Clarence Busch v. Joshua Jones

• Decision Date: 17 March 1902
• Docket Number: No. 96,96
• Parties: CLARENCE M. BUSCH, Appt. , v. JOSHUA W. JONES and W. O. Hickok Manufacturing Company
• Court: U.S. Supreme Court

184 U.S. 598

22 S.Ct. 511

46 L.Ed. 707

CLARENCE M. BUSCH, Appt.,

v JOSHUA W. JONES and W. O. Hickok Manufacturing Company.

No. 96.

Argued January 14, 1902.

Decided March 17, 1902.

This suit was brought by appellees against appellant for the infringement of letters patent No. 204,741, and letters patent No. 452,898, issued to Joshua W. Jones, one of the appellees. An accounting was prayed, and also an injunction, pending the suit. The bill contained the usual allegations of invention and utility, and of infringement by the defendant (appellant). The answer traversed those allegations, and alleged prior use, disclosure of the invention in prior publications, and also anticipation by prior devices and processes. The answer contained a list of the devices. No evidence was given as to, and no judgment passed on, patent No. 452,898. This appeal therefore is only concerned with patent No. 204,741. The patent was issued to Joshua W. Jones, one of the appellees, for a press and process (the relation of the two is disputed) for 'dry pressing' and removing type indentations from printed sheets. The validity of the patent was sustained, and its infringement by the defendant (appellant) was found by the supreme court of the district of Columbia, and decree passed adjudging appellees the sum of $3,491.70, with interest and costs. The decree was affirmed by the court of appeals. 16 App. D. C. 23. The case was then brought here. The facts are stated in the opinion.

Mr. George J. Murray for appellant.

Mr. M. W. Jacobs for appellees.

Mr. Justice McKenna delivered the opinion of the court:

1. A question of jurisdiction is raised. It is contended by appellant that the case was not one of equitable cognizance, the appellees' remedy being, it is claimed, at law. The specification of error upon which the contention is based is expressed as follows:

'Because at the time of the hearing it appeared from the record that the only patent before the court had expired before the hearing, no motion for preliminary injunction having been made prior to the expiration of the patent, and defendant being a mere user of one machine, which machine was destroyed by fire before the case was brought to hearing.'

This seeks to determine the jurisdiction of the court by conditions which came into existence after the commencement of the suit, not upon those which existed at the time the bill was filed. It is, however, urged in argument that the contract between Jones and the W. O. Hickok Manufacturing Company conveyed the patent rights to the press only, and not the process described in the 5th claim of the patent, and that 'the court, sitting as a court of equity, had no jurisdiction to order an injunction at the time the bill of complaint was filed.' But what the contract provided was an issue to be made in the case, and pending its decision the preliminary relief by injunction could have been granted. Appellees' contention as to the jurisdiction is, therefore, not justified, and a discussion of the reasons for this conclusion is not necessary. They are expressed in Clark v. Wooster, 119 U. S. 322, 30 L. ed. 392, 7 Sup. Ct. Rep. 217, and Beedle v. Bennett, 122 U. S. 71, 30 L. ed. 1074, 7 Sup. Ct. Rep. 1090.

2. The patent is designated an 'Improvement in Bookbinders' Dry Press and Sheet Tie.' That is, a new press and process for removing type indentations from printed papers or sheets, the latter when folded being designated technically as 'signatures.'

The type indentations are made in printing, the type displacing somewhat the fiber of the paper, and the removal of the indentations is technically known in the art as 'dry pressing,' and the device by which it is done is called a 'dry press.' Such a press the patent is intended to cover, and also a particular process for dry pressing. As a process the validity of the patent is questioned; as a new machine its invention is controverted. An inquiry into the prior art becomes, therefore, important, and a witness, describing it and its imperfections, testified as follows:

'Previous to the invention of Mr. Jones as described in said patent, it was the custom to press printed sheets by inserting them between heavy paper boards, sometimes called 'fuller boards,' but generally now called 'glazed boards,' and putting said boards with the printed papers between them into a powerful press, by which pressure was produced on said boards by various means, sometimes by means of screw pressure, sometimes by hydraulic pressure. After the pressure was produced on the paper it was continued by allowing the press to remain with its pressure on to its fullest extent for ten or twelve hours or more, say from one night to the next morning, when the pressure was removed, the papers and boards taken from the press and separated by removing the boards from the pile of combined boards and paper, and putting the boards on one side on one pile and making another pile of the printed papers. This was necessarily comparatively a slow process, inasmuch as with one press only as much printed paper as the press would hold when put between the boards could be pressed in about ten or twelve hours, so that where much work had to be done a number of such presses were necessary. It was also costly as to labor, because the sheets had to be placed between the boards and removed therefrom afterwards, which took much time, especially where, as in the case of fine work, only one sheet was placed between two boards; and when this was done comparatively few sheets could be pressed at once, because the boards took up much more room than the paper did, they being quite thick.'

It was to meet this condition that the Jones patent was conceived, and its object is stated to be, first, to 'furnish a bulk compressor device, to be used to prepare the matter properly before it is inserted in the dry press proper, thus saving time or repeated travel by the latter, before the operation of tying; second, to furnish a dry press proper in which the compressing parts or heads—that is, the base and plunger—are constructed dividedly, or with ways through them, to afford access through them, to readily insert and manipulate the twine, and to tie the bundles of paper while held compressed, thus securing the bundle together by a powerful tie, which, when they are removed from the press, retains its force ad libitum; third, a press frame, having sides peculiarly set and arranged, and provided with longitudinal slots therein corresponding with the ways in the press heads, above referred to, and for the same purpose, as well as to rightly lodge and center the paper with relation to the middle of the press heads; fourth, certain ledges in the said press-frame and guides on the plunger thereof, to properly center differentsized sheets in press to secure the tie at the middle of the bundles both ways; fifth, a new process for treating printed and folded sheets of paper in dry pressing, consisting of subjecting a collection of such sheets to pressure without the use of fuller boards, and while under such pressure tying them into compact bundles, with end boards thereon then removing them immediately from the press, and allowing them to remain tied sufficiently long to fix and complete the dry pressing.'

The press is described in the patent with particularity, and illustrated by drawings. It may be said, generally, that it is a press in which bundles of signatures (sheets) are placed, at the end of which bundles rigid boards are attached to distribute the pressure which is exerted by the press. The press moves in a 'trough formed' bed so mounted as to incline laterally 'so that the folded paper may securely lodge and carry therein while being operated on.' Rectangular blocks are rigidly secured at both ends of the bed. The lower block is the base of what is called in the specifications 'a divided head,' constructed with 'openings or ways.' Opposing this there is a 'plunger or follower,' to which there is also attached a 'divided head' having 'openings and ways' between the parts of the head. The 'openings and ways' are to enable the operator to pass his hand between the parts of the press and tie the bundles. The operation of the press is as follows: A bundle of signatures (sheets) with rigid boards at its ends is placed in the press, pressure is exerted by means of a screw (other means may be used) which passes through the upper block and operates on the plunger or follower and the 'divided head' attached to it, and as the bundle rests on the lower block and its 'divided head,' it is evident that the pressure on the sheets will be in proportion to the power applied. While under pressure in the press the bundles are tied, access to them being had through the openings in the 'divided head.' The bundle is then removed from the press and allowed 'to remain tied sufficiently long to fix and complete the dry pressing.'

The advantage of the new method is that it is not so dilatory as the old and is more economical. In the old method the sheets, coming damp from the printing press, had to be dried before dry pressing, and had also to be subjected to pressure in the press a number of hours to effect the smoothing (dry pressing) of the sheets. The quantity of the work, therefore, was limited by the number of presses. In other words, as expressed by one of the witnesses, 'where much work had to be...