E. N. Rowell Co. v. William Koehl Co.
| Citation | 216 F. 780 |
| Parties | E. N. ROWELL CO. v. WILLIAM KOEHL CO. |
| Decision Date | 31 August 1914 |
| Court | U.S. District Court — Western District of New York |
Briesen & Knauth, of New York City, for complainant.
A. C Wade, of Jamestown, N.Y. (Melville Church, of Washington D.C., and Frank Keiper, of Rochester, N.Y., of counsel), for defendant.
The Rowell & Little patent, No. 844,190, issued February 12 1907, on application filed May 15, 1894, infringement of which is charged in the bill, relates to paper box making machines. Composing the top and bottom portions of the boxes are three separate and distinct parts, which are united by the co-operation of different instrumentalities embodied in the patented machine, such parts being (1) a ring or cylinder; (2) a disk, which is automatically pressed against the top of the ring; and (3) a wrapper or strip of paper for pasting the ring and disk together in such a way that the wrapper encircles the outside of the ring and projects at the edges. The top and bottom parts of the box are similar, save that an additional projecting ring is inserted in the bottom portion, over which the top portion is fitted. In finishing the boxes the operator removes them from the mandrel, and the edge of the wrapping paper at the disk end of the ring is pressed against the flat side of the disk, while the edge at the open end is pasted down on the inner side of the ring. The additional ring is then inserted in the bottom portion of the box, and a decorative strip of paper is sometimes added but with these features we are not here concerned, as the patent in suit is simply for automatically uniting the disk and ring by a strip of gummed paper. Although the paper ring is manually placed on the upper mandrel while it is at rest, and the box afterwards removed therefrom by hand, the ring and disk are nevertheless joined together by automatic action of the machine-- that is, by the intermittent rotation of a frame to which the mandrels are attached. The specification says:
The claims relied upon are broadly for a combination of elements, and they read as follows:
Claim 1 emphasizes the use of a mandrel in combination with a movable table or support, and claim 3 of a reciprocating table in combination with the mandrels to bear successively against the said table, while the fifth claim refers to the movable table with mandrels bearing against it. According to the specification, the paper disks, which are contained in a cylindrical magazine attached to the rear side of the main frame, are automatically brought, by means of a follower device, against the ring, which has been manually placed upon the upper mandrel while the wrapper is carried along on a raised portion of the reciprocating table.
The important defenses are invalidity, limitation of the claims, and noninfringement. It is sharply disputed that the claims in controversy are of narrow scope and limited to the reciprocating or movable table; the complainant contending that the claims are sufficiently broad to include the pressing wheel used by the defendant in co-operation with the rotatable mandrels.
If the patent is not a basic one, the charge of infringement is not sustained. The principal patents cited to limit the scope of the claims are the patent to Terry, No. 25,373, dated September 6, 1859, to Maxfield, No. 52,432, dated February 6, 1866, to Hatfield, No. 67,050, dated July 23, 1867, and No. 100,621, dated March 8, 1870, and to Johnston, No. 514,149, dated February 6, 1894. There is no doubt in my mind that the combination in suit of a reciprocating or movable table with two mandrels, or a rotating frame movable towards and from said table, with the various instrumentalities for pasting the disk to the ring body, was an improvement over the prior art, which prior art, however, precludes construing the claims in suit broadly enough to include defendant's machine, even though it achieves the same result. Cimiotti Unhairing Co. v. American Fur Refining Co., 198 U.S. 399, 25 Sup.Ct. 697, 49 L.Ed. 1100.
It is insisted that there is a radical difference between complainant's machine and those of the prior art, which, as shown by the evidence, were for making hat boxes, collar boxes, and powder and cascarilla boxes. No reference whatever is found in the specification and claims in suit limiting the patent to the automatic manufacture of pill boxes, or small-sized boxes, as distinguished from large ones; and complainant's machine is, I think, readily adaptable to the manufacture of different sizes and types of paper boxes, and therefore the prior art figures as an important factor in the determination of the scope of the disputed claims.
Referring to the prior art, it appears that Maxfield, many years before the patent in suit, manually operated a machine for making collar boxes; the specification describing mechanism for securing a cylindrical body to a circular head by means of a strip of paper would around the box body, the instrumentalities for winding which consisted of a rotary mandrel co-operating in its forward and backward movements with a rotary...
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E. N. Rowell Co. v. William Koehl Co.
...for appellant. Frank Keiper, of Washington, D.C. (Melville Church, of Washington, D.C., of counsel), for appellee. For opinion below, see 216 F. 780. The N. Rowell Company is a corporation organized and existing under the laws of the state of New York and will be referred to as complainant.......