Morgan Envelope Co v. Albany Perforated Wrapping Paper Co

• Decision Date: 19 March 1894
• Docket Number: No. 254,254
• Citation: 14 S.Ct. 627,38 L.Ed. 500,152 U.S. 425
• Parties: MORGAN ENVELOPE CO. v. ALBANY PERFORATED WRAPPING PAPER CO
• Court: U.S. Supreme Court

152 U.S. 425

14 S.Ct. 627

38 L.Ed. 500

MORGAN ENVELOPE CO.

v ALBANY PERFORATED WRAPPING PAPER CO.

No. 254.

March 19, 1894.

This was a bill in equity to recover damages for the infringement of three letters patent issued to Oliver H. Hicks, of Chicago, and assigned to the appellant, viz.: Patent No. 325,410, issued September 1, 1885, for a 'package of toilet paper,' known as the 'Oval Roll' or 'Oval King' package; (2) patent No. 325,174, issued August 25, 1885, for a 'toilet-paper fixture;' (3) patent No. 357,993, issued February 15, 1887, for an 'apparatus for holding toilet paper.' These are known as the 'Oval King' fixtures.

The answer made the usual denials of novelty and infringement.

Upon a hearing upon pleadings and proofs, the court dismissed the bill, except as to the fifth claim of patent No. 357,993, upon which a decree was ordered for plaintiff, without costs. 40 Fed. 577. From this decree plaintiff appealed to this court.

Melville Church, Joseph B. Church, and C. E. Mitchell, for appellant.

Esek Cowen, for appellee.

Mr. Justice BROWN, after stating the facts in the foregoing language, delivered the opinion of the court.

Prior to the inventions covered by the patents in this case, toilet paper had been put up in packages of sheets cut to a convenient size, sometimes attached together by a wire, or in Cylindrical rolls of continuous length, either perforated transversely at proper intervals for the convenient detachment of the sheets, or in similar rolls not perforated, but designed to be cut by a device having a sharp edge to which the rolls were attached. All these methods proved to be objectionable on account of the temptation offered to greed or wastefulness, in the facility with which unnecessary amounts of paper could be detached, which were either carried off or allowed to fall on the floor. Where perforated paper was employed in roll form, the litter was increased by the dropping of small particles of paper intended to have been removed by the perforating machine, but which remained attached until the paper was unwound, when they fell upon the floor, and became very difficult to remove.

1. In the specification of his patent No. 325,410, which is for a package of toilet paper, the patentee states that he had in view to furnish a toilet paper in the form which would prevent in a large measure this vast amount of wastage. 'In carrying out this object, I have put up one or more lengths of paper in the form of a continuous band (as contradistinguished from a roll) of oblong or oval shape; the short, rounded ends of the bundle thus produced serving as guides for determining the proper points at which the paper has to be separated in order to produce sheets of a size desirable for use, and affording also the most advantageous surfaces upon which to tear the paper. The band I make of a thickness calculated to produce sheets severed at the point stated of practical and economical lengths from the time the bundle is opened until it is consumed.'

The band he makes of an oblong or oval shape, so that it may be mounted in a fixture shown in a previous patent for that purpose, or used detached from the fixture, one hand of the user being slipped into the interior, and the other hand being employed to grasp the pendant end of the paper, and, by drawing the paper tightly over one of the short, rounded ends of the bundle, causing it to separate at that point, and produce a sheet of convenient length. His claim was for 'a bundle of paper consisting of one or more lengths, formed into a continuous band, whose internal diameter is greater than the thickness of the paper, substantially as described.' The invention in question, as described in the specification and illustrated in the drawings annexed to the patent, is for a band of paper rolled in an oval instead of the usual cylindrical shape, with a view of affording a convenient method of tearing off sheets of a proper size, the fracture in each case being at the end of the roll. It is difficult to see, however, how any waste is thereby prevented, since it is nearly, if not quite, as easy to unwind long strips of this paper from an oblong as from a cylindrical roll. So, too, if the patent were construed as for an oblong roll, the fact that, from time immemorial, cotton and woolen goods and silks have been almost universally wound about a flat board or core, precisely as described in the patent, would indicate that there is no novelty in the oblong or oval shape and that the patent, if supported at all, must be for the different purpose for which toilet paper is wound in this form.

Upon examining the claim, however, in connection with the original application, it appears that, if the patent involved any invention at all, it is not limited to bands of oval or oblong shape, since the claim contained in the original application was for 'a bundle of toilet paper consisting of one or more lengths of paper formed into a flexible continuous band of oblong or oval shape, the short rounded ends of such band serving as guides for determining the proper points at which the paper is to be separated in order to produce sheets of a size desirable for use, and affording, also, the most advantageous surfaces upon which to tear the paper, substantially as described.' This claim, which corresponds with the specification and drawings, and was Hicks' real invention, was rejected as indefinite, because it failed to point out any construction over an ordinary paper roll, and was also rejected upon a prior patent to one Peacock. The patentee thereupon amended his application by changing his claim to 'a bundle of paper consisting of one or more lengths, formed into a continuous band, whose internal diameter [by which we understand the internal diameter when rolled into a cylindrical form] is greater than the thickness of the paper, substantially as described.'

If the claim be good, it would seem to follow that any band of paper wound in such manner that the internal diameter is greater than the thickness of the paper would be an infringement, whatever be its shape, or for whatever purpose used. The size of the roll, too, is not made material, except that it must bear a certain relation to its inner diameter. Certainly it would apply to all toilet paper, even if wound in a cylindrical form, as the language of the claim, though not of the specification, indicates that it should be. It would also follow that, even if the roll of paper, when purchased, had an internal diameter less than the thickness of the paper, such internal diameter would become relatively greater with the progressive using of the paper, until its thickness was so far reduced as to become less than the internal diameter, when it would fall within the description of the claim. Indeed, it is difficult to see what function is performed by a band of paper so constructed, or what difference it makes whether the internal diameter is greater or less than the thickness of the paper, unless the paper be made in an oval form.

It is insisted in this connection, however, that under the words, 'substantially as described,' the patentee is entitled to claim a band of oval or oblong shape, and that, looking at his specification and drawing in connection with the claim, it is obvious that the latter should be so limited. But, the patentee having once presented his claim in that form, and the patent office having rejected it, and he having acquiesced in such rejection, he is, under the repeated decisions of this court, now estopped to claim the benefit of his rejected claim or such a construction of his present claim as would be equivalent thereto. Leggett v. Avery, 101 U. S. 256; Shepard v. Carrigan, 116 U. S. 593, 6 Sup. Ct. 493; Crawford v. Heysinger, 123 U. S. 589, 606, 8 Sup. Ct. 399; Union Metallic Cartridge Co. v. U. S. Cartridge Co., 112 U. S. 624, 5 Sup. Ct. 475.

It is true that these were cases where the original claim was broader than the one allowed, but the principle is the same if the rejected claim be narrower. Why the claim of the present patent was allowed after the rejection of the narrower claim does not appear. The objections made to the claim as originally presented seem to be equally applicable to this.

But, construing this claim as for an oval or oblong roll, it is clearly anticipated by the patent granted March 6, 1883, to one Peacock, for a toilet-paper case, used for carrying toilet paper, which was would in an oval form about a spool or core, precisely as described in plaintiff's patent. Apparently it differs from the Hicks roll only in being smaller, and having its core hinged to a stiff case, in which the paper, for convenience, was carried.

There was also put in evidence by the defendants a device known as the 'Wheeler Pocket Companion,' which was a small package of toilet paper of an oval form, differing from those covered by the Hicks patent only in size, and in the fact that no attention was paid to the relation of the inner to the outer convolutions, and no intent shown that when one convolution was torn off, the end of the next one would drop down into position to be grasped. While neither of these devices is a precise anticipation of the Hicks patent in the manner in which they are used, it is impossible to say that a mere enlargement of these devices to the size contemplated by Hicks would constitute invention, although by such enlargement the roll became capable of being used in a somewhat different manner.

2. Patents No. 325,174 and No. 357,993 are practically the same, and are for a...