Beach v. Hobbs, 246

• Decision Date: 13 February 1899
• Docket Number: 246,247.
• Citation: 92 F. 146
• Parties: BEACH v. HOBBS et al. HOBBS et al. v. BEACH
• Court: U.S. Court of Appeals — First Circuit

92 F. 146

BEACH v. HOBBS et al.

HOBBS et al. v. BEACH

Nos. 246, 247.

United States Court of Appeals, First Circuit.

February 13, 1899

John Dane, Jr., for F. H. Beach.

Edward S. Beach, for C. W. Hobbs and others.

Before COLT, Circuit Judge, and BROWN and LOWELL, District Judges.

COLT Circuit Judge.

The subject-matter of this suit is reissued letters patent No 11,167, dated May 26, 1891, granted to Fred H. Beach for an improvement in machines for attaching stays to the corner of boxes. The court below decided that the defendants' machine infringed the sixth claim of the patent, and did not infringe the first, second, and third claims. Hence these cross appeals.

The Beach patent, for the first time in the history of the art describes a machine for staying the corners of paper boxes with short strips of paper or muslin. Before this invention the work had been done by hand. The original application was filed June 10, 1885. This application was put in interference with several others. After a controversy of five years in the patent office, the several interference proceedings were dissolved, leaving the priority of invention with Beach. The original patent was issued February 24, 1891. In October, 1890, Inman and Jaeger, two of the parties to the interference proceedings, brought suit in the United States circuit court for the Northern district of New York to set aside the patent to Beach, and award the invention to Inman. Upon proofs taken, and after arguments by counsel, the case was dismissed. A suit for infringement was afterwards brought in the same court by the complainant against the American Box-Machine Company and others. The record in that case was voluminous. The prior art was exhaustively investigated, including some 50 prior patents. After full hearing upon bill, answer and proofs, Judge Coxe, in a carefully- considered opinion (63 F. 597), sustained the validity of claims 1, 2, 3, 4, 5, and 7 of the patent, and held that the defendants' machine infringed these claims. On appeal to the circuit court of appeals the case was again fully heard before Judges Wallace, Lacombe, and Shipman, and that court affirmed the decision of Judge Coxe. 18 C.C.A. 165, 71 F. 420. Subsequently another suit for infringement was brought in the same court by the complainant against the Inman Manufacturing Company and others, and, after hearing, a preliminary injunction was granted. 75 F. 840. This decision was affirmed by the circuit court of appeals. 24 C.C.A. 408, 78 F. 923. Although the defendants in this case are not the same, or in privity with the defendants in the other cases, we think, as a general rule, and especially in patent cases, we should follow the decision of the circuit court of appeals of another circuit upon final hearing with respect to the issues determined, if based upon substantially the same state of facts, unless it should clearly appear that there was manifest error. In discussing this question in the court below, Judge Putnam said:

'These considerations have a special importance as applied to a solemn and well-considered judgment of any circuit court of appeals with reference to a patent for an invention issued by the United States, when the state of the proofs remains substantially the same, in view of the reluctance of the supreme court to issue writs of certiorari in causes of this character, involving mainly questions of fact; otherwise such patents, although intended by statute to have effect throughout the whole country, would, for practical purposes, be territorially limited, and would be of effect only in portions therof, and practically invalid in other portions. It is also to be borne in mind that there is no serious danger that the courts in any circuits, would perpetuate any seeming error, because of the power vested in the supreme court to rectify the same by issuing its writs of certiorari.' 82 F. 916, 919.

The circuit court of appeals, on final hearing in the American Box-Machine Case, in affirming the decision of Judge Coxe said: 'The elements of the first claim are the opposing clamping dies, the feeding mechanism, and the pasting mechanism. The second claim omits the pasting mechanism, and adds the cutting mechanism. The third claim is substantially a combination of all the elements of the first and second. The first three claims are broad ones, covering the particular combinations referred to, without any restriction to the details of mechanical construction; and defendants concede that, if these claims are to be sustained broadly as they are expressed, they are infringed. As to this first set, therefore, the only question is whether, in view of the state of the art, Beach was entitled to appropriate as broad a combination as he has set forth in his first three claims, which cover every device for affixing stay strips to the outside of box corners, where the operation is performed by the combined action of a feeding mechanism, a cutting mechanism, and a pasting mechanism, in combination with any opposing clamping dies whose faces diverge. The circuit court sustained these broad claims, and we concur in this decision. It is hardly necessary to add anything to the elaborate discussion of this part of the case, which will be found in the opinion of the learned judge who heard it in the circuit court. The patentee indisputably made a machine which did work that theretofore was always done by hand. * * * Certainly, the state of the art exhibits a necessary part of the work of box making as done by hand, with no machine existing in the art to do it. That machine the complainant, was the first to supply. Moreover, the evidence leaves no doubt that it did the work it was devised to do. Subsequent improvements have made it do that work better, have made it practicable to apply stay strips to more varieties of boxes than Beach's original machine could readily handle; but that is immaterial when it is shown, as it has been here, that machines made in strict conformity to the patent have been used by manufacturers for years in doing this very work of applying short stay strips, and to the satisfaction of the users. So far as the record shows, no machine presenting the complete combination of the first three claims existed before Beach's invention, either in this art or any other. The nearest approach to it is the Dennis and Yorke machine, which pastes labels on folded newspapers. That has feed, pasting, and cutting mechanism combined with a vertical reciprocating plunger descending with a flat head on a flat platen, the newspaper being interposed between. This is quite a close approach to the machine of the patent. It is only necessary to change the flat head and the flat platen to clamping dies with diverging faces, and to make the machine stronger, in order to enable it to fasten stay strips to box covers. That is shown by the old Dennis and Yorke machine in evidence, which has been thus altered, and does such work. If this Dennis and Yorke machine were already in the box-makers' art; if some one prior to Beach had cut away part of its framework, had made its flat platen rigid, and increased its power, and employed it to affix adhesive labels to the tops or sides of boxes,-- it might not be invention merely to change the shape of the dies so as to fit into and over box corners, and there apply adhesive strips. But no one had done this. The Dennis and Yorke machine was not in this prior art, and when Beach took it from another art, where it was doing different work, and by modification adapted it to efficient use in his own art, and thereby gave to his own art the first machine it ever had which could do work necessary to be done, and always theretofore done by hand, he...