Bianchi v. Barili

• Decision Date: 23 July 1948
• Docket Number: No. 11769.,11769.
• Parties: BIANCHI et al. v. BARILI. BARILI v. BIANCHI et al.
• Court: U.S. Court of Appeals — Ninth Circuit

168 F.2d 793 (1948)

BIANCHI et al. v. BARILI.

BARILI v. BIANCHI et al.

No. 11769.

Circuit Court of Appeals, Ninth Circuit.

June 15, 1948.

Rehearing Denied July 23, 1948.

COPYRIGHT MATERIAL OMITTED

J. E. Trabucco, of San Francisco, Cal., for appellants Bianchi and others.

Alan Franklin, of Los Angeles, Cal., and Boyken, Mohler & Beckley and W. Bruce Beckley, all of San Francisco, Cal., for appellee Barili.

Before GARRECHT, DENMAN and HEALY, Circuit Judges.

GARRECHT, Circuit Judge.

The infringement of Claim 4 of United States Patent No. 1,844,142, issued to Arthur E. H. Barili for a stuffed pastry machine, on February 9, 1932, is the question involved in this appeal.

The court below found that Claim 4 had been infringed by Achille Bianchi and the Marlo Packing Corporation, which is hereinafter referred to as Marlo, and granted an injunction against further infringement by either defendant. Barili v. Bianchi, D.C., 72 F.Supp. 766. Bianchi is the manufacturer of the accused machine and Marlo is its user. Both have appealed.

Barili also has appealed, with respect to the lower court's failure to order an accounting for damages and its failure to award a reasonable attorney's fee, and also with respect to the lower court's having ordered the case to trial only one day after an order had been entered setting aside a prior judgment in this case in favor of Bianchi and Marlo.

Claim 4 reads as follows:

"In a ravioli machine, a pair of intergeared rollers, one roller having indented molds and provided with axial cutters between said molds, the other roller being made with annular peripheral cutters adapted to be positioned between the molds of the first named roller at the point of contact of the rollers, all the molds being spaced apart so as to provide a wide margin between the cutters and the molds, means for feeding sheets of flour paste to the rollers, and a detachable open bottom hopper for guiding stuffing to the paste sheets on the rollers."

The questions involved in the Bianchi and Marlo appeal are (1) the validity of Claim 4 and (2) infringement by the accused machine.

1. Some Threshold Questions

Bianchi and Marlo contend that Claim 4 "is fully anticipated by the prior art and is utterly invalid"; and that it "is also invalid because of its failure to read on the disclosures in the patent specification and drawings, or in other words, because the patent specification and drawings do not support the claim".

In their answer, Bianchi and Marlo set up seven patents as having anticipated Barili's invention. Of these, however, only two are referred to in their briefs — Holmes No. 518,454, dated April 17, 1894, and Evans No. 1,094,320, dated April 21, 1914. In addition, in their brief Bianchi and Marlo argue that Claim 4 is also "fully anticipated" by Oleri No. 1,479,925, dated January 8, 1924. Finally, they assert that Tommasini No. 1,236,998, dated August 14, 1917, and the "Raviolara pamphlet", said to have been obtained by Bianchi in Europe in 1919, "were introduced into the record at the trial to show that automatic ravioli manufacturing machines were in use long prior to the filing of the patent application which resulted in the patent in suit."

(a) The Burden of Proof

At the outset, it should be observed, that "the grant of letters patent is prima facie evidence that the patentee is the first inventor of the device described in the letters patent, and of its novelty." Cantrell v. Wallick, 117 U.S. 689, 695, 6 S.Ct. 970, 974, 29 L.Ed. 1017; 3 Walker on Patents (Deller's Edition) § 701, page 2009.

Before a patent can be declared invalid because of anticipation, its lack of novelty must be established beyond a reasonable doubt. Cantrell v. Wallick, supra, 117 U.S. at pages 695, 696, 6 S.Ct. 970; 1 Walker § 63, pages 300-303; American Bell Telephone Co. v. People's Telephone Co., C.C.N.Y., 22 F. 309, 313, affirmed, 126 U.S. 1, 572, 8 S.Ct. 778, 31 LEd. 863; Searchlight Horn Co. v. Victor Talking Machine Co., D.C.N.J., 261 F. 395, 401.

Particularly heavy is the attacker's burden when the validity of the patent has been sustained by court findings. General Motors Corporation v. Kesling, 8 Cir., 164 F.2d 824, 827, certiorari denied on March 15, 1948, 333 U.S. ___, 68 S.Ct. 732, and the many cases there cited.

(b) An Improvement Patent is Entitled to a Reasonably Liberal Construction

Barili asserts that his invention is of a "primary" or "pioneer" character. After carefully comparing his teaching with that of the prior art, however, we find ourselves unable to agree with that conclusion. Claim 4 sets out, at most, an improvement in the art of producing machines for the making of ravioli.

Nevertheless, even a patent that teaches merely an improvement in a familiar process merits a reasonably liberal construction. In 2 Walker § 247, page 1212, the doctrine is thus stated:

"Even though an invention be not a pioneer, if it marks a decided step in the art, it will be entitled to the benefit of the rule of equivalents, though not in so liberal a degree as if the invention were of a primary character. Case cited Thus, a patent which is an improvement on an old machine may be very meritorious and entitled to liberal treatment. Case cited * * * Where an invention undoubtedly marks a substantial advance in the art, the patent is to be given a reasonably liberal construction so as to secure to inventors the rewards to which they are entitled."¹

2. The Prior Art

We will briefly consider the earlier patents upon which Bianchi and Marlo rely, as anticipating Barili's device.

(a) The Holmes Patent

This machine, according to Holmes's specification, "is adapted for producing articles of pastry or confectionery of tubular form or articles consisting of a tubular envelope and a suitable filling". Continuing, Holmes says:

"My invention is also adapted to produce solid or porous cylindrical sticks. The articles are preferably produced in continuous lengths and may be subsequently cut into smaller lengths."

We find it difficult to spell out ravioli from tubes or sticks, whether solid or porous. In a word, Holmes's machine could not produce ravioli, nor did he claim that it could do so.

In Topliff v. Topliff and Another, 145 U.S. 156, 161, 12 S.Ct. 825, 828, 36 L.Ed. 658, the court said:

"It is not sufficient to constitute an anticipation that the device relied upon might, by modification, be made to accomplish the function performed by the patent in question, if it were not designed by its maker, nor adapted, nor actually used, for the performance of such functions."

Furthermore several claims of the Barili patent were rejected on Holmes. But Claim 4, the one here in question, survived.

In 3 Walker § 700, page 2010, it is said:

"The presumption of validity is strengthened by the circumstance that the alleged anticipating patent was considered by the Patent Office in connection with the application for the patent in suit."

(b) The Evans Patent

According to the specification, "This invention relates generally to the manufacture of `feeding' cakes for animals". Evans does not provide for any filling or stuffing to be pressed between layers of dough. And the filling is one of the distinguishing features of an authentic raviolo.

In other words, Evans, like Holmes, had in mind a machine that was not intended to turn out ravioli. And, also as in the case of Holmes, Evans's patent "was considered by the Patent Office in connection with the application for the patent in suit".

(c) The Oleri Patent

This utensil is a hand-operated device resembling a rolling pin. The machine has no automatic means for stuffing material between two sheets of dough. On the contrary, according to the specification, it commences to operate only after the two layers of dough with the stuffing inserted therebetween are "firstly laid flatly upon a table, after which the shaper and cutter is rolled over the same, thereby forming, sealing and cutting the individual raviolis sic in one operation." Emphasis supplied.

(d) The Tommasini Patent

Conceding that he was not the first to devise a machine for the manufacture of ravioli, Barili himself was the first to direct the attention of the Patent Office to the Tommasini invention.

Tommasini's patent, however, does not call for two sheets of paste. The disclosure envisages only one sheet. The machine consists of devices for feeding this single sheet of paste, for feeding the stuffing upon it, for cutting the paste into disks with peripheral indentations, and for folding back each disk into a half-moon shape, with the edges closed so as to contain the stuffing.

In Tommasini's device, the feed and cylinder movements must be "intermittent" or "step by step". This is because "It is necessary that the cylinders * * * should not commence to carry the ravioli sic with them before the latter has received the stuffing and it is also necessary that the stuffing should be fed to the ravioli sic while it is still stationary". Each of the cylinders has to make a complete revolution in order to turn out a single raviolo between them.

(e) Mario Eccher's "Raviolara"

Counsel for Bianchi and Marlo offered in evidence as prior art "a print of a number of automatic ravioli machines which was published prior to the First World War".

The sheet contains cuts of sixteen machines designed for the manufacture of alimentary paste products. In addition to an introductory statement, there are explanatory "cutlines" under each picture. All the printed matter is entirely in the Italian, German, French and Spanish languages. Not a single word in English is to be found on the entire sheet.

The exhibit violates Rule 12 of this court, which reads as follows:

"Whenever any record transmitted to this court shall contain any document, paper, testimony, or other proceeding in a foreign language, and the record does not also contain a translation of such document, paper, testimony, or other proceeding, made under the...