Perkins Glue Co. v. Standard Furniture Co., 107.

• Decision Date: 08 January 1923
• Docket Number: 107.
• Citation: 287 F. 109
• Parties: PERKINS GLUE CO. v. STANDARD FURNITURE CO. [1]
• Court: U.S. Court of Appeals — Second Circuit

287 F. 109

PERKINS GLUE CO. v. STANDARD FURNITURE CO. ^[1]

No. 107.

United States Court of Appeals, Second Circuit.

January 8, 1923

Appeal from the District Court of the United States for the Northern District of New York.

Pennie Davis, Marvin & Edmonds, of New York City (William H. Davis of New York City, and James A. Watson, of Washington, D.C of counsel), for appellant.

William Houston Kenyon, Gorham Crosby, and Ward, Crosby & Smith, all of New York City, for appellee.

Before ROGERS, HOUGH, and MANTON, Circuit Judges.

HOUGH Circuit Judge.

The history of litigation over this patent is so long and so fully reported that we shall for the most part express our opinion about the facts at bar by reference to other decisions. The patent is the Perkins reissue No. 13,436 (original No. 1,020,655, dated March 19, 1912; reissue dated July 2, 1912).

The validity and scope of the patent were elaborately considered by the appellate court in the Seventh Circuit in Solva, etc., Co. v. Perkins, etc., Co., 251 F. 64, 163 C.C.A. 314, modifying (D.C.) 223 F. 792. Claims 13, 28, 30, 31, and 38 were there in issue and are also the subject of litigation here. The subject-matter of the patent is described by its title, viz. 'glue and method of making the same,' and the language of the claims is sufficiently set forth in the opinion of Cooper, J., below in the present litigation. Perkins, etc., Co. v. Standard, etc., Co., 279 F. 458.

The patent has also been considered in one of the Michigan districts. Perkins, etc., Co. v. Hood, 279 F. 454; Same v. Holland, etc., Co., 279 F. 457. Since opinion was filed below the patent has been carefully gone over in Perkins, etc., Co. v. Gould, etc., Co., 280 F. 728, by Geiger, J.

This record contains no evidence offered by plaintiff casting any new light on Perkins' disclosure; that is we find in plaintiff's present evidence material explaining what all the courts have said and what they have differed about, and nothing else. The owners of the patent cannot in our opinion complain of the result reached by the Circuit Court of Appeals in the Solva Case, supra, namely, that the process disclosed by Perkins consisted of two parts or steps, and that each of the steps considered by itself was old, but the product was new and patentable. Nor can plaintiff complain if, without expressing agreement or disagreement with this result, we accept it for purposes of present decision.

Sanborn, District Judge, upon receipt of the mandate in the Solva Case, ruled that only those claims remained valid after the decision of the higher court 'which included the two steps (of the process) and only when their use results in Perkins' glue, together with such additional claims as count on such glue as a product of the two steps and no others. ' We are not advised that any appeal was ever taken from this interpretation of the ruling of the Circuit Court of Appeals. Subsequent to such ruling, however, this plaintiff disclaimed, inter alia, from claims 13 and 38 of the reissue, 'any process of making glue excepting where the starch or starchy product of carbohydrate subjected to the process is degenerated to the extent described in' the reissue. For this procedure, see 280 F. 729, 730.

The infringement here claimed is that defendant procures starch so degenerated somehow or anyhow (plaintiff cares not) as to be in a condition equivalent to starch treated by Perkins' first process, and then gives to that substance Perkins' second process, and so obtains Perkins' product. 'Degeneration,' as used throughout this evidence, means, according to plaintiff's expert witness 'a certain proportioning of resulting viscosity, cohesiveness, and adhesiveness. ' As matter of fact there is no denial of defendant's evidence that the starchy substance or carbohydrate (called viscamite), which it uses as the base for its alleged infringing glue, is a natural product; it has received no chemical treatment...