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constructions known in the art to the exigencies of a particular situation, or the requirements of a certain class of materials.

The prior Stough patent No. 172,202, of 1876, discloses every element of the claims in suit in the combination as stated in said claims. It is true that the Stough patent is for a machine for boring wells. But this is immaterial in view of the facts already discussed, and that the problem here was purely one in engineering construction. The patent discloses an apparatus designed to receive material, analogous to coal, namely, loose earth, bored out and removed to a fixed central point in the progress of the work, and to elevate it through the open centers of the support and rotating frame, and to deposit it into a conveyor, by which it is conducted or removed and piled at a point outside the machine. But it is argued that the Stough structure is differentiated from that of the claims in suit because its elevating mechanism does not also convey the material, while in the patent in suit No. 668,960 the mechanism is described as being "one mechanism for both elevating and conveying the material." But such a construction is shown in the Hulett patent, referred to above, and elsewhere in the record, and it is manifest that it required nothing more than the skill of the engineer to use such mechanism in connection with the elevating apparatus shown in the Stough patent. It is further argued that the Stough "machine does not operate to return any material which may have been heaped around it"; that "in the Stough apparatus there is no grab bucket * * * ascending a tower and passing out under a truss,' and no rotating hollow tower high enough to permit the unobstructed outward passage of the elevating and conveying apparatus.

But the claims in suit of patent No. 668,960, claims 1 and 2, are not directed to any such details of construction or operation of the conveying apparatus. Such details are covered by the other claims of said patent, and by the claims in suit of patent No. 688,111. The claims in suit of patent No. 668,960 cover broadly any pivoted open centered structure, swinging on a fixed structure, provided with any elevating and conveying mechanism on said pivoted structure, arranged to elevate material through said open structure, substantially as described. We conclude, therefore, that the patentees did not devise any novel means by which to carry out their ideas and put them in shape for practical operation.

In Dunbar v. Eastern Elevating Co., 81 Fed. 201, 26 C. C. A. 330, a case which, in the general situation presented, was strikingly similar to the case at bar, this court said as follows:

"He effected a new organization of a portable elevator, but if this did not involve invention, but was that which could have been done by the skilled mechanic by selecting known devices, applying them to their appropriate uses, and introducing such modifications of detail to fit them for the new environment as would be dictated by experience and good judgment, the patent cannot be sustained. It is manifest from what has been said of the prior state of the art that what Dunbar did was to adapt well-known devices to the special purpose to which he contemplated their application. The elevator, with all its equipment for reaching, raising, and transferring grain, was at hand. Various forms of portable elevators, carried by wheels and moved upon tracks, were at hand. To adapt his elevator to the new occasion, it was necessary that a track should be located in such relation to the warehouse that the elevator could be moved upon it back and forth to reach vessels lying at the dock, and

discharge their contents into the warehouse. The devices known to builders and in common use for moving similar structures were at hand, and it was only necessary for him to select them with reference to the particular structure to be moved. It was necessary to select a more powerful windlass and a stronger cable, if he proposed to move an elevator of large size and weight, than would be required to move one of smaller size and weight. It was necessary that appropriate fastening devices should selected to secure the elevator to the warehouse when doing its work of discharging from the vessel, and these were at hand, in great variety of forms."

In New Departure Bell Co. v. Bevin Bros. Manufacturing Co., 73 Fed. 469, 19 C. C. A. 534, this court said as follows:

"It may be a hardship to meritorious inventors, who, at the expenditure of much time and thought, have hit upon some ingenious combination of mechanical devices, which, for aught they know, is entirely novel, to find that, in some remote time and place, some one else, of whom they have never heard, has published to the world, in a patent or a printed publication, a full description of the very combination over which they have been puzzling; but in such cases the act, none the less, refuses them a patent. The real invention here is the combination of a base plate with a revoluble striker bar, * * *. But this precise mechanism was described and published to the world in the Bennett patent, and is used in complainant's bell with no other reorganization of operative parts than the insertion of an additional gear and pinion wheel, and such a shifting of the spring as introduces no new function. In our opinion, such unsubstantial changes do not involve invention."

These conclusions dispense with the necessity of considering the second patent in suit. If there is no novelty in the main invention, there can, confessedly, be none in the minor appliances covered by the second patent, which are only useful in connection with the means shown in the first patent.

The decree is affirmed, with costs.

CONTINENTAL PAPER BAG CO. v. EASTERN PAPER BAG CO.* (Circuit Court of Appeals, First Circuit. December 24, 1906.)

No. 635.

1. PATENTS-INFRINGEMENT-PAPER BAG MACHINE.

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The Liddell patent, No. 558.969, for a paper bag machine, held valid as against the claim of prior invention by Claussen, who obtained patent No. 598,497 upon a later application, and also infringed by the machine of the Claussen patent.

2. SAME-SUIT FOR INFRINGEMENT-EQUITY JURISDICTION.

The fact that the machine of a patent has never been put into commercial use does not preclude the owner of the patent from maintaining a suit in equity to enjoin its infringement.

Aldrich, District Judge, dissenting.

Appeal from the Circuit Court of the United States for the District of Maine.

For opinion below, see 142 Fed. 479.

Albert H. Walker, for appellant.

Samuel R. Betts, and Francis T. Chambers (Betts, Sheffield & Betts, on the brief), for appellee.

* Writ of certiorari granted by Supreme Court March 11, 1907.

Before COLT and LOWELL, Circuit Judges, and ALDRICH, District Judge.

LOWELL, Circuit Judge. This is a bill in equity to restrain the infringement of letters patent No. 558,969, issued to Liddell for an improvement in paper bag machines. The following claims are in suit:

"(1) In a paper-bag machine, the combination of a rotating cylinder provided with one or more pairs of side-folding fingers adapted to be moved toward or from each other, a forming-plate also provided with side-forming fingers adapted to be moved toward or from each other, means for operating said fingers at at definite times during the formative action upon the bag-tube, operating means for the forming-plate adapted to cause the said plate to oscillate about its rear edge upon the surface of the cylinder during the rotary movement of said cylinder, the whole operating for the purpose of opening and forming the bottom of the bag-tube, and means to move the bag-tube with the cylinder.

"(2) In a paper-bag machine, the combination of the rotating cylinder provided with one or more pairs of side-folding fingers adapted to be moved toward or from each other, a forming-plate also provided with side-forming fingers adapted to be moved toward or from each other, means for operating said fingers at definite times during the formative action upon the bag-tube, operating means for the forming-plate adapted to cause the sail plate to oscillate about its rear edge upon the surface of the cylinder during the rotary movement of said cylinder for the purpose of opening and forming the bottom of the bag-tube, a finger moving with the forming-plate for receiving the upper sheet of the tube and lifting it during the formative action, power devices for returning the forming-plate to its original position to receive a new bagtube, and means to move the bag-tube with the cylinder."

"(7) In a paper-bag machine, the combination of the rotating cylinder with the bag-tube provided with one or more pairs of folding-fingers adapted to be moved toward or from each other, a forming-plate also provided with formingfingers adapted to be moved toward or from each other, means for operating said fingers at definite times during the formative action upon the bag-tube, operating means for the forming-plate adapted to cause the said plate to oscillate about its rear edge upon the surface of the cylinder during the rotary movement of said cylinder for the purpose of opening and forming the bottom of the bag-tube, and connecting mechanism for timing the movements of the rotating cylinder and the forming-plate."

In order to decide this case, it is agreed that only claim 1 need be considered, and that the decision upon the other claims will follow that reached regarding claim 1. The Circuit Court found claim 1 to be valid and to have been infringed by the defendant, and it decreed an injunction accordingly. From this decree the defendant has appealed to this court.

The several defenses set up are as follows:

1. The defendant alleges that the invention of the patent in suit, whatever that invention may be, was not made by the patentee Liddell, but by Hunter, his patent solicitor. He contends that from between the formal blanks which had been signed by Liddell, Hunter withdrew the specifications which had made part of the application at the time of its signature, and that afterwards, before filing the application in the Patent Office, Hunter inserted other specifications without Liddell's knowledge. We do not feel ourselves required to review the evidence adduced to support this theory. It is insufficient to establish that the serious crime alleged was committed by Hunter.

2. The defendant alleges that its machine is built in accordance. with a patent to Claussen, No. 598,497, and that Claussen's invention

antedates that of the patent in suit; hence he urges (1) that Claussen anticipated the invention of the patent in suit, and so the patent in suit is invalid; or (2) that the two inventions are different, and so there is no infringement. But Liddell's invention is carried back to January 7, 1896, and no drawing of Claussen made before that time shows any operative combination which anticipates it. For a full treatment of this subject we refer to the opinion of the learned judge of the Circuit Court.

3. The important issue is noninfringement. The patent in suit is concerned with folding the bottoms of S. O. S. paper bags. In the prior art this had been accomplished both by a folding-plate reciprocating upon a plane, and by the operation of fingers upon a cylinder. The folding-plate and the cylinder had never been combined. The complainant urges with much probability that the reason why they not been combined lay in the difficulty of operating a pivoted foldingform upon the surface of a cylinder. Two circles external to each can be in contact at but one point, while, in order that the foldingplate may operate, its end, as it moves upon a pivot, must remain for some distance in contact with the surface of the revolving cylinder. The problem may be solved by causing the pivot or axis of the folding-plate to yield away from the cylinder, or by causing the surface of the cylinder to be depressed away from the folding-plate. The patent in suit adopts the first device, the defendant's machine the second; and the crucial question before the court is this: Under all the circumstances of the case, is the second method, as compared with the first, within the doctrine of equivalents?

The defendant's machine is within the letter of the claims of the patent. These are broadly drawn. The only clause with which we need concern ourselves is that which claims "operating means for the forming-plate adapted to cause the said plate to oscillate about its rear edge upon the surface of the cylinder." The nature of the means is not specified. There is no express reference to the specifications, and in them the patentee twice makes it clear that he does not intend to confine his invention to the particular means described. Thus he says: "In place of these devices for controlling the movement of the plate, E, relatively to the cylinder, C, the said plate may be moved or operated by any other suitable means. * ** It is evident that the mere mechanism for securing the several movements to the different parts may be modified or changed in various ways without departing from the spirit of the invention, and I do' not, therefore, confine myself to the details of construction here shown."

This breadth of claims would imperil the patent were the real invention less broad, but the defendant has not pointed out, and we have been unable to find, any operative combination of a rotary cylinder and a forming-plate oscillating thereon earlier than the patent in suit. If, therefore, the patent is valid, it has a wide scope, and the mechanical arrangement used by the defendant is fairly within its terms.

The machine of the patent in suit is mechanically operative, as was shown experimentally for the purposes of this suit, but it has not been put into commercial use. No reason for the nonuser appears in the evidence, so far as we can discover. The defendant's machine has been an assured commercial success for some years. It was suggested

at the oral argument that an unused patent is not entitled to the protection given by the extraordinary remedy of an injunction. This contention was not made in the defendant's printed brief. While this question has not been directly passed upon, so far as we are informed, in any considered decision of the Supreme Court, yet the weight of authority is in favor of the complainant. Fuller v. Berger, 120 Fed. 274, 56 C. C. A. 588, 65 L. R. A. 381; Bement v. Nat. Harrow Co., 186 U. S. 70, 88, 90, 22 Sup. Ct. 747, 46 L. Ed. 1058; Heaton Peninsular Button Fastener Co. v. Eureka Specialty Co., 77 Fed. 288, 25 C. C. A. 267, 35 L. R. A. 728; Crown Cork Co. v. Aluminum Stopper Co., 108 Fed. 845, 868, 48 C. C. A. 72; Broadnax v. Central Stockyard Co. (C. C.) 4 Fed. 214, 216; Consol. Roller-Mill Co. v. Coombs (C. C.) 39 Fed. 803; Campbell Printing Co. v. Manhattan Ry. Co. (C. C.) 49 Fed. 930.

As we find the claims in suit to be valid and to have been infringed by the defendant, the complainant is entitled to an injunction, and the decree of the Circuit Court must be affirmed.

The decree of the Circuit Court is affirmed, and the appellee recovers costs of appeal.

ALDRICH, District Judge (dissenting). I agree to the conclusion that the patent in suit was infringed, but, notwithstanding infringement, I contend that injunction relief should not be granted because it is an infringement of a paper patent deliberately held in nonuse for a wrongful purpose.

The injunction is not asked against the use of a machine which infringes one which the plaintiff below is making and vending under a patent, but against the use of a machine which infringes a patent under which the plaintiff is not making and vending, and one which the plaintiff intends to withhold from the public.

The manifest purpose is to withhold the infringed device from commercial use with the view of forcing another into the paper bag industry; and thus the concrete question is whether equity by injunction will aid such a purpose with respect to a legal right.

There is no pretense in this case that equitable aid is asked to protect from infringement the patent the plaintiff is using in its business. In the aspect most favorable to the plaintiff, the relief sought is injunction protection to a business or an industry built up in using a particular invention, and through acquiring and holding in deliberate nonuse a competing invention by way of protection.

It results, therefore, that a court of equity is asked not to protect from infringement the statutorily intended monopoly of the right to make, use, and vend under a particular patent, but to protect a monopoly beyond and broader than that, a monopoly in aid of the rightful statutory monopoly of the patent in use. The proposition involves the idea of a secondary monopoly maintained to stifle patent competition in the trades and industries, and thus contemplates a condition which at once contravenes the manifest purpose of the Constitution, and a monopoly of a kind and breadth and for a purpose in no sense ever contemplated by the statutory contract which safeguards the legal right to make, use, and vend under a particular patent.

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