Maulsby v. Minneapolis Casket Co., 10537.

• Decision Date: 29 June 1936
• Docket Number: No. 10537.,10537.
• Citation: 84 F.2d 107
• Parties: MAULSBY v. MINNEAPOLIS CASKET CO., Inc.
• Court: U.S. Court of Appeals — Eighth Circuit

84 F.2d 107 (1936)

MAULSBY v. MINNEAPOLIS CASKET CO., Inc.

No. 10537.

Circuit Court of Appeals, Eighth Circuit.

June 6, 1936.

Rehearing Denied June 29, 1936.

John E. Stryker, of St. Paul, Minn. (H. S. Johnson, of St. Paul, Minn., on the brief), for appellant.

Ralph F. Merchant, of Minneapolis, Minn. (Merchant & Kilgore and Safford, Putnam, Campbell & Levitt, all of Minneapolis, Minn., on the brief), for appellee.

Before GARDNER, SANBORN, and BOOTH, Circuit Judges.

GARDNER, Circuit Judge.

This is a suit for infringement of two patents, one, No. 1,724,493, dated August 13, 1929, and a reissue patent No. 18,705, dated January 3, 1933, both of which relate to improvements in fabric-forming machines for use in making decorative designs in casket trimmings. Claim 6 only of the original patent, No. 1,724,493, is charged to have been infringed by defendant's device. This claim reads as follows:

"6. In a machine of the character described, a shirring bar comprising parallel, spaced apart rods and pattern blocks mounted adjustably on said bars for movement longitudinally thereof, said blocks each comprising a base portion with inturned edge flanges forming channels wherein the said rods are slidably contained and having an upwardly directed portion overlying the base and a horizontally extending portion with pins projecting upwardly therefrom."

The claims of the reissue patent No. 18,705 considered by the trial court and now presented here on this appeal, are as follows:

"1. In a fabric forming machine of the character described, a frame, a bed of fabric shaping elements mounted in the frame and movable from and toward each other, both lengthwise and transversely of the frame and spaced from each other, and over which a fabric piece may be spread, means associated therewith for drawing the said fabric piece about all sides of said shaping elements except their mounting surfaces, incident to their being moved together, thereby to cause the fabric to conform to the shape of the elements.

"2. In a machine of the character described, a plurality of fabric shaping blocks in characteristic shapes or designs, mounted for movement from and toward each other, and over which a fabric piece may be applied, means on the blocks for holding the fabric piece in place against slippage relative thereto and means for drawing the fabric piece downward and against all sides of the blocks except their mounting surfaces so as to shape it in accordance with the definite shapes of the blocks

"3. A fabric forming machine, comprising a frame, a plurality of bars supported in parallel relation in the frame for adjustment toward each other, a plurality of fabric shaping elements slidable on each of the said bars and adjustable toward each other, and over which a fabric piece may be applied; said elements each being of a definite design, and means for drawing the fabric piece about the elements to embody therein definite shapes corresponding to the shapes of the elements."

"6. In a machine of the character described, a plurality of shaping elements arranged on a base in spaced relation, and over which a fabric piece may be spread, means whereby the elements may be moved toward each other and means whereby the fabric may be drawn down over the elements and gathered about all sides except their mounting surfaces coincident with the movement toward each other.

"7. In a machine of the character described, a base, a plurality of fabric shaping elements arranged thereon in spaced relation and across which a fabric piece may be spread and means arranged to act against the fabric piece whereby it will be folded down about each of the said elements and gathered about all sides thereof except their mounting surfaces to create designs corresponding to the shape of the elements and providing a fullness of material between the elements from which material for the adjacent designs is drawn without stretching or causing damage to the fabric."

The lower court found that claim 6 of patent No. 1,724,493 was not infringed; that the claims of the reissue patent No. 18,705, were anticipated by the prior art as exemplified by the Mrock patent, No. 1,042,715, and hence were invalid for want of invention; that plaintiff, in the prosecution of its original application for patent No. 1,733,353, canceled a group of claims after rejection by the Patent Office, which are identical in scope with the claim of reissue patent No. 18,705, and thereby abandoned the subject-matter of the claims of the reissue patent; that defendant extensively used its alleged infringing device between the date of issue of the original patent, No. 1,733,353, and the date of application for reissue of reissue patent No. 18,146, which was later reissued into No. 18,705, involved in this suit; and that defendant thereby acquired an irrevocable license to use machines of the character of plaintiff's, by reason of an intervening right. The court entered decree for defendant in accordance with its findings and conclusions, and, from the decree so entered, plaintiff prosecutes this appeal, in which he directly challenges the correctness of the court's findings and conclusions.

It is not claimed that plaintiff's device was a pioneer invention, but the patents disclose on their face that the invention relates to "improvements in forming machines, and in particular to machines for forming fabric into decorative designs." We shall first consider the contention that claim 6 of patent No. 1,724,493 was infringed. This claim is separable into six elements: (1) "A shirring bar comprising parallel spaced apart rods;" (2) "pattern blocks mounted adjustably on said bars for movement longitudinally thereof;" (3) "said blocks each comprising a base portion with inturned edge flanges forming channels wherein the said rods are slidably contained;" (4) "and having an upwardly directed portion overlying the base;" (5) "a horizontally extending portion;" (6) "with pins projecting upwardly therefrom."

Mr. Zene R. Maulsby, one of the patentees, upon examining defendant's structure produced at the trial in the lower court, testified as follows:

"Q. Said blocks each comprising a base portion with inturned edges forming channels wherein the said rods are slidably contained. Is that true? A. I do not see any inturned edges on the block.

"Q. As a matter of fact, it is not there, is it? A. No, sir."

What we have designated as the third element of this claim 6 is not present in defendant's structure. Infringement of a combination patent is not shown unless it appears that the alleged infringing device uses the entire combination, and hence defendant's structure does not infringe unless defendant has used the mechanical equivalent of plaintiff's structure. An examination of the drawings discloses that the mountings used by defendant are substantially the same as those disclosed by the Mrock patent, while those used in the plaintiff's...