Julius Levine & Co. v. Automatic Paper Machinery Co.

• Decision Date: 15 February 1933
• Docket Number: No. 4916.,4916.
• Citation: 63 F.2d 547
• Parties: JULIUS LEVINE & CO. (MENASHA PRODUCTS CO., Intervener) v. AUTOMATIC PAPER MACHINERY CO., Inc.
• Court: U.S. Court of Appeals — Third Circuit

63 F.2d 547 (1933)

JULIUS LEVINE & CO. (MENASHA PRODUCTS CO., Intervener) v. AUTOMATIC PAPER MACHINERY CO., Inc.

No. 4916.

Circuit Court of Appeals, Third Circuit.

February 15, 1933.

Alexander Mabee, of Chicago, Ill., Duell, Dunn & Anderson, of New York City, and Charles W. Hills, Jr., of Chicago, Ill., for appellants.

George E. Middleton, of New York City (Pennie, Davis, Marvin & Edmonds, of New York City, of counsel), for appellee.

Before WOOLLEY, DAVIS, and THOMPSON, Circuit Judges.

WOOLLEY, Circuit Judge.

This suit for infringement was brought by the Automatic Paper Machinery Company, assignee and patentee of Letters Patent No. 1,630,495, granted May 31, 1927, for a "Box for Paper Rolls." The bill was filed against Julius Levine & Company, a dealer in alleged infringing boxes, but, after intervening, the suit was defended by the Menasha Products Company, the maker, on issues of invalidity because of anticipation, lack of invention, aggregation, and of non-infringement. The court by its decree sustained and found infringed claims 1 and 2 of the patent, the claims in suit. The defendants by this appeal seek a review of all these issues save that of infringement which falls out of the case on their tacit admission that, if valid, the patent is infringed.

The box of the patent, made strictly under the claims, consists of a single piece of light cardboard, turned and fastened in the manner of the Brightwood box used in packing Uneeda biscuits, and shaped to hold loosely a roll of waxed paper. It is provided with a metal cutting strip, usually with a serrated edge, attached adjacent to the free edge of its front wall by outstanding and crimped down prongs. The cover of this one-piece box is provided with a flap which may lie over the front wall and thereby conceal its cutting edge, or which may — and does in use — extend behind the front wall and act as a guide for the paper as it is unwound and withdrawn from the enclosed roll.

If there is invention in the box of the patent, it is a very little one. We first doubted the presence of invention in a thing so simple. We next thought the art was so crowded that it could not attain a foothold. Yet when we looked at the art and regarded the problem, the functions and the result of the invention, the case took on a new appearance. An invention, though little, may be real.

Prior to the patent, waxed paper had come into favor for domestic use, particularly since the advent of electric refrigeration. It was sold mainly at grocery stores in practically five forms; loose rolled sheets which were unsanitary and difficult to handle and tear; loose flat sheets in an envelope, sanitary but inconvenient to handle and wasteful because, whatever the need, sheets of only one size were available; a continuous roll of flattened paper enclosed in an envelope and a roll of paper provided with a string extending from the outside through the core, which, being held taut, functioned as a cutter when the paper is torn off. Then there was the Hamersley package, made under Letters Patent No. 1,521,369, which consisted of a two-piece box containing a metal fixture on which a paper roll was mounted for rotation and provided with a cutting edge inside the box over which the paper could be cut off in any desired size as it unwound. The box sold for 50 cents.

There were in the patent art boxes of different types and with different means for holding, tearing or cutting paper, ranging in cost from 7 cents to $10 apiece. There was, however, no inexpensive waxed paper package on the market sold in a dispensing box and intended to be used just once.

Having looked into the practical art, and being presumed to know the patent art whether he actually knew it or not, Mast, Foos & Co. v. Stover, 177 U. S. 485, 20 S. Ct. 708, 44 L. Ed. 856, Marcalus, the inventor, after a survey disclosing what we have stated, sought to enter the low priced waxed paper trade. In doing so he was confronted by a problem with several factors. Paper in rolls was undoubtedly best adapted for intermittent use such as occurs in a kitchen. The roll must be packed preferably in a one-piece box with two characteristics: One, as a container or carrier; the other as a dispenser. As a container, the shape of the box is fixed by the shape of the roll; its other elements are of little importance. As a dispenser, definitely more is required. The box should be serviceable, particularly in the hands of a clumsy person, and should permit, and insure, even tearing or cutting of a sheet of paper, in any size desired, as it is withdrawn from the revolving roll. Also, it should be so simple that it could be made cheaply enough to be used once and then thrown away. And, finally, to gain the 10 cent retail trade both paper and package must sell to the wholesale trade for 5 cents, and to sell at that figure the box must not cost more than ½ cent. Here was a mechanical problem hedged about by a financial problem. However the former was solved, the latter controlled. Marcalus, being a machine designer, conceived the kind of box he wanted and designed a press for folding the box into shape and stamping on it the metal cutter with one blow. He thought the cost would be ½ cent.

On testing the trade as to probable purchase by the public of such a box and roll for 10 cents, wholesalers declined to consider it on the ground that there was presently no demand for it and there was not enough profit in sight to justify the expense of creating a demand. Thereupon Marcalus rented a small shack, built and installed his machine and three days a week worked all by himself in making the packages. On the other three days he and his wife canvassed the trade to sell and popularize them. From a small beginning the business increased almost incredibly. From sales of 17,000 in 1926, the first year of the venture, they leaped annually in terms of millions to 8,340,000 for the first nine months of 1930. They are sold by 175,000 grocery stores with annual gross sales amounting, approximately, to $1,000,000.

Into this inviting field the intervenor, Menasha Products Company, entered with a waxed paper package under the trade name of "Waxtex," consisting of a box and roll similar to those of the plaintiff's "Cut-Rite" package but not provided with a serrated metallic cutting edge. The defendant silicated the free edge of its box to make a cutting edge, that is, hardened and stiffened it by a solution of sodium silicate. The plaintiff does not claim that this box infringed. But the chemically stiffened edge softened in use and when, in consequence, trade fell off, the defendant-maker deliberately substituted the plaintiff's serrated metal cutting edge and thereby completed a box which the trial court held, and we think, fully infringes, if the patent is valid.

On the question of invalidity because of anticipation, though contested sharply at the trial, the defendants have little to say on appeal. We shall dispose of that issue briefly by holding, with the learned trial master, that the evidence shows beyond question two things: That every...