Union Paper Bag Mach. Co. v. Advance Bag Co.

WARRINGTON, Circuit Judge. The issues in this suit are those usually found in a controversy touching the infringement of a patent. Admittedly the patent in suit is for a combination invention comprising appliances which are each old in the art of forming, through mechanism, the well-known diamond fold on the ends'of bellows-folded paper bag blanks; each claim in suit being properly a combination claim. One of the defenses urged is that the alleged infringing machine entirely omits and dispenses with one of the essential elements o f the patent in suit, without employing a mechanical equivalent for the omitted element. There is no dispute as to the omission, but an issue is sharply drawn as to substitution of a mechanical equivalent. The necessity of passing upon further issues made in the case will depend upon how this issue must be determined. April 4, 1896, Charles E. Dulin made application for the grant of letters patent for the invention in suit, and on March 9, 1897, letters patent of the United States, No. 578,550, were issued. Through assignments, the Union Paper Bag Machine Company, one of the appellants, became the owner of the patent, and thereupon granted the Union Bag & Paper Company an exclusive right and license' under the letters patent to use, manufacture, and sell paper bags made in accordance with the patent. The alleged infringing machine was constructed in substantial accordance with the Bartholomew patent granted August 18, 1903, under letters patent No. 736,673. As regards the patent in suit, after stating in the specification that the invention relates to machinery for manufacturing paper bags and particularly the “square satchel-bottom bag,” and 'that the object of the invention is to secure greater speed and simplicity in the manufacture of these hags, Dulin says that his description and drawings— “ * * * show that portion of a paper hag machine by which a bello ws-fohled tube has its end spread out into the form known as the ‘diamond fold,' and I will here say that my present invention is entirely concerned with this part, of the machine, which may he used with any convenient mechanism for forming the tubes and for folding the diamond in order to close the bottom of the bags.” He then proceeds with much detail and particularity to describe the machinery designed to accomplish his declared object, ,and then states: "The features above referred to comprise those which embody the essential novelties of my invention.” This is followed by a description of devices which as he states do not differ essentially from those in common use with other machinery, although somewhat modified and changed to adapt them for use in [136] connection with his device. Thereupon he describes the operation of the machine as a whole. These descriptions refer,by letters and numerals to drawings consisting of Rig. 1 to Rig. 20. The claims set out in the letters patent,are 16 in number, and those in suit are claims 1, 2, 3, 4, 5, and 7. Claim 1 is: “1. In a paper bag machine mechanism for spreading out the diamond fold on the end of a bellows-folded tube comprising rotating central grippers O c arranged to seize the top and bottom plies of the bellows-folded blank and spread it open at its end, rotating side grippers B e arranged to pass between the bellows folds of the bag, engage its corners and spread out the blank in the plane of the bottom to be formed thereon, mechanism for engaging and. disengaging the grippers and the blank as described and mechanism for drawing the diamond-folded blanks from the path of the grippers after they have released it.” Claim 2 comprises the elements .of claim 1, with the addition of ‘a transverse creaser arranged to crease the blank on the line about which the diamond is spread open and at a,time prior to the distention of the diamond fold.” Claim 3 corresponds with claim 2, except ' that it describes the creaser as a "rotating transverse creaser arranged,” etc. Claim 4 introduces rolls as among the devices forming the diamond: “4. In a paper bag machine, mechanism for spreading out its diamond fold on the end of a bellows-folded tube consisting of rolls as B and B', between which the bellows-folded blanks are fed in combination with central grippers O and o, one secured to each roll and 'arranged to seize the top and bottom plies of the blank as it enters between said rolls, side grippers as E B and e e, one pair attached to and rotating with each roll, said grippers being adapted to move in between the rolls and between the bellows folds of the blank and to clamp the blank to the faces of the rolls at its corners and mechanism for operating the grippers to cause them to engage and disengage the blank at proper times.” Claim 5 corresponds with claim 4 with the addition of “a creaser arranged to crease the.blank transversely on the line about which the diamond fold is opened at a time prior to the distention of the diamond.” Claim 7 is like claim 4, except .that it introduces “a lifter as D arranged to lift the blank as it enters between the rolls so as to bring its upper ply to position to be engaged by the upper gripper.” It is stated in the specification in substance that a dual object is accomplished by the rolls B and B’ in that they serve as supports for the grippers and creaser and also as feed rolls, and that other convenient feeding'apparatus might be provided in their stead; but it is stated, further, that: “Tbe essential feature of my invention being tbe rotating and coacting device for distending tbe blank to tbe diamond form in tbe manner above described.” As it seems to us, no study of the specification and claims in connection with the drawings contained in the letters patent in suit can fail to reveal'the distinctive character and the importance to the Dulin machine of the lower central gripper c. It forms part of each of the six claims in suit, not to speak of the number of times it is mentioned and made to appear in the specification and drawings; and, further, special mechanism is obviously necessary, and it is both de [137] scribed and displayed, for operating the lower central gripper. The experts seem to be in harmony as to the necessity of both central grippers, the lower as well as the upper. They are part of the group constituting the “rotating and coacting device for distending the blank to the diamond form;” and this, as we have seen, is declared by the inventor to be “the essential feature” of his invention. The lower central gripper is used for the further purpose of drawing the blank downward until the diamond fold is gripped between rolls B' and Í,., when the blank is released from the gripper and carried (hence to the pairs of rolls ¡0 and O' and P and P', vdiich lie lower down in-the machine. True, complainant’s expert testified that the grippers could be replaced by other (undescrihed) devices; hut we cannot discover that Duiiu ever intended to dispense with any of the grippers or to have them operated except in accordance with his painstaking description. Indeed, to do so would be inconsistent with the very scheme of his invention. If rolls B and B' were dispensed with, as suggested by Dulin, still some other means for operating his rotating and coacting device for distending the blank to the diamond form would, so far as appears, have to be devised and equipped with tiie grippers, the lower as well as the upper; for otherwise his device would not produce the desired diamond form. The necessity to employ the lower central gripper in the Dulin machine to effect the downward movement of the blank arises from the fact that each blank is severed from the one in advance of it prior to the formation of the diamond fold. This severance of the blanks marks the point of departure between the two machines in dispute. The defendant does not sever the blanks, and, on the contrary, preserves them in series by central tab connections, called tangs, at their ends, until later in the process of manufacture; and so does not need or use the lower central gripper to effect the downward movement mentioned, nor to hold the lower ply against the face of the roll during the distention. It is true that in the cross-examination of one of defendant’s experts if was conceded that the blanks pass along the same path over the lower rollers of the respective machines in question; but he thereupon stated: •‘In the Dulin machine each blank is carried forward (after the diamond fold is formed upon it) by the drawing rolls. In defendant’s machine each blank is carried forward (after the diamond fold is formed upon it) by the drawing rolls. In the use of the Dulin machine each blank is severed "from t he one in advance of it before the- formation of its diamond fold, and it is therefore necessary to mount a central gripper on the lower roll for the purpose of drawing downward the center of the edge of the lower n]y of the blank; the drawing rolls being unable to perform that function.' In the operation of defendant’s machine the tab-connection method is followed, and each blank drawn forward by the drawing rolls serves to draw downward the center of the edge of the lower ply of the succeeding blank. There is therefore no lower central gripper in this machine, nor is there anything substituted for it.” The learned judge of the court below considered this difference as amounting, under the authorities, to a distinction sufficient to relieve the defendant from the charge of infringement. Counsel disclaim having said that the connecting tang uniting the blanks was an equiva [138] lent for the central gripper of the lower roll in the Dulin machine. Their contention is that the mechanism in defendant’s machine, which, acting through the tang, holds the center of the blank on the lower roll, just as does the central gripper of the patent in suit and with the same results on the work of the combination, is not only an equivalent, but a well-known equivalent, for the central gripper. This argument seems to us to overlook the real constitution of the elements “central grippers,” which, of course, include lower central gripper c, as disclosed by the claims. These elements are named in substantially the same language in each of the claims in suit, and in each claim they must be the same thing. We find, however, that some of the claims calling for these elements also call for another additional element: “Mechanism for drawing the diamond-folded blanks from the path of the grippers after they have released it.” This mechanism, the feeding or drawing rolls, pulls the completed fold away from the point of release from lower central gripper c and passes it on through the machine. The mechanism in defendant’s machine, which is claimed to be an equivalent of the lower central gripper, is the same group of feeding and drawing rolls which draws the completed fold away. These two elements, being separately called for in the claims, cannot be the same thing, and the drawing rolls in defendant’s machine being in practically the same form as in the patented machine cannot be both the central lower gripper and the mechanism for drawing a fold away from it. It follows that the connected series of blanks passing through defendant’s machine is the only substitute there to be forbid for the lower central gripper and its operating devices in the Dulin machine. The Dulin machine could not form the diamond fold, but for the lower central gripper; nor could defendant’s machine, but for the tab-connections preserved in its machine until the blanks reach the drawing rolls 336 and 2Jfi. Thus, an element of the patent in suit is not only omitted from the alleged infringing machine, but no mechanism is put in its place. The most that can be said is that rolls 336 and 343 fairly correspond with rolls of the Dulin machine; but this only accentuates the lack of substitution of mechanism for the omitted mechanism. It is settled that a claim for a combination is not infringed if any one of the elements is omitted without substitution of an equivalent. As Mr. Justice Day said in Cimiotti Unhairing Co. v. Am. Fur. Ref. Co., 198 U. S. 399, 410, 25 Sup. Ct. 697, 702 (49 L. Ed. 1100): “In making his claim the inventor is at liberty to choose his own form of expression, and, while the courts may construe the same in view of the specifications and the state of the art, they may not add to or detract from the claim. And it is equally true that as the inventor is required to enumerate the elements of his claim, no one is an infringer of a combination claim .unless he uses all the elements thereof.” See, also, Duncan v. Cincinnati Butchers’ Supply Co., 171 Fed. 656, 665, 96 C. C. A. 400 (C. C. A. 6th Cir.); Ott v. Barth (C. C.) 32 Fed. 89, 91; Pittsburgh Meter Co. v. Pittsburgh Supply Co., 109 Fed. 644, 651, 48 C. C. A. 580 (C. C. A. 3d Cir.); Rowell v. Lindsay, 113 U. S. 97, 102, 5 Sup. Ct. 507, 28 L. Ed. 906; Levy v. Harris, 130 Fed. 711, 715, 65 C. C. A. 113 (C. C. A. 3d Cir.). [139] Counsel for complainant rightly concede that the .use of the tang in question in place of the lower central gripper does not amount to the substitution of a mechanical equivalent; for that would be to treat the paper made into diamond folds by the machine, as an element of the patent. See Morgan Envelope Co. v. Albany Paper Co., 152 U. S. 425, and language of Justice Brown at page 431, 14 Sup. Ct. 627, 38 L. Ed. 500, although obiter; American Tobacco Co. v. Streat, 83 Fed. 700, 705, 28 C. C. A. 18 (C. C. A. 4th Cir.). In the view we have taken of the case, it is plainly unnecessary to consider either the patentability of the Dulin machine or the degree of breadth that should be accorded to it; for, conceding without deciding the question of invention, even if the patent could be said to be a pioneer (and it is in vain to insist that it is), the charge of infringement could not, in our judgment, be sustained. As Justice Brown said in Westinghouse v. Boyden Power Brake Co., 170 U. S. 537, 569, 18 Sup. Ct. 707, 723 (42 L. Ed. 1136): “But, after all, even if tlie patent for a mac-Mne be a pioneer, tlie alleged-infringer must have done something more than reach the same result, lie must have reached it by substantially the same or similar means, or the rule that the function of a machine cannot be patented is of no practical value.” The decree of the court below must be affirmed, with costs.