Continental Paper Bag Company v. Eastern Paper Bag Company

• Decision Date: 01 June 1908
• Docket Number: No. 202,202
• Citation: 52 L.Ed. 1122,210 U.S. 405,28 S.Ct. 748
• Parties: CONTINENTAL PAPER BAG COMPANY, Petitioner, v. EASTERN PAPER BAG COMPANY, Respondent
• Court: U.S. Supreme Court

210 U.S. 405

28 S.Ct. 748

52 L.Ed. 1122

CONTINENTAL PAPER BAG COMPANY, Petitioner,

v EASTERN PAPER BAG COMPANY, Respondent.

No. 202.

Argued April 15, 1908.

Decided June 1, 1908.

This is a bill in equity to restrain the infringement of letters patent No. 558,969, issued to William Liddell for an improvement in paper bag machines, for making what are designated in the trade as self-opening square bags. The claims in suit do not include mechanism for making a complete bag, but only mechanism for distending one end of a tucked or bellows-folded paper tube made by other mechanism, and folding it down into a form known in the art as the 'diamond fold.' This fold is flattened and pasted by other mechanism and forms a square bottom to the bag.

The bill is in the usual form and alleges infringement of the claims by the Continental Paper Bag Company, hereafter called the Continental Company, and prays for an accounting and an injunction.

The answer interposed the defense of nonjurisdiction of a court of equity, noninfringement of the Liddell patent by defendant (Continental Company), and want of invention.

The allegation of the answer as to the jurisdiction of the court is as follows:

'The defendant says, on information, advice, and belief, that a court of equity has no jurisdiction to grant any prayer of the bill of complaint, even if the said Liddell patent, No. 558,969, were valid, and even if the defendant's paper bag machines were to be held to infringe that patent; because the said patent, No. 558,969, is a mere paper proposition which the complainant has never put into effect or use, and because it is contrary to equity to suppress a useful and established business, like that which the defendant is prosecuting with its paper bag machines, at the request of a complainant which simply owns one paper bag machine patent that has never been employed by that complainant in any way in any paper bag machinery, and because the complainant in this case has a plain, adequate, and complete remedy at law for any infringement which may have been done upon Liddell letters patent, No. 558,969.'

The circuit court adjudged the patent valid as to the first, second, and seventh claims thereof; that the Eastern Paper Bag Company was the owner of the letters patent; that Liddell was the original and first inventor of the improvements described in the claims; and that the Continental Company had infringed the same. It was also adjudged that the Eastern Company recover of the Continental Company the profit the latter had made or received by the infringement. An account was ordered and a perpetual injunction decreed. 142 Fed. 479. The decree was affirmed by the circuit court of appeals. 80 C. C. A. 407, 150 Fed. 741. This certiorari was then granted.

Mr. Albert H. Walker for petitioner.

[Argument of Counsel from pages 407-410 intentionally omitted] Messrs. Francis T. Chambers, Samuel R. Betts, James J. Cosgrove, and Betts, Sheffield, & Betts for respondent.

[Argument of Counsel from Pages 410-413 intentionally omitted] Mr. Justice McKenna delivered the opinion of the court:

The defense of want of invention in the Liddell machine is not urged here, because it is said that the decision of that question depends upon mechanical comparisons, too numerous and complicated to be conveniently made by a bench of judges, and because, though the Liddell patent approaches closely the prior art, it 'perhaps covers a margin of differentiation sufficient, though barely sufficient, to constitute invention.'

The two questions, therefore, which remain for decision, are the jurisdiction of the court and the question of infringement. We will consider the latter question first. It does not depend, counsel for the Continental Company says, 'upon any issue of fact, but does depend, as questions of infringement' sometimes do, upon a 'point of law.' This point of law, it is further said, has been formulated in a decision of this court as follows: 'Where the patent does not embody a primary invention, but only an improvement on the prior art, and defendant's machines can be differentiated, the charge of infringement is not sustained.' Counsel for respondent do not contend that the Liddell invention is primary within the definition given of that term by petitioner. Their concession is that it is 'not basic, in the sense of covering the first machine ever produced to make self-opening square bags by machinery.' They do contend, however, that it is one of high rank, and, if it be given a 'fair construction and scope, no matter whether we call it basic, primary, or broad, or even merely entitled to be construed as covering obvious mechanical equivalents, the question of infringement of the claims in suit by petitioner's machine becomes mechanically, and from a patent-law standpoint, a simple one, in spite of slight differences of operation, and of reversal of some of the moving parts.' The lower courts did not designate the invention as either primary or secondary. They did, however, as we shall presently see, decide that it was one of high rank and entitled to a broad range of equivalents. It becomes necessary, therefore, to consider the point of law upon which petitioner contends the question of infringement depends.

The citation is from Cimiotti Unhairing Co. v. American Fur Ref. Co. 198 U. S. 399, 49 L. ed. 1100, 25 Sup. Ct. Rep. 697, and Kokomo Fence Mach. Co. v. Kitselman, 189 U. S. 8, 47 L. ed. 689, 23 Sup. Ct. Rep. 521, was adduced to sustain the proposition. But the whole opinion must be considered, and it will be seen from the language which we shall presently quote that it was not intended to say that the doctrine of equivalents applied only to primary patents.

We do not think it is necessary to follow counsel for petitioner in his review of other cases which, he urges, sustain his contention. The right view is expressed in Miller v. Eagle Mfg. Co. 151 U. S. 186, 207, 38 L. ed. 121, 130, 14 Sup. Ct. Rep. 310, as follows: 'The range of equivalents depends upon the extent and nature of the invention. If the invention is broad or primary in its character, the range of equivalents will be correspondingly broad, under the liberal construction which the courts give to such inventions.' And this was what was decided in Kokomo Fence Mach. Co. v. Kitselman, Cimiotti Unhairing Co. v American Fur Ref. Co. and Computing Scale Co. v. Automatic Scale Co. 204 U. S. 609, 51 L. ed. 645, 27 Sup. Ct. Rep. 307. It is from the second of those cases, as we have seen, that the citation is made which petitioner contends the point of law upon which infringement depends is formulated; but it was said in that case: 'It is well settled that a greater degree of liberality and a wider range of equivalents are permitted where the patent is of a pioneer character than when the invention is simply an improvement, maybe the last and successful step, in the art theretofore partially developed by other inventors in the same field.'

It is manifest, therefore, that it was not meant to decide that only pioneer patents are entitled to invoke the doctrine of equivalents, but that it was decided that the range of equivalents depends upon and varies with the degree of invention. See Ives v. Hamilton, 92 U. S. 426, 23 L. ed. 494; Hoyt v. Horne, 145 U. S. 302, 36 L. ed. 713, 12 Sup. Ct. Rep. 922; Deering v. Winona Harvester Works, 155 U. S. 286, 39 L. ed. 153, 15 Sup. Ct. Rep. 118; Walker, Patents, § 362; Robinson, Patents, § 258.

We start, then, with the proposition that the Eastern Company may invoke for the Liddell patent the doctrine of equivalents; but, without deciding now how broadly, we proceed to the consideration of the question of infringement. Invention is conceded to the Liddell machine, as we have seen, by the Continental Company. The concession, however, is qualified by the assertion that it covers only a 'margin of differentiation' from the prior art. The circuit court and the circuit court of appeals had a higher estimate of it. The circuit court said that the nature of its invention was 'clear . . . [was] disconnected from what precedes it by such a hiatus that, if the claims are as extensive as the invention, there is no difficulty so far as concerns the application to the case of the rules with reference to equivalents.' And answering the contention that it was the twentieth in the line of patents in its branch of the arts, and that it should be limited to the details described in its specifications, it was said that there was 'such hiatus between them and what appears on the face of the Liddell patent that they have no effect either in narrowing or broadening the alleged Liddell invention.' The circuit court of appeals affirmed the decree of the circuit court. It was less circumstantial than the circuit court in describing the invention. It said, however, after stating the claims, that their breadth 'would imperil the patent, were the real invention less broad,; but the defendant [the Continental Company] has not pointed out, and we have been unable to find, any operative combination of a rotary cylinder and a forming plate oscillating thereon earlier than the patent in suit. If, therefore, the patent is valid, it has a wide scope, and the mechanical arrangement used by the defendant is fairly within its terms.' The lower courts, therefore, found that the invention was a broad one, and that the machine used by the Continental Company was an infringement. And these were questions of fact upon which, both of the courts concurring, their findings will not be disturbed, unless clearly wrong. Deslions v. La. Compagnie G en erale Transatlantique, 210 U. S. 95, 52 L. ed. ——, 28 Sup. Ct. Rep. 664. To decide the question of invention an examination of the prior art was necessary, and a consideration of what step in advance of that art, if any, the Liddell patent was. To decide the question of infringement a comparison of the Liddell machine with the machine used...