American Tobacco Co. v. Streat

• Decision Date: 03 November 1897
• Docket Number: 210.
• Citation: 83 F. 700
• Parties: AMERICAN TOBACCO CO. v. STREAT.
• Court: U.S. Court of Appeals — Fourth Circuit

83 F. 700

AMERICAN TOBACCO CO. v. STREAT.

No. 210.

United States Court of Appeals, Fourth Circuit.

November 3, 1897

Charles S. Stringfellow, M. B. Philipp, and W. W. Fuller, for appellant.

Rutherfoord & Page, for appellee.

Before GOFF and SIMONTON, Circuit Judges, and BRAWLEY, District Judge.

GOFF Circuit Judge.

On the 25th of December, 1883, the United States granted to Thomas Streat letters patent No. 290,811, for improvements in 'cigar makers' implements.' On the 13th of June 1893, the United States granted letters patent No. 499,488 to Philip Whitlock, assignor to the American Tobacco Company for 'binder clamp for cigar bunching machines. ' The bill of complaint for this cause was filed by the said Thomas Streat on the 17th day of April, 1893, in which an injunction was prayed for to restrain the American Tobacco Company from making, selling, or using a certain device and machine, which it was claimed was made in imitation of, and embodied all of the essential elements of, the machine described in the letters patent so issued to Streat. An accounting, with the relief usual under such circumstances, was prayed for. The answer of the defendant was filed on the first Monday of August, 1893, to which the complainant, on the first Monday of October following filed his replication. The testimony was duly taken, and the case finally heard on the 17th of December, 1896, when a decree was entered by the court below adjudging that the letters patent issued to Thomas Streat were valid, and that the defendant infringed the same. The defense relied upon by the defendant below was lack of patentable novelty in the invention described in the complainant's patent, in view of the state of the art; anticipation by prior patents; and noninfringement. During the taking of the defendant's testimony it was disclosed that the machine used by it, and which it was claimed was an infringement of the complainant's patent, was covered by and described in the said letters patent No. 499,488, which were issued after the institution of this suit, to wit, June 13, 1893, although the application for said patent was filed in the patent office on the 31st of December, 1892, before the bill was filed in this cause. From the said decree of December 17, 1896, the defendant appealed.

In the specification forming part of the letters patent No. 290,811, it was set forth that the invention consisted of certain mechanism whereby means were provided for assisting in obtaining results desired in the application of the wrapper to cigarettes. The patentee stated the difficulty which his invention was intended to overcome was, in substance, as follows: In the manufacture of cigarettes having a tobacco wrapper, difficulties are experienced in obtaining a smoothly rolled cigarette, in which the wrapper is free from wrinkles, and a cigarette of sufficient density to prevent its mashing or breaking when packed. This was due to the fact that the wrapper, whether of paper or tobacco, was free to yield to any inaccuracy in the operation of rolling, or to any irregularity in the pressure applied when the cigarette is being rolled, causing that portion of the paper not held by the hands to twist, wrinkle, or pucker, which naturally detracted from the marketable value of the cigarette. He also stated in said specification that the imperfect rolling was frequently due to the unequal distribution of the filler, the quantity thereof being greater in one part of the cigarette than another, which gave rise to the unequal pressure during the operation of rolling, and caused the wrapper to wind unevenly, and thereby wrinkle. When tobacco was employed for wrapping, difficulties were greater, because it was damp and elastic, and therefore liable to stretch at the slightest inequality of pressure or strain. It was claimed that the invention would remedy such difficulties by providing a method by which one edge of the wrapper would be held tight and smooth, while the other edge was turned over the filler and rolled around it, thereby preventing such wrapper from wrinkling. To overcome these difficulties, the patentee provided in his patent for the use of a clamp to hold one edge of the wrapper smooth while the other edge was being rolled about the tobacco, and an apron, usually made from a strip of strong paper, upon which the wrapper rested, and which was used for the purpose of applying the pressure of the fingers to the wrapper and tobacco in the rolling process, whereby the pressure was more evenly distributed over the surface of the cigarette, and the wrapper was prevented from yielding unduly because of the unequal strength. The apron so provided for was glued and rigidly held to one end of the table, and was free at the other end. The clamp consisted of a pivoted plate, spring pressed upward, which was connected by rod to a treadle, by which it could be depressed and caused to grasp one edge of the wrapper between it and the fastened end of the apron. The clamp was operated to secure the wrapper by the foot of the operator acting upon the treadle, thereby leaving both of his hands free for use in the rolling of the cigarette. These facts are fully illustrated by drawings made part of the patent and referred to by figures and letters.

The patentee, after having described his invention, set forth his claims as follows:

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First. In a cigar makers' implement, a clamp, a rolling apron, a stationary support or table, upon which said clamp and apron, together with the wrapper and filler, are supported, and to which one edge of the apron is secured, the opposite edge lying free thereon; a means for depressing the clamp and holding the same in contact with the fixed edge of said apron, when said elements are combined for co-operation, as described for the purpose specified. Second. In a cigar makers' implement, a clamp, a rolling apron, A, a flat support or table for said clamp and apron, means for depressing the clamp upon one end of the apron, and holding it in contact therewith while the cigarette is being rolled in the free end of said apron A, and means for automatically raising the clamp out of contact with the apron; and parts being combined and constructed for co-operation, substantially as described for the purpose specified. Third. The combination of the table, T, rolling apron, A, pivoted clamp, C, and treadle, T', are constructed to operate substantially as and for the purpose shown and described. Fourth. The combination of the table, T, rolling apron, A, pivoted clamp, C, springs, S, and treadle, T', all constructed to operate substantially as shown, and for the purpose described.

We agree with the court below that the patent issued to Streat was good and valid in law. The fact that each and every element of the combination claimed by Streat was at the date of his patent old and well known was not sufficient to deprive the invention claimed by him of novelty, for most of the inventions of the present day consist of the utilization and adaptation of mechanical appliances that are themselves old and well known. The clamp and the rolling apron had both been in use before the date of the patent to Streat, and were,...