American Paper Pail & Box Co. v. National Folding Box & Paper Co.

• Decision Date: 20 July 1892
• Citation: 51 F. 229
• Parties: AMERICAN PAPER PAIL & BOX CO. et al. v. NATIONAL FOLDING BOX & PAPER CO.
• Court: U.S. Court of Appeals — Second Circuit

51 F. 229

AMERICAN PAPER PAIL & BOX CO. et al. v. NATIONAL FOLDING BOX & PAPER CO.

United States Court of Appeals, Second Circuit.

July 20, 1892

The patent in suit relates to paper boxes and box covers cut out of a single sheet of paper, and known as 'knock-down' boxes. They are sold, shipped, and stored flat. When put in use, their sides and ends are bent upwards, and flaps projecting from the sides, are passed around the corners, and inserted into slots in the ends. There is thus formed a shallow rectangular box, with rectangular sides, which is held in shape without the use of rivets, mucilage, or any foreign substance. The slot into which the flap is inserted is located in the end strip, perpendicular to the bottom of the box, and therefore parallel with the inner edge of the projection at the end of the flap. The slot is longer than the width of the flap, which is to be thrust into it, and is located at such a distance from the corner that, when the box is set up and the flap thrust in, the projection of the latter will just pass within the box. The peculiar feature of this method of locking which complainant relies upon is the circumstance that the projection engages the straight edge of the projection with the straight edge of the slot; such engagement taking place sometimes at one point, sometimes at another, and sometimes, again, throughout the entire length of the projection. One supposed benefit derived from this peculiar mode of engagement is the securing of a greater degree of automatic adjustability, the box more readily accommodating itself to slight variations in the position of the parts relatively to each other, whether caused by imperfect cutting out of the blank, or by carelessness in setting it up.

The previously adjudicated construction and validity of the patent is, on this appeal from an order, as conclusive on this court as upon the learned judge below.

The doctrine is established that, on motion for preliminary injunction, prior adjudication after contest is, in absence of opposing and cogent evidence by defendants of new defense or of collusive or imperfect presentation of former defense res adjudicata as to construction and validity of patent, and, provided infringement is found, entitled complainant, to a preliminary injunction as a matter of substantial right. Manufacturing Co. v. Hickok, 20 F. 116; Refrigerating Co. v. Gillett, 31 F. 809; Searls v. Worden, 11 F. 501, 502; Purifier Co. v. Christian, 3 Ban. & A. 42, 43; Jones v. Merrill, 8 O.G. 401; Page v. Burglar Alarm Tel. Co., 2 Fed.Rep. 830; Blake v. Rawson, 6 Fish.Pat.Cas. 74; Coburn v. Clark, 15 F. 804; Coburn v. Brainard, 16 F. 412; Cary v. Spring Bed Co., 26 F. 38.

On the record herein, no error was committed below in adopting the construction and validity of the patent established by said unreversed test case. Appellee did not deny this. The judge below, being same who tried that case, has expressly found, as a matter of fact, that 'no new defenses are interposed' herein. By said prior adjudication, under the circumstances, was settled for the circuit judge below, and for every circuit in the United States, and also for this court of appeals, on mere appeal from the order, the construction and meaning of the patent, and novelty, utility, and patentability of Ritter's invention in view of the prior state of the art.

Such prior adjudication, made on testimony sifted by cross-examination, should not be set aside on mere ex parte experts' affidavits presenting no new defenses. Complainant is entitled to a cross-examination of defendants' experts before being deprived of the advantage of its previous decree, duly rendered upon final hearing. Contrary practice would practically prevent all preliminary injunctions, (now substantially dependent on prior adjudication,) because interested experts' affidavits, sustaining almost any novel and confusing theory, are readily attainable. But these should not prevail over the construction and interpretation of an impartial judge. There is therefore here no question open for review except infringement.

Walter D. Edmonds, for complainant.

R. Bach McMaster, for defendants.

Before WALLACE and SHIPMAN, Circuit Judges.

SHIPMAN Circuit. Judge.

This is an appeal by the defendants from an interlocutory order of the circuit court for the southern district of New York which granted a preliminary injunction against the...