Friend v. Burnham & Morrill Co.

• Decision Date: 19 January 1932
• Docket Number: No. 2508.,2508.
• Citation: 55 F.2d 150
• Parties: FRIEND et al. v. BURNHAM & MORRILL CO.
• Court: U.S. Court of Appeals — First Circuit

55 F.2d 150 (1932)

FRIEND et al. v. BURNHAM & MORRILL CO.

No. 2508.

Circuit Court of Appeals, First Circuit.

January 19, 1932.

Francis J. V. Dakin, of Boston, Mass., for appellants.

Carl C. Jones (of Bradley, Linnell & Jones), of Portland, Me., for appellee.

Before BINGHAM and WILSON, Circuit Judges, and MORRIS, District Judge.

WILSON, Circuit Judge.

This is an appeal from a decree of the District Court of Maine dismissing on motion a bill in equity praying for an injunction and accounting, and based on an alleged infringement of a patent covering a process for canning baked beans.

In the description of the process contained in the application, the patentee states that it consists of three steps: "First, the baking of the beans; second, the canning of the baked beans while hot; and, third, the sterilizing of the cans." He also in the application more particularly described the third step as consisting of subjecting the canned beans to a temperature of from 220 degrees to 240 degrees F. for an hour or more, and the cooling in water of faucet temperature.

The only element in their process of canning baked beans that the plaintiffs, who are assignees of the patent, claim is novel, is the second step, viz. that of transferring them into cans after being baked, while "still hot," or at a temperature of approximately 180 degrees F.

The eight claims filed and allowed are not essentially different, except that claims 4, 7, and 8 add to the third step the cooling after sterilization. Claims 2 and 8 are typical, and are as follows:

"2. The method of preparing and canning beans consisting in baking the beans, together with pork, under a high temperature until they are thoroughly baked, said pork and beans being in the approximate proportions of thirty-five pounds of pork to one hundred pounds of beans, then transferring said pork and beans into suitable cans while maintaining the temperature of said pork and beans at approximately one hundred and eighty degrees Fahrenheit, sealing the cans immediately and then subjecting the sealed cans to steam pressure of a temperature from two hundred and twelve to two hundred and forty degrees Fahrenheit, to sterilize the same."

"8. The method of preparing and canning baked beans consisting in baking the beans under a high temperature until thoroughly baked, then canning the beans while at a temperature of approximately one hundred and eighty degrees Fahrenheit, the cans being sealed immediately on being filled, then sterilizing the same by subjection to a temperature ranging from approximately two hundred and forty degrees Fahrenheit, and, finally, immediately at the conclusion of sterilizing operation, immersing the said cans in cold water to cool them rapidly."

The District Court, while recognizing that such a bill should not be dismissed on motion, unless it clearly appears to be without equity, held that the patent issued to the plaintiffs in this case, on its face and upon facts of common knowledge, of which the courts may take judicial notice, described no new invention, or, in other words, that the patentee in his specifications and claim had described nothing new in the art of canning cooked foods, that all he claimed as new was already well known and practiced by every housewife and by every person engaged in the canning business.

While many cases may be cited where the courts have refused to dismiss on motion a bill for infringement, since the courts, as a general rule, give the patentee the benefit of any doubt and hear the evidence on both sides, yet whenever it is clear that no invention is described in the patent, or from common knowledge the several steps in the process described in the application and claims are old and their combination produces no new result, the courts have not hesitated to dismiss. Richards v. Chase Elevator Co., 158 U. S. 299, 15 S. Ct. 831, 39 L. Ed. 991; American Fibre-Chamois Co. v. Buckskin-Fibre Co. et al. (C. C. A.) 72 F. 508; Lange v. McGuin (C. C. A.) 177 F. 219; Luten v. Kansas City Bridge Co. (D. C.) 272 F. 533; American Safety Device Co. v. Liebel-Binney Const. Co. (C. C. A.) 243 F. 575; Victor Talking Machine Co. v. Hawthorne & Sheble Mfg. Co. (C. C.) 168 F. 554; Hogan v. Westmoreland Specialty Co. (C. C. A.) 154 F. 66; Wills v. Scranton Cold Storage & Warehouse Co. (C. C. A.) 153 F. 181, 184; Chinnock v. Paterson, P. & S. Tel. Co. (C. C. A.) 112 F. 531, 533.

In Strom Mfg. Co. v. Weir Frog Co. (C. C. A.) 83 F. 170, 172, the court said: "In support of the appeal it is first contended that the court erred in disposing of the case made by the bill on demurrer. It is claimed that this course was too summary, and that the justice of the case could have been better subserved by awaiting the proof and obtaining the aid of those conversant with the art in elucidation of the matter of the invention. But it is no longer open to question that where the case as presented is clear, and the court finds no difficulty in understanding the character and scope of the invention from the patent itself when tested by the common knowledge pertaining to it, and thereupon discerns that the patent is not sustainable, the proper and expedient course is to dispose of the case on demurrer, and thus put an end to useless litigation."

In determining whether a patent covers a process, the conception of which involves invention, the court is not required to shut its eyes to matters of common knowledge or of things in common use. King v. Gallun, 109 U. S. 99, 101, 3 S. Ct. 85, 27 L. Ed. 870. The court may take into consideration common or general knowledge tending to show that the device or process described in the patent is old or lacking in invention, and the court may refresh and strengthen its recollection of what facts are of common and general knowledge at the time of the application for the patent by reference to any printed source of information which is known to the court to be reliable and published prior to the application for the patent. American Fibre-Chamois Co. v. Buckskin-Fibre Co., supra, page 511 of 72 F.

The District Court in this case was warranted, therefore, in taking judicial notice of any common or general knowledge relating to canning cooked foods, and to refresh his recollection by reference to standard publications. Brown v. Piper, 91 U. S. 37, 42, 23 L. Ed. 200; Luten v. Allen et al. (D. C.) 254 F. 587; King v. Gallun, supra; American Fibre-Chamois Co. v. Buckskin-Fibre Co., supra; Clark Thread Co. v. Willimantic Linen Co., 140 U. S. 481, 11 S. Ct. 846, 35 L. Ed. 521; Ferro Concrete Const. Co. v. Concrete Steel Co. (C. C. A.) 206 F. 666; Wright v. Wisconsin Lime & Cement Co. (C. C. A.) 239 F. 534; 15 R. C. L. p. 1061.

The District Court found that the method of baking the beans described in the patent was the method substantially used in every New England household, and that is conceded by the plaintiffs. The third step in the process described in the patent is also conceded to be a necessary part of the process of canning cooked foods and practiced in every canning establishment as well as in the household, viz., that of processing or sterilizing the cooked food after being transferred into the cans. The plaintiffs apparently do not rely on the fourth step, viz., the cooling after processing, since it is also well known and practiced in canning corn and other cooked foods.

It is the second step on which the plaintiffs rely, though no claim is made therefor in the application, except in combination with the other well known steps in the process, but which the plaintiffs now say is necessary to produce the results they have attained in canning baked beans, viz., the transferring of the baked beans from the crocks in which they are baked into cans while "still hot," or at a temperature of approximately 180 degrees F.

The District Court, however, held, and correctly, that there was nothing new in the canning art in transferring cooked food into jars or cans while hot, it being necessary both to insure an "exhaust," as it is termed, or vacuum, and to prevent the introduction of injurious bacteria from the air, and to enable the sterilizing process to operate more effectively. The housewife does it with her cooked preserves and food, either by transferring directly from the kettle on the stove in which they were cooked, or at least immediately after the cooking is finished, to her jars, which usually are also heated. The commercial canner of corn and other cooked vegetables does it for the same reason.

The only question involved here is whether the plaintiffs invented anything new when they discovered that they got the best results in canning baked beans when they kept them at a temperature of 200 degrees to 212 degrees F. while being transferred to the cans, and that, if the temperature of the baked beans was not approximately 180 degrees F. when in the cans ready for processing, it might result in "sours" or in "swells" or "springers," as cans which bulge at the ends are termed in trade.

In support of the specification in his application, that the baked beans must be canned while hot, or at a temperature of approximately 180 degrees F., and in defining particularly the second step in his process, which he says is one of the most important parts of his invention, the applicant makes the following very significant statement as to how he arrived at what he now claims is the novel and essential element of his process, and which clearly shows that his present specification of "approximately 180 degrees F.," as the District Court found, is in fact merely stating generally what is practiced by canners in other branches of the art:

"The second step of the process consists in canning the beans immediately at the conclusion of the baking and while they are still hot and this step is one of the most important parts of my invention. Any suitable means may be used for accomplishing this result and one such is as follows. When...