Sylvania Industrial Corporation v. Visking Corporation

• Decision Date: 06 January 1943
• Docket Number: No. 4966.,4966.
• Citation: 132 F.2d 947
• Parties: SYLVANIA INDUSTRIAL CORPORATION v. VISKING CORPORATION.
• Court: U.S. Court of Appeals — Fourth Circuit

132 F.2d 947 (1943)

SYLVANIA INDUSTRIAL CORPORATION v. VISKING CORPORATION.

No. 4966.

Circuit Court of Appeals, Fourth Circuit.

January 6, 1943.

COPYRIGHT MATERIAL OMITTED

Lawrence Bristol, of New York City (Elmer R. Helferich and Leonard A. Watson, both of New York City, and C. O'Conor Goolrick, of Fredericksburg, Va., on the brief), for appellant and cross-appellee.

William S. Pritchard, of New York City (Harry H. Levin, of New York City, and Lewis C. Williams and Williams, Mullen & Hazelgrove, all of Richmond, Va., on the brief), for appellee and cross-appellant.

Before PARKER, SOPER, and DOBIE, Circuit Judges.

SOPER, Circuit Judge.

Four United States patents which belong to The Visking Corporation and relate to artificial sausage casings are in controversy in this suit, which was instituted April 6, 1939. They are the Freund patent No. 1,959,978, issued May 22, 1934 on an application filed January 12, 1931, which relates to the preprinting of a name or mark on the casings before they undergo the packing process; the DeCressey patent No. 1,890,215, issued December 6, 1932, on an application filed November 17, 1930, which relates to sausage casings with a plurality of apertures for the escape of water and fat during the cooking operation; the Henderson and Dietrich patent No. 1,612,508, issued December 28, 1926, on an application filed April 14, 1926, which relates to an apparatus and a method for drying the casings in the course of manufacture; and the Hewitt patent No. 1,967,773, issued July 24, 1934, on an application filed November 26, 1930, which also relates to an apparatus and a method for drying the casings in the course of manufacture.

Validity and infringement of the patents were in issue in the District Court, and also the defense that improper use of the patents by the plaintiff disentitled it to relief. On April 3, 1941, the judge found that all the patents were valid and infringed, but denied relief on the ground that the plaintiff had attempted by its method of doing business and by improper use of the patents to secure a limited monopoly on unprinted regenerated cellulose sausage casing which is an unpatented material. In subsequent supplemental proceedings the plaintiff offered evidence that satisfied the judge that it had purged itself of its illegal conduct; and on March 13, 1942, the judge filed an interlocutory decree holding that the plaintiff had so purged itself by May 12, 1941, and was entitled to an injunction against future infringement and an accounting from that date for past infringement. Each party was to pay its own costs. This relief was granted upon the condition that the plaintiff conduct its business and use its patents without attempting to create a monopoly in unpatented material; and leave was granted to the defendant to appeal to the court for a vacation of the decree upon showing that the plaintiff or any of its representatives were violating this condition.

In the supplemental proceedings the defendant filed an answer setting up that it had discontinued the use of the apparatus charged to infringe the Henderson and Dietrich patent, and since the decision of the court of April 3, 1941, had not used this patent and had had no intention of again using it or the method which the patent disclosed. The answer prayed that the complaint be dismissed as to this patent. In support of the answer defendant offered proof, not controverted by the plaintiff, that the use of the apparatus in question had been discontinued by the defendant about January 5, 1938, more than a year prior to the institution of the suit. By the decree of March 13, 1942, this supplemental answer, on motion of the plaintiff, was stricken from the record.

The defendant appealed from the whole decree; and the plaintiff filed a cross appeal from the action of the court in denying an accounting for the period prior to May 12, 1941, and in making the relief given the plaintiff conditional on its subsequent behavior, and in requiring each party to pay its own costs.

We shall consider first the question of validity and infringement of the patents in suit. The type of artificial sausage casing now in commercial use by the parties to this cause comprises a plain thin walled tube of regenerated cellulose or cellophane. It was devised as an improved substitute for the more or less objectionable ordinary animal casing by Cohoe and Fox to whom patent No. 1,070,776 was issued in 1913. The article proved to be thin, flexible, sufficiently strong and edible. In the same year Cohoe applied for patent No. 1,163,740 issued in 1915 which disclosed a press for extruding the raw material, and the steps from the extrusion to the drying of the material in the process of manufacture, which in general are followed by commercial manufacturers today. Commercial operations took place in Canada in 1914 and shipments were made to Europe and the United States until interrupted by the first World War. The DuPont Cellophane Company acquired ownership of the Cohoe patents in 1923 and in 1925 the plaintiff secured a license thereunder. Patent No. 1,070,776 expired on August 19, 1930, and since that date regenerated cellulose sausage casings have been unpatented articles of commerce.

Freund Patent:

The specification of this patent gives the following description of the invention. It relates to means whereby a cellulose sausage casing, which is neither porous nor absorbent to any great extent, may be so printed that the printed characters will stand the severe treatment which the casing necessarily undergoes in the packing house process. Previous unsatisfactory means used by manufacturers to identify their goods included a tag tied to the casing, a printed band enclosing the casing, decalcomania transfer applied after manufacture, and branding by a heated die. It had not been practical to apply printed matter because the printing would not withstand the curing operation. To enable this to be done successfully, the ink employed must have great opacity. The composition of the ink that may be used is described in considerable detail.

Of the eleven claims of the patent, seven include a description of the ink to be used; but these claims are not in suit, doubtless because the defendant does not infringe them. The defendant uses seven different inks, and the plaintiff for a large part of its products uses inks that do not come within any of these claims. Claims 1, 2 and 3 in suit are as follows:

"1. A method of producing a marked stuffed sausage which comprises: imprinting a mark or character in waterproof, smoke-proof, opaque ink upon a substantially dry cellulose casing and hardening the ink; stuffing the casing; and subjecting the stuffed product to a curing operation.

"2. As an article of manufacture, a cured sausage comprising a filling of sausage meat and a pre-printed cellulose casing bearing on its surface exposed characters in ink which have withstood the curing operations (smoking, cooking, or both) to which the filled casing was subjected.

"3. As an article of manufacture, a regenerated cellulose sausage-casing bearing on its surface exposed printed hardened opaque ink characters, said characters being proof in exposed condition against hot water, and smoke fumes, whereby the printed casing may be stuffed with sausage meat and the stuffed product may be cured without substantial injury to said characters."

The examiner in the Patent Office rejected these claims as functional, pointing out that they covered the concept of producing a cellulose casing containing printed matter, resistant to water, acid and heat, in such terms as to include all possible ways of producing it; and hence the patentee merely stated a desirable result in these claims without specifying the means of attaining it. The Board of Appeals in the Patent Office reversed the examiner and reinstated the claims; and the main argument of the plaintiff in support of the validity of the claims seems to be that in view of the Board's decision nothing more need be said.

We agree with the examiner. Stuffing regenerated cellulose sausage casings and then cooking and marking them were standard practices long before Freund; and he contributed nothing in the claims in suit except the idea of pre-printing the casing with a desirable ink without showing how such an ink could be obtained. The idea of marking sausage casings with the owner's name in order to identify the product to the public was not new, as is shown by the specification of the patent. Moreover, it was common practice before Freund to stuff preprinted cotton cloth containers with sausage and then subject them to cooking and smoking operations. It was also prior practice to print the maker's name on cellophane wrappers for sausage, as well as for other products; and as cellophane is the material from which sausage casings are made the practicability of printing it had been established.

In view of these circumstances we are forced to reach the conclusion, notwithstanding the favorable action of the Patent Office, that the conception of a preprinted sausage casing was not an inventive thought, and that the product or end result did not itself involve invention. It may be that invention resides in some of the claims in the description of the ink required to bring about the result; but these claims are not before us. To uphold the claims in suit would extend the patent to cover all preprinted casings bearing characters capable of withstanding the curing operations, and this, we think, would violate the rule that a patentee may not broaden a product claim by describing the product in terms of its use or function so as to include methods not described in the patent. Holland Furnace Co. v. Perkins Glue Co., 277 U.S. 245, 247, 48 S.Ct. 474, 72 L.Ed. 868; General Electric Co. v. Wabash Co., 304 U.S. 364, 370, 58 S.Ct. 899, 82 L.Ed. 1402; Demco, Inc. v. Doughnut Mach. Corp., 4 Cir., 62 F.2d 23, 25.

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