Perkins Glue Co. v. Gould Mfg. Co.

• Decision Date: 03 May 1922
• Docket Number: 1118.,1117
• Citation: 280 F. 728
• Parties: PERKINS GLUE CO. v. GOULD MFG. CO. et al. SAME v. WISCONSIN CHAIR CO. et al.
• Court: U.S. District Court — Eastern District of Wisconsin

280 F. 728

PERKINS GLUE CO. v. GOULD MFG. CO. et al.

SAME v. WISCONSIN CHAIR CO. et al.

Nos. 1117, 1118.

United States District Court, E.D. Wisconsin.

May 3, 1922

Gorham Crosby, of New York City, and Lines, Spooner & Quarles, of Milwaukee, Wis., for plaintiff.

Pennie Davis, Marvin & Edmonds, of New York City, James A. Watson of Washington, D.C., and Quarles, Spence & Quarles of Milwaukee, Wis., for defendant.

GEIGER District Judge.

These two cases rest upon the reissue patent to Perkins which was the subject of consideration in Perkins Glue Co. v. Solva Waterproof Co. (D.C.) reported in 223 F. 792 (D.C.N.D.Ill.) and Id. (C.C.A.7th Cir.) 251 F. 64. Claims Nos. 28 30, and 31 are in issue:

'28. A glue comprising cassava carbohydrate rendered semifluid by digestion and having substantially the properties of animal glue.'

'30. A wood and fiber glue formed of a starchy carbohydrate or its equivalent by union therewith of about three parts or less by weight of water and alkali metal hydroxid.

'31. A wood and fiber glue containing amylaceous material as a base dissolved without acid in about three parts of water or less, and being viscous, semifluid and unjellified.'

It will be assumed that, nominally, at least, the above three claims were comprehended within the decree in the Solva Case as valid, and therein held infringed. But the present case, in view of the determination by the Circuit Court of Appeals, presents sharply the question whether, in the light of the determination by said court upon other claims of the patent, these three claims can be or were intended to be held valid, without any limitation whatsoever. The plaintiff contends that such claims were recognized as broadly valid, covering a new product, and therefore the product-- i.e., 'a glue comprising cassava carbohydrate rendered semifluid by digestion and having substantially the properties of animal glue'-- cannot be made by any process without leave or license of the plaintiff. The defendant contends that the determination by the Circuit Court of Appeals limited the validity of the three claims in question to a product made according to processes held valid by the Circuit Court of Appeals, but do not cover a product made according to other processes and particularly processes, claims for which were held invalid in the identical case determined by the Circuit Court of Appeals, or claims which plaintiff 'disclaimed,' as hereinafter noted.

In the Solva Case process claims were held valid, among them:

'19. In the process of making good glue, the combination of the following steps: Agitating a cassava carbohydrate with a digestive agent to decrease its water absorptive properties, without rendering the carbohydrate materially soluble in cold water, and then putting the product thus produced into a solution containing about three parts or less by weight of water to produce a glue for application.

'20. The process of making glue, which consists in agitating a starchy carbohydrate with water and a digesting agent to reduce the water absorptive properties of the carbohydrate without rendering it materially soluble in water then mixing the carbohydrate with water and caustic alkali, the amount of water used being about three parts or less by weight of dry carbohydrate, the amount of caustic used being about ten per cent. or less by weight of dry carbohydrate to form the glue as distinguished from mucilages, sizes, and paste.'

See, also, other two-step claims in patent.

Claims 10, 12, and 13 of the patent are pertinent to the questions now presented:

'10. The process of making glue which consists in dissolving cassava carbohydrate in caustic alkali until a glue is formed as distinguished from mucilages, sizes and pastes.'

'12. The process of making a glue, which consists in mixing starch with water and caustic alkali to dissolve the carbohydrate, the amount of water used being about three parts or less by weight of dry carbohydrate so that a wood glue is formed as distinguished from mucilages, sizes and paste.

'13. The process of making a wood glue which consists in treating a suitable starchy product a material portion of which is substantially insoluble in water with a solvent of cellulose and about three parts or less by weight of water, to produce a glue having adhesive powers substantially as great as those of good animal glue.'

The Circuit Court of Appeals dealt thus with the decree of the District Court:

'The decree of the District Court sustaining the claims for a glue base process and product and for the so-called 'second step' as such is reversed, and that part of it which upholds the claims of the patent for the final process and the resultant product respectively is affirmed. * * * '

When the case was remitted to the District Court for entry of a decree upon this mandate, the parties appeared to be at variance respecting the effect of the appellate ruling, and Judge Sanborn expressed himself in a memorandum:

'The opinion of the Circuit Court of Appeals is said by counsel for all parties to be perfectly clear, but they differ radically as to its meaning and submit totally different forms of decrees. The opinion of Judge Kohlsaat requires very careful study, as well as the patents, and even then the opinion is obscure and another appeal may be necessary to fully determine its meaning. To the best of my ability I will endeavor to state that meaning as I understand it. ' The first process or step of the patent is for the purpose of creating a suitable starch paste and then applying to that base the second step in order to produce the final product or starch glue. These are the only steps or processes described and they may be taken singly or together. Both are old and unpatentable when taken separately, but when joined together to produce starch glue which has the properties described by Mr. Perkins and which is as good or better

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