spiral worms," like the machine of plaintiff.
On October 19, 1926, after Marcuse's visit to the plant of defendant corporation, he wrote to Rosenthal asking permission for his patent lawyer and engineer to examine the defendants' machine. This permission was refused and he subsequently instituted suit.
The testimony of plaintiff's two witnesses, McGarity and Ortlip was not convincing to the master. McGarity, head of a concern for buying and selling paper, visited defendants' plant on April 10, 1926, to adjust a complaint from Rosenthal. He testified that while Rosenthal was satisfied with this adjustment he was not. Four days later he visited plaintiff's plant at Buck Run, Pennsylvania, and told plaintiff that the defendant corporation was using a machine substantially like plaintiff's machine, but better.
McGarity's testimony, as well as that of Ortlip, plaintiff's other witness on this point, was very indefinite as to the details of the room in which the interfolding machines were set up. Ortlip, an employee of the plaintiff, testified that he went to the plant of the defendant corporation in August, 1926, and reported to his employer that defendants' machine was like the machine of plaintiff. But Ortlip admitted that he was not closer to the defendants' machine than the door of the room, which is a distance of more than thirty feet.
Subsequent to the taking of the testimony, plaintiff presented affidavits, one of which was unsigned, from employees of the concern in New Brunswick, New Jersey, which built the two alleged infringing machines for Winter and Rosenthal. The defendants replied by producing affidavits from the same parties denying the facts set forth in plaintiff's affidavits. This New Brunswick evidence was so contradictory that it can be given little weight. The only important fact that was clearly shown and uncontradicted was that the machines constructed in New Brunswick were shipped to defendant corporation at Chambersburg, Pennsylvania, equipped with folding devices substantially like those of defendants' machine as patented. They offer plaintiff no comfort in his contention that defendants were using machines with folding devices substantially like those of plaintiff.
It is the opinion of the master that plaintiff has failed to show the presence in the plant of defendant corporation of machines substantially like those of the patent in suit. On the contrary, the weight of evidence is against this conclusion.
The issue therefore has been narrowed to consideration of the defendants' machine patented by Winter and Rosenthal under No. 1,625,566, and its relation to the patent in suit.
The master, by arrangement with counsel for plaintiff and defendants, visited the plaintiff's plant at Buck Run, Pa., and the defendants' plant in Chambersburg, Pennsylvania, on successive days, May 23 and May 24, 1927. He has carefully examined the copies of the respective patents and considers that these patents fairly and accurately describe the structure and operations of the several machines.
The invention of the patent in suit, Winter Patent No. 1,399,098 is described in the specifications as follows:
"The invention comprises primarily a plurality of folding rollers of graduated pitch upon which the web of material is adapted to be passed, whereby the convolutions of the folding rollers form in the web of material spaced, parallel folds, which folds are brought closer together as the web of material passes over the rollers, whereby the web is consequently discharged with the folds substantially compacted."
"The invention contemplates more particularly the provision of a set of rollers which may be termed primary rollers and a set of secondary rollers arranged adjacent the primary rollers in such manner that they coact positively to compel the web of material to conform to the longitudinal cross-sectional shape of the set of primary rollers."
Construction.
The plaintiff claims that this invention was broadly novel, and should therefore be entitled to a broad construction and a wide range of equivalents. But it appears from the file wrapper that the patent in suit was limited by a previous patent to Brown and Schuchart No. 1,348,846 granted August 10, 1920, and claims 1, 2 and 3 of the application for the patent in suit were accordingly rejected thereon. They were not allowed until they were so framed as to differentiate between the Brown et al. patent, supra, and the Winter patent applied for.
It is a fundamental rule of patent law that when a patentee acquiesces in the ruling of the Patent Office and amends his claims accordingly, it is equivalent to an acknowledgment of the state of the art, and his invention is restricted in scope to what is declared to be new. Warren v. Casey (C.C.A.) 93 F. 963; Norton v. Jensen, 90 F. 415, 33 C.C.A. 141; Walker v. Collins (C.C.A.) 102 F. 689.
In Burns v. Meyer, 100 U.S. 671, 672, 25 L. Ed. 738, the rule is stated as follows:
"It is well known that the terms of the claim in letters patent are carefully scrutinized in the Patent Office. Over this part of the specification the chief contest generally arises. It defines what the office, after a full examination of previous inventions and the state of the art, determines the applicant is entitled to. The courts, therefore, should be careful not to enlarge, by construction, the claim the Patent Office has admitted, and which the patentee has acquiesced in, beyond the fair interpretation of its terms."
It seems clear to the master that the invention of Winter meritorious though it is, must necessarily be limited to a fair range for the amount of invention displayed. It is plain from a study of the Winter patent that inventor Winter used old elements in the construction of his machine. The novelty consisted in using the spiral rolls of graduated pitch and passing the material to be folded between them so that the convolutions of the intermeshing rollers forced the material between them to assume a series of folds.
The plaintiff repeatedly emphasizes the novel character of the invention, in that the material was folded by the action of rotating devices which turned on axes substantially parallel with the plane or line of feed of the paper, and claims that none of the prior patents cited shows in any form the embodiment just described. The expert for the defense agrees that this construction, which is common to the machine of plaintiff and defendants, is novel.
If this is true, it is possible that Winter's invention is broader than his claims, and he may have been entitled to a much broader patent, but he never claimed the novelty of this construction. In the correspondence with the Patent Office he did not mention it. It is not mentioned in either claim 3 or claim 7 which the plaintiff has selected for the issue. It appears only once in the description, to the best of the master's observation, on page 2, in the paragraph beginning on line 82. This paragraph reads as follows:
"By forming the set of secondary rollers 19 into two groups, as illustrated in Fig. 1, with the spirals disposed in opposite angular directions, the tendency of the web 31 to creep transversely of the axes of the rollers is prevented, inasmuch as the action of one group of rollers 19 tends to offset the action of the other group, and the web is consequently passed between the rollers in a line parallel with the axes of the rollers."
It seems clear from the foregoing that inventor Winter regarded this construction, which plaintiff now claims as of paramount importance, as merely incidental to the prevention of the web from creeping transversely of the axes of the rollers.
The construction is mentioned also, but not emphasized, in claims 5 and 8, but a feature of construction or an element covered by one claim of a patent cannot be read into another claim in which it is not mentioned, for the purpose of making out a case of infringement. Wilson v. McCormick (C.C.A.) 92 F. 167; Canda v. Michigan Malleable Iron Co. (C.C.A.) 124 F. 486.
It is a fundamental law of patents that whatever the patentee does not expressly claim it is presumed he has abandoned to the public. Robinson on Patents, Vol. II, page 111, § 505, sets forth this law as follows:
"The claim is thus the life of the patent so far as the rights of the inventor are concerned, and by it the letters-patent, as a grant of an exclusive privilege, must stand or fall. The thing patented is the thing claimed, whatever the patentee may suppose or assert that he has invented; and though the statement of the claim comes short of the true limits of the invention, the inventor must abide by them, as he has described and published them in this written definition of its character and scope. The Courts will not go into the history of the art to ascertain what he has really discovered and what he might have patented if he had chosen, but will take him at his word and protect according to the terms in which he has himself demanded such protection."
Courts are bound by the language chosen by the inventor in framing his claims, and they have neither the right nor the power to enlarge a patent beyond the scope of his claims, even though a patentee may have been entitled to something more than the words he has chosen will include. Seabury v. Johnson (C.C.) 76 F. 456.
It is very significant that the value of this construction, now emphasized as the broadly novel feature of the invention by the plaintiff, was never so claimed by the patentee. In Johnson v. Johnson (C.C.) 190 F. 20, 24, which offers a parallel situation to that of the case under discussion, the court says:
"In the circumstances it would seem as if the contention of complainant was an afterthought, and for the purpose of meeting the teaching of the defendant's device."
In this connection, the cases quoted on page 32 of plaintiff's brief may be cited against it, in particular, the case of MacColl v. Loom Works, 95 F. 982, 986, 37 C.C.A. 346, where it says:
"In the construction of a patent, the omission of the patentee to point out or refer in his specification or claims to the special feature which he subsequently maintains is the most important part of his invention is very significant, and should be carefully scrutinized."
The fact that this feature of construction, now claimed by the plaintiff to be the most important, does not appear at all in either of the two claims selected, absolutely precludes its consideration now. The law is clear on this point, that a claim must be limited to the elements named therein or their equivalents. Gage v. Herring, 107 U.S. 646, 2 S. Ct. 819, 27 L. Ed. 601; Knapp v. Morss, 150 U.S. 221, 14 S. Ct. 81, 37 L. Ed. 1059.
It is evident that if the claims 3 and 7 of plaintiff's patent can be read upon defendants' machine that the latter infringes. If they cannot be so read it does not infringe.
The two claims which plaintiff has alleged to be infringed are 3 and 7 of the Winter patent, No. 1,399,098, and they read as follows:
"3. A folding mechanism which comprises two sets of cooperating rollers, each set comprising a plurality of spiral rollers of graduated pitch, through which a web of material may be passed, to cause the same to conform to their profile."
"7. A folding mechanism consisting of a plurality of spiral rolls of graduated pitch in contact with which a web of material may be passed and means for preventing lateral displacement of said material."
Claim 3 was twice amended before it was allowed by the Patent Office. The first time the word "cooperating" was inserted, but the claim was again rejected because the Examiner considered that the claim as written was too close to the patent of Brown and Schuchart, supra.
The correspondence between the patentee and the Patent Office on this point is pertinent, since it helps to define what was new in the Winter device, and thus to supply a basis for the application of the law of equivalents.
In his reply to the Examiner after the rejection of claims 1, 2 and 3, the patentee says:
"In this patent [Brown and Schuchart] there are a pair of sheet-receiving spirals 54, which however are not of graduated pitch and do not function in a manner similar to that of applicant's. The graduated pitch of applicant's spiral rolls is a feature which is of great importance, and forms the main part of this application."
To this the Examiner made reply as follows:
"Claim 1 is additionally rejected together with claims 2 and 3 upon the patent to Brown et al., of record, in which the spiral rolls of graduated pitch fold the sheets passed in contact therewith. Applicant's statement that the spirals of Brown are not of graduated pitch is noted, but applicant's attention is called to the paragraph beginning with line 54, page 3, of the specification."
This paragraph, beginning with line 54, says in part:
"The invention included means for compressing and packing the interfolded sheets into a compact stack. While this may be accomplished in various ways, in the form shown, the spiral feeds are so constructed that the spaces between the coils are closer and closer together. As the sheets feed downward these gradually closing coils squeeze out the air to the sides and complete and flatten the fold, each crease being wiped from the center toward the ends, thereby preserving a true relation of the sheets."
Claims 1, 2, and 3 were thereupon amended by patentee Winter. This time the words "to cause the same to conform to their profile" were added to claim 3. Thus amended, it was allowed.
Where an applicant for a patent has amended his claims on rejection by the Patent Office he is estopped to claim the scope of the original claim. In Ironclad Mfg. Co. v. Dairyman's Mfg. Co., 143 F. 512, 514, 74 C.C.A. 372, it says:
"The applicant acquiesced in the rejection, and amended his claim by adding the interlocking means. Thus it was conceded, and the complainant is precluded from asserting the contrary, that, except for the interlocking means, there was no novelty in the invention claimed."
Claim 7 of the patent in suit was granted as originally presented, but in the light of the correspondence with the Patent Office it is clear that it was the combination of the spiral rolls of graduated pitch with the means for preventing lateral displacement of the material which carried it to allowance.
"The primary test of infringement of a patent is whether the language of the claim or claims will read upon the device. If the claim will not so read there is no infringement." Wagner. Damages, Profits and Accounting in Patent Cases, p. 105.
The defendants' machine is described in its specifications as follows:
"The primary object of the invention resides in providing a new and novel means for tucking, folding and creasing flexible sheets as the same are fed to the machine. * * *
"A still further object resides in providing two series of mutilated tucking disks or blades which rotate in opposite directions and operate to engage the material alternately so as to provide folds in the material formed in opposite sides of the plane in which said material is fed to the machine."
These tucking disks or blades rotate across the path of the incoming web of paper and alternately fold the paper back and forth as illustrated in the patent drawing. Their action upon the paper is substantially the same as that of the plates or slides 9 and 10 of the Fulk patent, Defendants' Exhibit No. 7, the difference being that in the defendants' machine the disks or blades rotate, while in the Fulk patent the plates reciprocate.
The specific difference between the folding elements of plaintiff's and defendants' machine is admitted throughout the plaintiff's Brief. For example, on page 4, it says:
"This machine built for defendant corporation was substantially the same as plaintiff's machine as to all parts leading up to the operation of the folding devices. It had folding devices which were rotary and turned on axes substantially parallel with the feed of the paper web, but these folding devices were specifically different from the rotary folding devices in plaintiff's machine and shown in the Winter patent."
It is of course immaterial whether the machines were or were not substantially the same as to the parts leading up to the folding devices, since these parts were not included in the subject matter of either patent. The patents were concerned with the folding devices only. The plaintiff, however, seeks to overcome the specific difference in the folding devices by contending that the tucking blades or disks which are the folding devices of the defendants' machine are the equivalent of the spiral rolls of graduated pitch, which are the folding devices of plaintiff's machine.
In the operation of the patent in suit, as the web of material is fed between the solid spiral rolls of graduated pitch, these rolls rotate in opposite directions in an intermeshing relationship, so that their surfaces coact to hold the paper between them and force it by the gradually increasing acuteness of the angles to assume a series of parallel folds. The surface of the rolls where the material enters is almost horizontal. Where it is discharged the angle is very acute, almost vertical.
The specific folding devices of the defendants' machine are mutilated tucking disks, the outer edges of which are arcuate in design and the engaging portions of which are extended to form tapering and arcuately curved fingers 10 and arcuate tongues 11, directed in the same general direction as the tucking fingers but more deeply curved. The tongues 11 are however bent rearwardly out of the plane of the blades 9 and tend to "fold or crease the material being fed to the machine as the same is tucked."
In addition, the machine has "specific" means [pusher plates] for pushing the folds rearwardly as the machine progresses in its operation, which means also tend to keep the folds of the material in close contact with one another. As the material is tucked and folded, these pusher plates "will be alternately engaged with the folds to crease and force folded material rearward."
The shafts which carry the tucking blades or disks of defendants' machine are in converging planes, and plaintiff's expert sought to prove that they were therefore a fair equivalent of the spiral rolls of graduated pitch of the Winter patent.
The plaintiff failed to convince the Master of the truth of this contention. The "spiral rolls of graduated pitch" which gradually fold a web of paper differ so radically from defendants' tucking blades operating in a transverse plane in structure, function and operation that the latter cannot be considered equivalents of the former.
The plaintiff brings out the point that things may look strikingly different mechanically and yet be in patent law equivalents. While this is unquestionably true, a thing, to be an equivalent of another thing, must fulfill certain conditions. It must accomplish substantially the same result by substantially the same means and in substantially the same way.
In other words, they must achieve the same results by means which are a fair equivalent, one for the other, and by a mode of operation which is the same in principle.
That the two machines accomplish the same result is conceded by the defendants. But the means employed seem to the master to be different, while the mode of operation is not the same.
The tucking disks of the Winter and Rosenthal machine may bear a superficial resemblance to the vertical end of the spiral rollers or spiral worms, as they are also called, of plaintiff's machine. It also appears to be true that the folding devices on both machines were rotary and turned on axes substantially parallel with the feed of the paper web, but there all similarity between the two machines ends. The defendants' tucking disks rotate, but they do not intermesh. The folding in the Winter patent is accomplished by the convolutions of the spiral rollers, a continuous action. In the defendants' machine, the tucking disks alternately engage the material to be folded. These folds begun by the tucking disks are finished by the pusher plates.
"Machines or devices in which the different parts are arranged and constructed to operate continuously are different in principle from those in which the parts are arranged to operate intermittently and alternately with each other, and one is not an infringement of the other." American Steel Wire Co. v. Denning (C.C.) 176 F. 564.
In Dryfoos v. Wiese, 124 U.S. 32, 8 S. Ct. 354, 357, 31 L. Ed. 362, it was held on the same principle that a machine for quilting by gangs of needles in zigzag parallel lines which was fed by cylindrical rolls having an intermittent rotary motion which would move the cloth while the needles were out of it was not infringed by a quilting machine having a gang of needles and short cylindrical feed rolls at each edge of the goods, which they fed in a circular direction, by moving at different rates of speed constantly, the needles having a forward movement corresponding to that of the cloth while in it. In this case the court says:
"The plaintiff's patent must be limited to the mechanism described and claimed by him, and cannot be extended so as to cover all mechanism for giving a circular direction to the feed-motion, nor to the process of operation of the mechanism described in his patent; and the defendant's mechanism, in each form of his machine, cannot be regarded as merely an equivalent for the plaintiff's mechanism. The case is substantially like that of Yale Lock Mfg. Co. v. Sargent, 117 U.S. 373, 6 S. Ct. 931, 29 L. Ed. 950. There the claim of the patent, which was for an improvement in permutation locks, claimed the arrangement of two or more rollers, of varying eccentricity, resting upon the periphery of a cam, for the purpose of preventing the picking of the lock. In the defendant's lock, the rollers were identical with each other in eccentricity and shape, but it was claimed by the plaintiff that, when in revolution, they varied in eccentricity in reference to the cam which operated them, so that, in action, their eccentricity varied, and the same result was produced. But this court held that the description in the patent and the claim required that the variation of eccentricity should be between the rollers themselves, and not a variation in action in reference to the cam; that, although the same result might be produced, it was not produced by the same means; and that there was no infringement."
The spiral rolls of a graduated pitch of plaintiff's machine operate simultaneously, the face of one roll conforming to the corresponding face of the other roll. As they rotate in this overlapping, intermeshing relationship, they push the material between them forward toward the discharge end of the machine. The tucking disks of defendants' machine operate alternately. While one disk is in contact with the material to be folded the other is at its greatest distance away from the web of material.
In the cases on equivalency relied on by plaintiff to sustain its contention, the master failed to find any case in which the mode of operation of the machines in question was substantially different.
In Allen v. Wingerter (C.C.A.) 17 F.2d 745, 746, 747, for example, Judge Woolley says:
"Functionally every advantage obtained by the Allen press is obtained by the defendant's press in the same measure, by the same or similar means in the same or in reverse position, and (with one exception) in the same manner. That exception omits Allen's piston and rod of the patent as a member extending against the ram to force a return of the ram and to break the mold from the core. The defendant has a piston or rod, not connected with the ram, but intended otherwise to do, and actually doing, the same thing."
In McMichael v. Ruth (C.C.A.) 128 F. 706, 708, the defendant substituted a pin and slot connection for the geared connection of the patent.
In Seeger Ref. Co. v. American Car Foundry Co. (C.C.) 171 F. 416, the defendant adapted the principle of the original invention of a combined refrigerator and freezer, with only minor changes in the form of the ventilating ports.
In Mitchell v. Ewart Mfg. Co. (C.C.A.) 81 F. 390, every element of first claim of plaintiff's machine was found in the structure of the defendant. The defendant used the elements of the second claim, modified in form to suit the peculiar conformation of his rectangular links, but identical in functional effects.
In Machine Co. v. Murphy, 97 U.S. 120, 125, 24 L. Ed. 935, complainant's machine employed a cutter arranged to ascend and descend. Respondents used a fixed knife in substantially the same form as the cutter and combined it with a striker which rose and fell, the knife and the striker operating together to form the exact function performed in the complainant's machine by the ascent and descent of the cutter.
In admitting the specific difference between folding devices of the Winter patent and the folding devices of the defendants' machine, the plaintiff has admitted that there is a difference in form between the two machines. In the opinion of the master, this change in form has produced a material alteration in the structure of the machine so that they employ different mechanical principles in their operation.
"To change the form of an existing machine, and by means of such change to introduce and employ other mechanical principles, or natural powers, or, as it is termed, a new mode of operation," is not infringement. Winans v. Denmead, 15 How. 341, 14 L. Ed. 717.
Curtis on Patents (4th Ed.) par. 309, says:
"If the difference between two machines is not a mere difference of form, if there is a material alteration of structure, if they are substantially different combinations of mechanism, to effect the same purpose, by means which are really not the same in substance — then one will not be an infringement of the other."
In Johnson v. Johnson, supra, the court says:
"Where the patents * * * do not embody a primary invention, but are only improvements on the prior art, and defendant's machines can be differentiated, the charge of infringement cannot be maintained."
The decision on American Crayon Co. v. Sexton (C.C.A.) 139 F. 564, is important in the present issue. That suit concerned a machine for making crayons, in which claim 2 covered a rocking or tilting device for loosing and discharging the crayons from the mold. The patent was held to be valid and of primary character, entitled to a liberal range of equivalents, but the Courts held that it was not infringed by mechanism for lifting and dropping the molds to accomplish the same result. Judge Richards says on page 566:
"When we examine the mechanism, we find in the appellant's machine described in the patent a rocking or tilting device, and in the appellees' a lifting and dropping device. The appliances are essentially different. They do different things in distinct ways. The one rocks or tilts the mold plates, the other alternately lifts and drops them. It is true the tilting motion causes the mold plates to move relative to one another in line with the length of the mold, which is just what the lifting and dropping motion does; but are we justified in holding that these two essentially distinct devices are equivalents, simply because the ultimate result, namely, the movement of the mold plates relative to one another in line with the length of the mold, is the same? We think not, for that would be construing the claim so as to cover the movement alone and not the mechanism producing it. It would be virtually giving a patent for the result, regardless of how reached."
The master has found it impossible to read all the elements of claims 3 and 7 of plaintiff's patent upon the defendants' machine. The tucking disks are not equivalents of the spiral rolls of graduated pitch, because their mode of operation is substantially different. They are not rolls, in the proper sense of the word. The phrase "to cause the same to conform to their profile" can not be read on defendants' machine. As the defendants' brief points out, page 37, "it is difficult to know just what is the profile of defendants' rotary disks or folders. They are so constructed that the paper could not follow any profile. The paper is merely tucked up and down by the revolutions of the tucker blades and it does not follow any profile because there is no profile of these tucking members to be followed."
Claim 7 provides for a combination of spiral rolls of graduated pitch and a means for preventing lateral displacement of the paper. In the plaintiff's machine, the means employed were friction rolls. The plaintiff claims first that these friction rolls were not necessary and were not used, and second that the pusher plates of defendants' machine are the equivalent of these friction rollers.
It is immaterial whether or not the friction rolls are essential to plaintiff's machine. They are an element of the claim, and cannot be disclaimed now. Fay v. Cordesman, 109 U.S. 421, 3 S. Ct. 236, 27 L. Ed. 979; Norton v. Jensen, supra.
In the opinion of the master, the defendants' machine has no separate means for preventing lateral displacement. The pusher plates do not appear to have anything to do with the lateral displacement of the material to be folded. They continue the folding initiated by the disks, and compact the folded paper.
Claim 7 is not infringed, since a claim cannot be infringed if one of its elements is omitted, without the substitution of an equivalent. Proudfit Loose Leaf Co. v. Kalamazoo Loose Leaf Binder Co. (C.C.A.) 230 F. 120; Knapp v. Morss, supra.
It is elementary that a claim of a patent is not infringed unless the alleged infringing machine or device embodies every material element of the claim or the mechanical equivalents thereof. The words of a claim are controlling and the term "spiral rollers of graduated pitch" definitely limit the patent in suit to that structure and exclude from it structures like the defendants' machine as well as all of the old types of folding machines. It must, therefore, be held that the plaintiff's patent is not infringed by the defendants' machine.
The validity of the patent in suit was not in question. As plaintiff says, defendants were estopped under the circumstances from pleading invalidity, but they are entitled to raise the point that if it were necessary to enlarge the claims of the patent in suit to cover defendants' machine, it would be void by anticipation by prior patents.
The question of individual or joint responsibility on the part of defendants need not be considered here, since the finding of the master renders it immaterial.
In conclusion, the master finds:
1. That the terms of the contract, "improvements thereon or variations thereof" refer to the perfecting of the particular machine covered by the contract.
2. That defendants did not have in their plant in Chambersburg, Pa., a machine substantially like the machine of plaintiff.
3. That the machine of the defendants made under the Winter and Rosenthal patent does not infringe the Winter patent, No. 1,399,098.
4. That the machine made under the Winter and Rosenthal patent, No. 1,625,566, is not an "improvement to or variation" of the machine of the Winter patent, and therefore is not covered by the contract.
C.W. Clement, Special Master.
The bill of complaint charges the defendants with infringement of plaintiff's patent No. 1,399,098, covering a certain folding paper machine, issued originally to Courtney P. Winter on his application and assigned by Winter to the plaintiff company, and charges the defendant Winter with a breach of the contract under which he assigned the said patent to the plaintiff company. The bill prays that the defendants and their agents be restrained from infringing upon the said letters patent, and that the defendants account for the profits derived from the infringement and pay the damages suffered by the plaintiff, and that the defendant Winter be directed to comply with the requirements of said contract.
On October 13, 1920, the plaintiff company and Courtney P. Winter, defendant, executed a written contract relating to the assignment of Winter's rights in a certain folding paper machine in which it was stated that Winter "planned a folding paper machine, with new and valuable improvements consisting of a folding mechanism, which mechanism consists principally of a plurality of spiral rolls of graduated pitch in contact with which a web of material may be passed" and that he desired the plaintiff company "to assist him in perfecting said machine." Winter was "to prosecute at his own expense, his application for letters patent" for the said folding paper machine. The plaintiff company was granted "the sole and exclusive license to manufacture under, use, operate, produce under and control throughout the United States of America, said folding machine covered by said application or by Letters Patent to be granted thereon, and upon all improvements thereon or variations thereof, for the full term for which said Letters Patent are or may be granted." Winter agreed to inform the plaintiff company of any improvements he may invent or discover upon or effecting said folding machine and to execute all documents necessary or proper as may be required by the said party of the second part in order to apply for letters patent thereon.
On December 6, 1921, patent No. 1,399,098, covering a certain folding paper machine, was issued to Winter on his application in which claims 3 and 7 describe the main and essential features of his patent assigned to plaintiff, as follows:
"3. A folding mechanism which comprises two sets of cooperating rollers, each set comprising a plurality of spiral rollers of graduated pitch, through which a web of material may be passed, to cause the same to conform to their profile."
"7. A folding mechanism consisting of a plurality of spiral rolls of graduated pitch in contact with which a web of material may be passed and means for preventing lateral displacement of said material."
Winter remained in the employment of the plaintiff company, under contract, for a period of three and a half years, during which time he secured patent No. 1,399,098 for the plaintiff company and manufactured a number of machines under this patent for the plaintiff company. During the same period while in the employment of the plaintiff company, he was working upon another folding paper machine of a different character for which he and D.A. Rosenthal secured patent No. 1,625,566.
On April 19, 1927, patent No. 1,625,566 was issued to Duncan A. Rosenthal and Courtney P. Winter, covering a folding paper machine which was described in the specifications, as follows:
"The primary object of the invention resides in providing a new and novel means for tucking, folding and creasing flexible sheets as the same are fed to the machine. * * *
"A still further object resides in providing two series of mutilated tucking disks or blades which rotate in opposite directions and operate to engage the material alternately so as to provide folds in the material formed on opposite sides of the plane in which said material is fed to the machine."
In the bill the plaintiff alleges that the defendants infringed said letters patent secured by Winter and assigned to plaintiff by causing to be made and used a certain machine for folding paper embodying the invention set forth in said letters patent belonging to plaintiff and charging defendant Winter with the breach of his contract for the assignment of said letters patent on the said folding paper machine, embodying the intention set forth and claimed in said letters patent together with the variations thereof and improvements thereon.
On April 26, 1927, the cause came on to be heard and by agreement of the parties was referred to a special master, who was appointed to take testimony and to make report, together with his findings of fact, conclusions of law, and recommendation to this court. The master took the evidence of both sides in the case, and after arguments of counsel for both sides, reported to the court his findings of fact and conclusions of law, together with his recommendations in which he finds:
"1. That the terms of the contract, `improvements thereon or variations thereof' refer to the perfecting of the particular machine covered by the contract.
"2. That defendants did not have in their plant in Chambersburg, Pa., a machine substantially like the machine of plaintiff.
"3. That the machine of the defendants made under the Winter and Rosenthal patent does not infringe the Winter patent No. 1,399,098.
"4. That the machine made under the Winter and Rosenthal patent No. 1,625,566 is not an `improvement to or variation' of the machine of the Winter patent, and therefore is not covered by the contract."
To the master's findings of fact and conclusions of law, the plaintiff has filed exceptions, and the case is now again before the court for disposition.
The plaintiff alleges first that the defendants made and used in their plant at Chambersburg a machine of substantially the same construction as is embodied in the Winter patent, No. 1,399,098, and, secondly, that the machine patented by Rosenthal and Winter, patent No. 1,625,566, is an improvement upon and variation of said patent No. 1,399,098, and therefore a breach of the term of the said contract.
The first question for determination is whether the plaintiff's patent No. 1,399,098 has been infringed by the defendant, as claimed by the plaintiff.
The testimony shows that the machine used by the defendants was not the same kind of a machine, nor like the machine, of the plaintiff. The plaintiff's machine, claim 3, is a folding mechanism which comprises two sets of co-operating rollers, each set comprising a plurality of spiral rollers of graduated pitch, through which a web of material may be passed to cause the same to conform to their profile; claim 7 is a folding mechanism consisting of a plurality of spiral rolls of graduated pitch in contact with which a web of material may be passed and means for preventing lateral displacement of said material.
No such machine, as described in claims 3 and 7, according to the evidence, was used at any time by the defendants. The machine used by the defendants in their factory at Chambersburg, Pa., was patented by Rosenthal and Winter under patent No. 1,625,566 and provides "a new and novel means for tucking, folding and creasing flexible sheets as the same are fed to the machine." The plaintiffs machine consisted of a folding mechanism which comprises two sets of co-operating rollers each set comprising a plurality of spiral rollers of graduated pitch, while the defendant's machine comprises two series of mutilated tucking disks or blades which rotate in opposite directions. The spiral rolls of graduated pitch which caused the material to conform to their profile in the plaintiff's machine differ from the defendants' machine embodying the two series of mutilated tucking disks or blades which rotate in opposite directions, and the latter are not an equivalent of or substantially like the former, and therefore the plaintiff's patent has not been infringed by the defendants. "To constitute infringement of a patent for a machine the infringing machine must be substantially identical with that of the patent in the result attained, the means of obtaining that result, and the manner in which its different mechanisms operate and co-operate to produce that result." American Steel Wire Co. of New Jersey v. Denning Wire Fence Co. (C.C.) 176 F. 564.
The second question for determination is whether the defendants' machine, as patented under patent No. 1,625,566, is an improvement on or a variation of the plaintiff's machine as covered by letters patent No. 1,399,098.
The essential and main part of the plaintiff's machine, in fact the only part, which is covered by claims 3 and 7 of the plaintiff's patent, consists of two sets of co-operating rollers of graduated pitch, the essential thing being the spiral rolls of graduated pitch, while the defendants' invention, as patented and used, consists of two series of mutilated tucking disks or blades which rotate in opposite directions and is not in any way an improvement or variation of the two sets of co-operating rollers, each set comprising a plurality of spiral rollers of graduated pitch. The defendants' machine is a novel and different machine in its essential principals. The defendants' machine is a new machine entirely different from the plaintiff's machine and not in any manner an improvement or variation thereof, and therefore there has been no breach of the contract between the plaintiff and Winter, giving the plaintiff the benefit of any improvements to or variations of plaintiff's patented machine. The improvements on or variations of the plaintiff's machine as contemplated by the contract are not improvements in the art generally, but improvements on and variations of the specific patented machine belonging to the plaintiff, assigned under contract. American Cone Wafer Co. v. Consolidated Wafer Co. (C.C.A.) 247 F. 335.
"Where a subsequent patent does not infringe a former one, it is independent thereof, and will be regarded as a new patent, and not a mere improvement of the former one. * * * An improvement, as understood in the patent law, embraces the original and adds thereto or alters it. Page v. Ferry, Fed. Cas. No. 10,662. * * * A device securing the same result, but operating on a different principle, is not an infringement of a former patent (Bridge v. Excelsior Mfg. Co., 105 U.S. 618, 26 L. Ed. 1191), and is not covered by an assignment of the patent with an agreement to assign all improvements made on it." Stitzer v. Withers, 122 Ky. 181, 91 S.W. 277-280.
"In determining what is and what is not an improvement, it seems to be the policy of the courts in passing upon contracts to assign improvements to construe such contracts so as to cover only improvements in the particular patent or machine which forms the immediate subject-matter of the assignment." McAuley v. Chaplin-Fulton Mfg. Co., 217 Pa. 477, 66 A. 750, 753.
From all the evidence in the case, the court finds that the plaintiff's patent has not been infringed by the defendants, as claimed by the plaintiff, and that the defendants' machine, patented under patent No. 1,625,566 is not an improvement on or variation of plaintiff's machine, as patented under patent No. 1,399,098, and therefore there has been no breach of the contract by defendants in using a machine which is an improvement on or a variation of plaintiff's machine.
And now, August 15, 1929, the exceptions to the master's report are dismissed, the master's report is confirmed, and the findings of fact and conclusions of law of the master are confirmed and adopted by the court as its findings of fact and conclusions of law, and the plaintiff's bill of complaint is dismissed.