Holland Furniture Co v. Perkins Glue Co

• Decision Date: 14 May 1928
• Docket Number: No. 285,285
• Citation: 72 L.Ed. 868,277 U.S. 245,48 S.Ct. 474
• Parties: HOLLAND FURNITURE CO. v. PERKINS GLUE CO
• Court: U.S. Supreme Court

277 U.S. 245

48 S.Ct. 474

72 L.Ed. 868

HOLLAND FURNITURE CO.

v PERKINS GLUE CO.

No. 285.

Argued March 14, 15, 1928.

Decided May 14, 1928.

Messrs. Charles E. Hughes and William H. Davis, both of New York City, for petitioner.

Mr. Gorham Crosby, of New York City, for respondent.

Mr. Justice STONE delivered the opinion of the Court.

Respondent brought this suit in the District Court for Western Michigan, to enjoin infringement of the Perkins reissued patent, No. 13,436. So much of the judgment for the defendant, petitioner here, as held the product claims of the patent not infringed by respondent's product, was reversed by the Court of Appeals for the Sixth Circuit. Perkins Glue Co. v. Holland Furniture Co., 18 F.(2d) 387. The Court of Appeals for the Seventh Circuit, Perkins Glue Co. v. Gould Manufacturing Co., 292 F. 596, and the Court of Appeals for the Second Circuit, Perkins Glue Co. v. Standard Furniture Co., 287 F. 109, had previously held the patent not infringed by the same product.¹ This court granted certiorari. 275 U. S. 512, 48 S. Ct. 28, 72 L. Ed. —.

The patent is entitled 'A Patent for Starch Glue and a Method of Making It.' Perkins was the first to make successfully a starch glue suitable for wood veneering and similar uses. Glue made from animal substances, known as animal glue, has long been in common use as an adhesive, and is especially adapted to use in wood veneering, in which thin sheets or layers of wood are fastened together by the use of an adhesive bonding material. The characteristic qualities of animal glue, making it peculiarly suitable for that use, are a low absorptiveness of water and a consequent high degree of fluidity, facilitating its application by mechanical means, high elasticity, and great tensile strength. A high water content, characteristic of other adhesive preparations, delays drying, warps the wood, and when dry leaves too little bonding material to secure the requisite strength. In practice, animal glue is made suitably fluid for use in wood veneering by the addition of a critically small amount of water, three parts by weight to one of glue.

Long before Perkins' experiments, adhesive paste or mucilage made from starch was well known. The Gerard patent (1874, Belgian, No. 34,869) and the Dornemann patent (1893, French, No. 232,781) described a process of producing an adhesive or glue by dissolving starch in a solution of caustic alkali. The suitablity of starch as a glue base in this and other processes depends upon its water absorptive quality, which varies with the starch of different plants, and under varying conditions with the starch of the same plant. Because of their high water absorption, glues produced from starch, before Perkins, were too viscous, and hence required too large an admixture of water for use successfully as a wood-veneering glue. The controlling difficulty to be overcome in the development of a starch glue suitable for veneering was what may be called the normally large water absorptive quality of starch, corresponding to the viscosity of the resultant glue, a reduction of the one effecting a reduction in the other.

It has long been known that the viscosity or the water absorptive quality of starches may be reduced by chemical treatment known as degeneration, in which changes in the arrangement of the atoms in the starch molecules are effected by use of a catalytic agent. In 1906 Gerson & Sachse (German, No. 167275) patented a process for the preparation of a starch base for glue manufacture by degenerating starch by the use of oxidizing agents in the presence of an alkali. But the resultant glue from this and other processes was not suitable for use in the wood-working trades. To make it sufficiently fluid for convenient use required too large an admixture of water, four parts or more to one of glue, so that the wood was warped, and, when dried, the glue was not sufficiently tenacious to be used successfully as a substitute in that manufacture for animal glue.

The Perkins patent described a process for making glue from starch and a resultant product 'as good as animal glue,' 'which will have the great practical advantage that it may be practically used for the same purposes as the best animal glue.' The process consisted of two steps. The basic material was a suitable raw starch, preferably starch made from the cassava root, and the first step was concerned with its conversion or degeneration so as to make a 'glue base,' with lower water absorptivity than ordinary untreated starch. This was to be accomplished by combining the basic raw material with oxidizing agents and subjecting them to heat. The method was that described in the Gerson & Sachse patent, and was not new. The characteristic feature of this first step, as described by Perkins, was not the manner of degeneration but its degree. The degeneration of the raw cassava starch was to be carried to a point just short of its conversion into dextrine, a soluble starch, which, because of that property, is of little value in glue manufacture. The patent in its reissued form stated with precision the particular degree to which the water absorptive properties of the starch might be reduced in the preparation of a suitable glue base and described with particularity tests (the '9 to 1 boil up' test and the 170 test) for ascertaining when that stage of degeneration had been reached.

The second step in the process consisted in the treatment of the glue base, as prepared by the first step, by the addition of three parts or less of water by weight to one of the glue base and a specified percentage of cellulose solvent such as caustic potash. This process was described by the Gerard and Dornemann patents and was not new. The fundamental ideas of the process patent might be expressed in simple terms as follows: Glue made by dissolving ordinary starch in an alkaline solution of three parts of water (the quantity with which the wood-working industry is accustomed) is too thick. Glue made from overdegenerated starch is too weak. Between the extremes there is a range of degeneration within which the starch base, when dissolved in caustic potash, will produce glue of ample fluidity without loss of tensile strength or other qualities characteristic of animal glue.

The product claims, of which more will be said presently, was for the resultant glue, in substance for a starch glue having substantially the properties of animal glue.

The patent has thirty-eight claims, divisible into groups. One group covers the process of producing the degenerated starch glue base, the first step process, already described. One group embraces the glue base product produced by the first step process. Another group includes the process of dissolving the starch base, by the use of alkaline solvents, the second process step; another, the combination of the two process steps; and, finally, the group with which we are now concerned is based upon the ultimate product, the glue itself. Three of the claims embraced in this ultimate product group are the only ones now in suit, 28, 30 and 31. They are as follows:

'28. A glue comprising cassava carbohydrate rendered semifluid by digestion and having substantially the properties of animal glue.'

'30. A wood and fiber glue formed of a starchy carbohydrate or its equivalent by union therewith of about 3 parts or less by weight of water and alkali metal hydroxid.

'31. A wood and fiber glue containing amylaceous material as a base dissolved without acid in about three parts of water or less, and being viscous, semifluid and unjellified.'

Of these the broadest in terms is No. 28, but it appears that a glue thus composed will not have 'substantially the properties of animal glue' unless containing only the small amount of water specified in claim 30. We may take it also that an article which is 'wood and fiber glue' as described in the specifications will be 'viscous, semifluid, and unjellified' as described in claim 31, and will also have substantially the properties of animal glue as specified in claim 28, so that in point of substance the product claims in suit are for a starch glue which, combined with about three parts or less by weight of water, will have substantially the same properties as animal glue.

With respect to the other or nonproduct groups of claims, respondent, in consequence of earlier litigation, has filed a disclaimer. Brief reference must be made to both the litigation and the disclaimer. The respondent brought an infringement suit in the Northern District of Illinois against the Solva Company, asserting an infringement of claims in each of the five groups by the product of that company, comprising in part at least a raw cassava starch glue base which, for present purposes, may be taken as identical with the product of the petitioner. Upon appeal to the Seventh Circuit Court of Appeals, Solva Waterproof Glue Co. v. Perkins Glue Co., 251 F. 64, that court rendered an opinion, in some respects obscure, which has given rise to widely differing views as to its effect. In considering the present question, we may assume that the court below was right in saying of that opinion:

'It held that the claims to the first step of the process and to the product resultant therefrom-the glue base-were anticipated by Gerson & Sachse, and hence that the glue base, as a product and as the foundation of the second step in Perkins' process, was an old and unpatentable product. It found that Perkins' glue had the novelty and merit claimed for it. It sustained the claims to the compound twostep process, and, to some extent, at least, the claims to the ultimate product, and did not sustain the claims to the second-step process. No attention was paid to any distinctions in the different kinds of solva base that were involved. Its treatment of the process claims to the second-step process is open to the interpretation-and we think it the right one-that the court considered...