Automatic Paper Machinery Co. v. Marcalus Mfg. Co., 8589.

Citation147 F.2d 608
Decision Date08 February 1945
Docket NumberNo. 8589.,8589.
PartiesAUTOMATIC PAPER MACHINERY CO., Inc., v. MARCALUS MFG. CO., Inc., et al.
CourtUnited States Courts of Appeals. United States Court of Appeals (3rd Circuit)

Samuel E. Darby, Jr., of New York City (Wall, Haight, Carey & Hartpence, of Jersey

City, N. J., Donald J. Overocker, of New York City, and Edward J. O'Mara, of Jersey City, N. J., on the brief), for appellants.

George E. Middleton, of New York City (Young, Shanley & Foehl, of Newark, N. J., on the brief), for appellee.

Before BIGGS, GOODRICH, and McLAUGHLIN, Circuit Judges.

Writ of Certiorari Granted April 30, 1945. See 65 S.Ct. 1088.

BIGGS, Circuit Judge.

The plaintiff Automatic Paper Machinery Company, Inc., sued Nicholas Marcalus and Marcalus Manufacturing Company, Inc., alleging infringement of United States Patent No. 1,843,429, and sought an injunction and an accounting. On a motion for a summary judgment filed by the plaintiff pursuant to Rule 56 of the Rules of Civil Procedure, 28 U.S.C.A. following section 723c, the court below granted an injunction and ordered an accounting.1 The defendants have appealed.

The facts may be stated as follows. In 1924 Marcalus and Roswell H. Rausch organized Automatic. Rausch procured the capital for the enterprise and served as president of the corporation. Marcalus contributed his inventive and mechanical skill and became vice-president, treasurer and manager of production. Rausch and Marcalus owned the stock of the company. Automatic put a serrated metallic cutter edge on an outer lip of a box blank and sold it. The product had substantial utility.2 In 1930, when sheet metal was still plentiful, Marcalus, in what the plaintiff describes as "a moment of prescience", made the invention disclosed by the patent in suit. He filed an application in the Patent Office on December 4, 1930 and on the same day assigned it to Automatic. The application was allowed on July 8, 1931 precisely as Marcalus had filed it. On February 2, 1932 the patent issued to Automatic. The patent contains eleven claims, nine of which claim a machine or press for mounting "a cutter" upon a box blank. The two remaining claims, 10 and 11, appropriate a method for mounting "a nonmetallic cutter" on a box blank.

Marcalus states in his specification, "* * * I have provided a method and a machine by means of which a sheet of indurated paper and a box blank are fed to a press, in overlapping relationship, and a cutting element severed from the forward end of the sheet and secured along the edge of the box blank in what is substantially one operation." Claim 4, typical of the machine claims, is as follows: "In a press for mounting a cutter upon a box blank, the combination of a reciprocable ram, means for feeding a sheet of cutter material into overlapping relation to a box blank beneath the ram, means for severing a cutter from the sheet and securing it to the blank on each downward movement of the ram, and means operated by each upward movement of the ram for actuating the sheet feeding means." Claim 11, one of the two method claims, is as follows: "The method of mounting a nonmetallic cutter upon a box blank which comprises placing a sheet of cutter material and a box blank with their edges overlapping, applying glue, pressing the overlapping parts to join them, and while still under pressure severing the cutter material to leave a cutter with a serrated cutting edge glued to the blank with its cutting edge extending slightly beyond the blank."

Marcalus was employed by Automatic until December 1931 when, friction developing within the company, he withdrew and sold his stock for a substantial sum. Shortly thereafter, he organized Marcalus Company which engaged in manufacturing and selling a box with a metallic cutting edge for wax paper very similar to that manufactured and sold by his former employer, Automatic.3 Both Automatic and Marcalus Company continued to mount metal cutters on their respective box blanks until the war brought about a metal shortage. Automatic then turned to the patent sub judice and employed a machine similar to that described in it for affixing nonmetallic cutters to box blanks. Marcalus Company also fixed non-metallic cutters to boxes employing the accused machine or press for that purpose. The defendants assert their machine reads on and actually was designed from the disclosures in another patent. This is Inman No. 1,036,851, which expired on August 27, 1929, more than three months prior to the filing of the application for the patent under consideration. The accused machine is in fact a Chinese copy of Inman's. The defendants contend, therefore, that they have the right to make use of their machine without liability for infringement of the patent sub judice. The plaintiff asserts that the defendants' machine reads precisely on Marcalus No. 1,843,429, and since the defendants are estopped to deny the validity of the patent, they, therefore, must be found to have infringed it.

The court below found the disclosures of the Inman patent to be a complete anticipation of the Marcalus patent sub judice. Judge Smith stated 54 F. Supp. 107: "The subjects of the respective patents Inman and Marcalus are substantially identical and are adapted to, and intended for, the same use. The machine of the Inman patent differs from the machine of the Marcalus patent only in the arrangement of its structural elements. It is significant that the accused machine reads element for element on the claims of either patent, and without the substitution of equivalent expedients. It is obvious that under these facts the principal question presented for decision is one of law — May the defendants defeat the assignment and the estoppel inherent therein by their resort to the prior art? It is our opinion that they may not." Resting his conclusion upon the decision of the Supreme Court in Westinghouse Electric & Mfg. Co. v. Formica Insulation Co., 266 U. S. 342, 350, 45 S.Ct. 117, 69 L.Ed. 316, and other authorities, the court below then said, "The assignor Marcalus, * * * may not invoke the prior art for the ostensible purpose of limiting the claims, but for the real purpose of challenging their validity for lack of novelty. * * * The assignor will not be permitted to defeat the estoppel by indirection." Judge Smith went on to say that the Inman patent, "* * * not only negatives infringement but it invalidates the Marcalus patent and defeats the assignment.4 If we were to permit the defense of non-infringement to rest on the Inman patent, the defendants would achieve, by indirection, the destruction of the Marcalus patent and the defeat of its assignment, and this the defendants may not do."5 For both quotations see 54 F.Supp. at pages 107, 108.

The main issue of the case presents the question of estoppel by deed in patent property in classic simplicity and requires the application, if possible under the circumstances of the case at bar, of the principle enunciated by Mr. Chief Justice Taft in Westinghouse Electric & Mfg. Co. v. Formica Insulation Co., supra, 266 U.S. 342 at pages 350-351, 45 S.Ct. 117, 121, 69 L.Ed. 316. In the Formica case O'Conor had been issued a patent for a process for making composite electric insulation materials. He had been an employee of the plaintiff, Westinghouse, at the time he filed the application for the patent and assigned his rights in it to his employer. Claims 11 and 12 of the patent, as issued, were added by Westinghouse as assignee after O'Conor had left its employ. These claims were not allowed until four years after O'Conor had participated in making use of the accused process, and for three years thereafter, Westinghouse had made no objection to O'Conor continuing the manufacture. O'Conor's specification disclosed a two-step process: (1) Pressure and heat; (2) cooling and baking. Claims 11 and 12 of the patent, the claims in litigation, appropriated the one-step process well known to the prior art. All of the other claims of the patent appropriated the two-step process. Claim 6 of the application as originally filed, was broader than claims 11 and 12 of the patent as issued. This claim of the application was rejected by the Patent Office. Mr. Chief Justice Taft said in respect to this claim: "It was so absurdly broad and all inclusive as almost to indicate that it was made to be rejected. O'Conor's signature to such a claim under the circumstances of course does not estop him when in fact it was not allowed, and certainly should not be used to bolster up a broad construction of the eleventh and twelfth claims when * * * the state of the art must limit them." Mr. Chief Justice Taft made it plain that all of the disclosures of O'Conor's specification, save the two-step process, were known to the prior art. But he stated: "In view of the prior art * * * it is very clear that the eleventh and twelfth claims must be read to include as an essential element of the combination therein claimed, the two-step process. Without this, there was nothing new in them in the field to which they applied." The Supreme Court held that since claims 11 and 12, so limited, were for a two-step process, O'Conor did not infringe the claims since he used a one-step process.

In the Formica decision the Supreme Court ruled that the state of the art could not be employed to destroy an assigned patent but might be used to narrow its claims, conceding their validity; in other words, the prior art might be used to "limit" claims as was done with those of O'Conor's patent by reading the two-step process out of the specification and into the claims. "The distinction," said Mr. Chief Justice Taft, "may be a nice one but seems to be workable." He quoted from the opinion of Mr. Justice Lurton, written when he was a Circuit Judge, in Noonan v. Chester Park Athletic Club Co., 6 Cir., 99 F. 90, 91.6 As we apprehend the substance of the court's ruling in the N...

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