Corrugated Paper Patents Co. v. Paper Working Mach. Co. of New York

• Court: U.S. District Court — Southern District of New York
• Citation: Corrugated Paper Patents Co. v. Paper Working Mach. Co. of New York, 237 F. 380 (S.D. N.Y. 1913)
• Decision Date: 30 December 1913
• Parties: CORRUGATED PAPER PATENTS CO. v. PAPER WORKING MACH. CO. OF NEW YORK.

237 F. 380

CORRUGATED PAPER PATENTS CO. v. PAPER WORKING MACH. CO. OF NEW YORK.

United States District Court, S.D. New York.

December 30, 1913

June 5 1914,

December 29, 1914,

September 16, 1916.

Lawrence E. Sexton, of New York City, for complainant.

Albert H. Walker, of New York City, for defendant.

December 30, 1913.

LEARNED HAND, District Judge.

Four points are raised in this case: (1) Jurisdiction; (2) validity; (3) infringement; (4) plaintiff's inequitable conduct.

I do not believe that Judge Lacombe, in Streat v. American Rubber Co. (C.C.) 115 F. 634, meant to hold that although the point of jurisdiction is taken after general appearance, nevertheless it is good. Judge Beatty, in U.S., etc., Co. v. Phoenix, etc., Co. (C.C.) 124 F 234, suggests with much justice that in that case the only suggested infringement anyway was in the Southern district of New York, and that therefore, when Judge Lacombe found that the defendant was not responsible for that supposed infringement, he could do nothing but dismiss the bill. I attach no significance to the circumstance that it is said to have been dismissed for lack of jurisdiction. If there had been an acknowledged sale, outside of the Southern District of New York, and if, after general appearance, Judge Lacombe had held that that sale was insufficient jurisdictionally that would have raised the point. While I can find no exact authority under the section in question except that of Judge Beatty, yet it seems to me that the question must be controlled by the general principle with which we are all so familiar when the jurisdiction depends upon diverse citizenship. There it is so well established as to need no citation that, when the controversy is one over which the Constitution gives us jurisdiction as to subject-matter, the provisions regulating the district in which the suit may be brought are for the protection only of the defendant, and that he must assert his right to dismiss the bill for lack of jurisdiction by motion to quash, if it appears on the bill, or by special plea, if it does not. Nobody can think it reasonable that the defendant should let the cause proceed to trial, reserving his right to assert that he ought never to have been haled into this particular court, because it imposed upon him the hardship of fighting his case away from home. Of course, if the court has no power to hear the case at all, no consent will serve; but concededly this court has that power.

The only real question as to the validity of this patent arises under Smith, 457,676, granted in 1891. Ferres, 746,807, granted 1903, is not suggested as an anticipation of more than the tension devices, which I think it is. As to Smith, I think: First, that even if only a new use, the patent in suit is a good invention for the reasons I shall show; but that, second, it is not a new use, because the disclosure was not adapted to the work of making corrugated paper without changes involving a very radical difference in purpose, if not in structure. As to the first point, we are all familiar, I believe, at least since Potts v. Creager, 155 U.S. 597, 15 Sup.Ct. 194, 39 L.Ed. 275, with the idea that the rule regarding new use depends upon what kind of new use may be in question. This, indeed, the Supreme Court has recognized even when holding that a patent was without invention. Mast, Foos & Co. v. Stover Mfg. Co., 177 U.S. 485, 20 Sup.Ct. 708, 44 L.Ed. 856. While there must, of course, be physically a new combination of elements to support a patent, as in all combinations, each element is simply put to a new use, and that may require the highest originality. Now, the facts here are very strong. This art was at least eight years old when Langston filed his application, because already Ferres in 1899 had devised a highly complicated machine to do just this work. I think it within the reasonable range of inference that such a completely differentiated machine does not appear till an art is somewhat mature. Therefore for those eight years and longer the need had existed, and Ferres represented its supply. Then came Langston, and Langston has had a very substantial success, whether or not his results are better than Ferres'. Is there no reason to suppose that, if it were an obvious thing to use Smith for the purpose, some one during those eight years would have done so? Especially, if we are permitted to assume the art was older, the argument is stronger. It is true that we must by a fiction suppose that Langston had Smith before him, though not suggested for the purpose, and only in the sense that the whole of kindred arts were before him. Whether the process is one of ironing or not, certainly the purpose is different from ironing, and, as I believe, there is no easy road of suggestion between the two, for Langston did not have to smooth out a fabric; he had only to keep it under yielding pressure while the paste set. That one should have looked to the ironing art to solve that problem does not seem obvious; and, if it did, I should hesitate so to hold in the face of proof that it did not seem obvious to any one else for eight years.

But I believe that, even if it be thought an obvious step to go to such a machine, much readjustment was necessary, and that, too, with an underlying purpose which Smith did not supply. It will be noticed in that patent that the pressing and drying are alternate, not simultaneous. While the web is under the rollers, FF', etc., it is not exposed to heat, except in so far, of course, as the plate may be heated by conduction. The steam pipes are withdrawn from that part of the plate. It is only when over the parts, a0, between the rollers, that the web is dried. Moreover, there is no reason at all to suppose that the apron has any pressure of itself, for it is kept taut by the feed-roller, I, and, if taut, its weight does not freely fall upon the plate over the spaces, a0, a0, a0. In this machine, therefore, we have only an alternate presser or roller and a drier, the web being kept moving and held from flying upwards by the taut apron, but not by the weight of the apron while the drier is at work. I can see in this no suggestion of Langston. Furthermore, I think it quite clear that to suppose the rollers are in the least analogous to the rollers added commercially to Langston is to misconceive their function, even if they have a vertical play, which is nowhere indicated. No one would think of this machine as capable of doing the work, who had not already conceived of a depending belt whose mere weight would hold the web in yielding pressure. Then he would only think of it to see that it might be reformed under the guidance of the constructive insight of an inventor into what the inventor had already discovered.

As to infringement, I shall certainly not decide now whether the Raffel patent infringes. The plaintiff had the opportunity of allowing the proof in at the trial of the defendant's other structures, and refused. Having limited the case strictly, it is certainly bound to stand on its proof. On the other hand, I shall not hear the defendant suggest that the Baltimore machine may originally have been constructed under the Raffel patent and then changed. It could have told us all about the machine when sold, and it refused; therefore, I shall take the plaintiff's proof as true. I attach no importance to the word 'resilient,' which, though perhaps not the best possible word, is perfectly clear. Nor can I see that the defendant's belt is not in the same sense resilient. Certainly it does not hold the web at a rigid and inflexible distance from the plate, like Ferres' plates. It may be that the accommodation to variation in the height of the corrugations is less close then the plaintiff's-- I should think so-- but certainly even as between two adjacent plates some change in angle is permissible and so some accommodation to variations in the corrugations. When one compares the defendant's machine with Ferres', the prior art, one at once sees that it has borrowed frankly from the plaintiff.

I shall not allow infringement of claim 6, however, as I think the last words refer to the lower belt. As to claim 4, I have considerable doubt whether the proof shows that the lower web is under tension in the defendant's machine. Peterson does not indicate on his drawing, and apparently paid little attention to it, but he does say it came from a drum whose inertia at least and journal friction created some tension. Here, too, moreover, the defendant, having a complete disclosure within its own power, cannot too nicely scrutinize the plaintiff's proofs. Claims 1, 2, 3, 4, and 5 are infringed and valid.

The last question is of the collateral agreement of Langston not to engage in the business of making or selling corrugated paper machines or their product, while the patent lasts. I shall not decide whether such a covenant accompanying the sale of a patent is or is not too broad to be valid. Gamewell Fire Alarm Tel. Co. v. Crane, 160 Mass. 50 35 N.E. 98, 22 L.R.A. 673, 39 Am.St.Rep. 458. Rather I shall assume that these covenants are illegal, in that they go farther than is reasonably necessary to protect the grant-- a matter I have much doubt about. Even so, it must be conceded that the plaintiff could sue at law for infringement. Such an action does not involve the illegal agreement at all. The present theory is that any one so tainted as to take such an agreement from the patentee should be refused all equitable relief. Now, I do not understand that the so-called doctrine of unclean hands means that you may not have recourse to equitable remedies because in the past you have even committed a crime, or shown yourself otherwise immoral. A court of equity will refuse to...