E. N. Rowell Co. v. William Koehl Co.
| Decision Date | 02 February 1917 |
| Docket Number | 8. |
| Citation | 240 F. 953 |
| Parties | E. N. ROWELL CO. v. WILLIAM KOEHL CO. |
| Court | U.S. Court of Appeals — Second Circuit |
Appeal from the District Court of the United States for the Western District of New York.
Hans v Briesen, of New York City, for appellant.
Frank Keiper, of Washington, D.C. (Melville Church, of Washington D.C., of counsel), for appellee.
For opinion below, see 216 F. 780.
The E N. Rowell Company is a corporation organized and existing under the laws of the state of New York and will be referred to as complainant. It is engaged in the manufacture of paper pill boxes at Batavia, in the county of Genesee, in the state of New York. The William Koehl Company is a corporation organized and existing under the laws of the state of New York and will be referred to as defendant. It is engaged in the manufacture of paper box machines at Jamestown, in the county of Chautauqua, and state of New York.
The suit is brought for an alleged infringement of patent No. 844,190, issued by the United States Patent Office to Edward N. Rowell and James Little as inventors, and to complainant as assignee, on February 12, 1907. The defendant maintains that the patent is invalid, and, if valid, that it does not infringe. The defendant avers that the material and essential features of complainant's machine were fully described and set forth in patents of the prior art. The defendant has cited 161 patents; and it is also averred that the alleged improvements of the patent in suit were, long before the alleged invention, known to and used by certain persons, whose names and places of residence are set forth, to the number of over 100. The defendant's alleged infringing machine is covered by patent No. 1,098,314.
The District Judge has held the patent valid, but not infringed. In his opinion he states:
Before WARD, ROGERS, and HOUGH, Circuit Judges.
ROGERS Circuit Judge (after stating the facts as above).
The patent in suit is for a machine the particular object of which is to manufacture automatically the top and bottom halves of the ordinary small pill boxes which are used in the drug stores. The patent does not use the expression 'pill boxes,' yet it is understood that it is intended for the manufacture of that type of boxes. The specification of the patent covers 12 printed pages, and attached to these are 11 pages of drawings, and the number of the claims is 62.
The Clark & Illy patent, being patent No. 1,098,314, is the patent of the defendant, and was issued May 26, 1914. The specification of that patent covers 19 printed pages, and attached to these are 11 pages of drawings, and the claims number 92. The specification states that the object of the invention is to produce a machine for making round pill boxes.
The machinery of the patents is not simple, and the language of the patents makes difficult reading. The boxes which are made by the machine of the patent in suit are known to the trade as French edge pill boxes. They are made up by joining together three essential parts. The body of the box is composed of a ring or cylinder, against one edge of which a disc is placed, and the disc and the ring are then united by a strip of pasted paper, which overlaps the projecting edge of the disc all around the box, being also pasted up against the sides of the ring. As the ring is of smaller diameter than the disc, the gummed paper uniting the strip has to be distorted to a considerable extent in order to be bent around the flange formed by the disc. We are told that in dealing with these small boxes and the delicate paper uniting strip it was found to be comparatively easy to handle them with the fingers of the human hand, but that it was for many years considered quite impossible to substitute any machinery which would bring about a union of ring, disc, and paper by any automatic machine with the perfection and rapidity that was essential to convert the box from a handmade to a machine-made product.
It appears that the top and bottom of the pill box are exactly alike, with the exception that the cap which is used to form the bottom of the box is provided with an additional internal pasteboard ring; and it is pointed out that, if the supplemental ring is driven into the cap, the cap becomes a bottom. If the supplemental ring is omitted, the cap remains a top. The tops and bottoms are identical in size, shape, and construction, and they do not become pill boxes until placed in proper juxtaposition. The parts are so small and delicate that they cannot be readily handled by ordinary machinery.
While the patents of both complainant and defendant are lengthy, and the machines of both are complicated, the real question at issue has to do with a small, though important, part of the two machines. The subject of this controversy relates to the act, which these machines perform, of fastening together by means of gummed paper a cylindrical ring of pasteboard or other material and a cylindrical disc, likewise of pasteboard, of a diameter somewhat greater than that of the ring. The result is the pill box which these machines are intended to produce. We thus have three essential things-- the ring, the disc, and the paper-- to be brought together and united.
The machine of the patent in suit brings these three things together by means of manually affixing the cylindrical pasteboard ring to a mandrel, letting the mandrel, in pursuance of the preordained functioning of the machine, assume a position in front of a disc holder, thereby bringing the disc and the ring in proper juxtaposition. While the mandrel has been assuming, by revolution of the wheel to which it is affixed, the position aforesaid, a flat piece of metal, called a table, has moved to one side of its appointed path and picked up or picked off a piece of gummed paper of a length sufficient to surround the circumference of disc and ring or either. The mandrel, with the ring upon it and in juxtaposition to the disc, being in position, the piece of metal called the table travels underneath these two pieces of pasteboard and in frictional contact therewith. There is a groove which fits the projecting disc, and as disc and ring revolve under the action of the moving table the gummed paper is wound upon the same, pressed against it, and ironed. The table having thus moved across and under the position of the mandrel and ring and disc, the machine moves again and by revolution of the wheel on which the mandrel is mounted removes mandrel and all from its position over the table path, and (in the absence of any mandrel) the table moves back and picks up or cuts off another piece of gummed paper. By the time it has done that another mandrel has gotten into position by the revolution of the wheel on which the two mandrels (180 degrees apart) are mounted, i.e., one-half a revolution; and so the operation goes on as long as there is an operator to feed the uppermost mandrel head, and there are any discs in the disc reservoir, and power is applied to the machine.
The specification of the patent in suit states that:
The claims involved are claims 1, 3, and 5. Claim 1 reads as follows:
'The combination, with the movable table or support, of a mandrel movable toward and from said table or support, substantially as set forth.'
Claim 3 reads as follows:
'The combination, with the reciprocating table, of mandrels adapted to bear successively against said table, and a rotary frame provided with bearings supporting said mandrel, substantially as set forth.'
Claim 5 reads as follows:
'The combination, with the movable table, of a rotary frame, shafts journaled in said frame and provided with mandrels adapted to bear against said table, substantially as set forth.'
Claim 1 is general in its nature, and lays stress upon the use of a mandrel in combination with a movable table or support. Claim 3 emphasizes the use of a reciprocal table in combination with the mandrels, which are to bear successively against the table. Claim 5 differs from claim 3 in that it describes more specifically the method in or by which the mandrels are adapted to bear successively against the table. That is accomplished by means of shafts journaled in the rotary frame.
The complainant claims that the patent in suit is a pioneer patent, and represents the first known practical machine capable of turning out, as a regular machine product, with the regularity and speed essential to a machine product, of the paper caps from which pill boxes are made. It asserts that, prior to the advent of the machine shown in its patent the art had been striving for 30 years at least, and with great industry and assiduity, to devise a machine for converting the hand-made pill boxes into a machine product. It insists that all prior machines disclosed in the record were merely mechanical aids to hand work, and that not one of them reached that phase which contemplated superseding the work of human hands by a machine product; and the claim is that, when complainant's machine was...
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