207 F. 547 (9th Cir. 1913), 2,195, H.J. Heinz Co. v. Cohn

Docket Nº:2,195.
Citation:207 F. 547
Party Name:H. J. HEINZ CO. v. COHN.
Case Date:August 04, 1913
Court:United States Courts of Appeals, Court of Appeals for the Ninth Circuit
 
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Page 547

207 F. 547 (9th Cir. 1913)

H. J. HEINZ CO.

v.

COHN.

No. 2,195.

United States Court of Appeals, Ninth Circuit.

August 4, 1913

Page 548

Thomas A. Banning, Samuel W. Banning, Thomas A. Banning, Jr., and Ephraim Banning, all of Chicago, Ill., for appellant.

Chas. E. Townsend, of San Francisco, Cal., for appellee.

Before GILBERT, Circuit Judge, and WOLVERTON and DIETRICH, District judges.

WOLVERTON, District Judge.

This is a suit instituted by Max M. Cohn against H. J. Heinz Company, the user, for an infringement of certain letters patent of which Cohn is the owner. The patents, two in number, consist of an original and a divisional patent upon certain alleged inventions of Cohn as new and useful improvements in envelopes. The original application was filed November 8, 1904, the divisional January 17, 1905, and the patents issued, respectively, November 13 and July 3, 1906. Thus it will be seen that the original patent was issued later than the divisional, although necessarily applied for first. The patents are numbered, respectively, 835,850 and 824,908. The claim under the first is:

'As a new article of manufacture, an envelope with an unpunctured face of relatively opaque stock, said envelope face having a portion to which a preparation has been applied to render such portion transparent, and a colored or tinted border surrounding said transparent portion for the purpose of obliterating or concealing the effects of the tendency of the said preparation to creep into the surrounding opaque stock.'

The claim under the second is:

'(1) An advertising device comprising an envelope having a window through which the addressee's name on an inclosure may show through; said window being in outline characteristic of some symbol of trade, a tinted or colored border surrounding and giving definition to said window, and permanent advertising matter forming no part of the address, appearing on said tinted border and related to and in juxtaposition with the outline of said window.

'(2) As an advertising device, an envelope having a generally opaque face except for a transparent window portion through which an addressee's name on an inclosure may show through; said window being in general outline characteristic of a symbol of trade, and permanent printed matter on the face

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of the envelope related to and in juxtaposition with the outline of the window and co-operating with said outline to indicate a particular brand of goods.'

The invention consists of a one-piece unpunctured envelope, of opaque or semitransparent stock, to a portion of which is applied paraffin oil and resin or grease, a preparation which renders the portion to which it is applied transparent, so that the address of an inclosure may be read through the envelope. About the transparency, which is styled a window, is printed a border of opaque coloring matter for the purpose of covering the irregular and ragged appearance caused by the tendency of the oil or grease preparation to creep or run beyond the margin of the stamp or die imprinting the window and to give definition to the window. The coloring matter, as described by the inventor, may be applied solid on the face of the envelope around the window, or it may take the form of graduated tints or shading.

The device covered by the second patent is in all essentials the same as that of the first, except that the window with its border is representative of some symbol of trade and in relation to and in juxtaposition with printed matter; the whole calculated and designed as a device for advertising purposes.

The defendant is using an envelope manufactured by the Transo Paper Company, which is a one-piece unpunctured envelope, manufactured of opaque or semitransparent stock, with an opening or window produced by an application of an oil or grease preparation, through which an address may be read, which window has a border of opaque colored matter. The border, not the window, represents in outer configuration and design a cucumber, or pickle, and there is printed on the lower flap of the envelope, on the inside, the word 'Heinz,' so that it may be read through the window when there is no inclosure in the envelope.

The defenses interposed are that the alleged inventions do not involve invention, nor anything beyond the exercise of ordinary mechanical skill and knowledge, that neither of them was new or novel at the time of the application and issuance of plaintiff's patents, and that each has been anticipated by prior patents; and, as to the second patent, infringement is denied.

Among other things, it is contended that Julius Regenstein, who is president of the Transo Paper Company, discovered or invented the style of envelope upon which plaintiff acquired his first patent prior to the date of its invention by the plaintiff (if it be that such envelope is a subject of invention at all), and this question we will dispose of first.

The original Cohn patent will be referred to as the first, and the divisional as the second patent. Preliminarily the two cannot be considered in any way as one anticipating the other. The latter, being divisional relative to the former, relates back to the date of the original application. So that the first patent does not, with respect to the divisional or second patent, belong to the prior art. Brill v. North Jersey St. Ry. Co. (C.C.) 124 F. 778, 781; Suffolk Company v. Hayden, 3 Wall. 315, 18 L.Ed. 76; McMillan et al. v. Rees et al. (C.C.) 1 Fed. 722; Ide v. Trorlicht, Duncker & Renard Carpet Co.,

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115 F. 137, 53 C.C.A. 341; Cleveland Foundry Co. v. Detroit Vapor Stove Co., 131 F. 853, 858, 68 C.C.A. 233.

It will be recalled that Cohn applied for the first patent November 8, 1904. During the same month he manufactured and furnished to A. Zellerbach & Sons 10,000 envelopes in pursuance of his alleged invention. Cohn puts the date of his discovery prior to October 15, 1903, and fixes it by reference to the time of his severing his connection with the Illinois-Pacific Glass Company, which was on that date. In the progress of his invention Cohn tried a great many different kinds of paper and many kinds of preparations and was not satisfied with his results; the principal difficulty encountered being the tendency of the oil preparation to creep or spread beyond the limits of the impression. Finally he struck upon the idea of printing a border about the window to obscure the irregular or ragged margin. His first experiments resulted in developing a border produced by a zincograph, having a cloud effect; the coloring growing gradually lighter as it approached the outer margin of the border. The border, however, gave a distinct and regular outline to the window. The first ink used did not seem to answer the purpose, and it was only after many experiments that a suitable kind was found. Shortly after Cohn took up his duties with the Zellerbach Company, within a week or two, he began having his printing done by F. H. Abbott & Co.; they being commercial printers. It was then that he began to apply the oil preparation by means of a printing press. Prior to that he had applied the preparation with a brush, or a wood block, or a piece of rubber, much the same as rubber stamps are used. Up to the date of October 15, 1903, he had conceived the idea of an unpunctured envelope with a window addressing space, had succeeded in making an opaque sheet transparent by the use of an oily substance, had discovered and applied a printed border about the window, and had disclosed his invention to one B. T. Bean. Cohn, however, states that he did not bring his conception to a state of perfection until about August or September, 1904. It was shortly after that that he manufactured 10,000 envelopes for the Zellerbach Company. In the summer of 1904 Cohn conceived the idea of utilizing the envelope as an advertising medium by printing the border about the window to represent some article of trade, such as the outline of a cigar, a pickle or cucumber, and the like, and printing in connection and juxtaposition therewith upon the envelope the firm or trade-name of the manufacturer or dealer in such articles. Some time in October, 1904, he took samples of his invention to his attorney, which resulted in his application for patents. Shortly after consulting with his attorney, he had a well-known advertising firm make many specimens of his designs, one of which was produced and offered in evidence, representing by the shape of the window in connection with the border a cigar, with the printed matter in conjunction therewith upon the envelope, namely, 'Perfecto Cigar'; the word 'Perfecto' being printed above the cigar design and 'Cigar' below. There are also stamped upon this envelope designs representing matches. Two other specimen envelopes of the advertising species are also referred to by the witness; one having a cigar-shaped window with the word 'Cremo' printed above and

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'Cigar' below, and the other the outline of the window in the shape of a pickle, with the word 'Heinz' printed above and '57 Varieties' below.

Cohn's testimony is corroborated by several witnesses. Samuel E. Selling testifies that he was in the employ of the Illinois-Pacific Glass Company for 23 years; that Cohn showed him his idea of an envelope to take the place of one with a piece of paper pasted thereon forming the window, which was shortly before Cohn left the employ of the Illinois-Pacific Glass Company; and that Cohn had several samples of an entire envelope. Selling also saw samples with the advertising idea. He recognized a sample marked 'R,' this being a sample of an envelope constructed of transparent stock, the window being formed by rendering the remaining portion of the envelope opaque...

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