Perkins Glue Co. v. Standard Furniture Co.

• Citation: 279 F. 458
• Parties: PERKINS GLUE CO. v. STANDARD FURNITURE CO. et al.
• Decision Date: 04 February 1922
• Court: U.S. District Court — Northern District of New York

279 F. 458

PERKINS GLUE CO. v. STANDARD FURNITURE CO. et al.

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

February 4, 1922

Gorham Crosby, of New York City (William Houston Kenyon, of New York City, of counsel), for plaintiff.

Charles L. Earl, of Herkimer, N.Y. (James A. Watson, of Washington D.C., of counsel), for defendants.

COOPER District Judge.

This suit is for infringements of claims 13, 28, 30, 31, and 38 of Perkins reissue letters patent No. 13,436, granted July 2 1912, assigned to the plaintiff corporation. The patent relates to glue manufactured from carbohydrate base, cassava starch being preferred and in the practice mostly used.

Before Perkins, animal glue was practically the only glue used in the art of furniture veneering, where strong joints were required. Perkins discovered that there is a point of degeneration of starch at which, when the starch so degenerated is treated to not to exceed three parts of water and a solvent there is produced wood-veneering glue as good or better than animal glue. The starch adhesives known before Perkins either contained too much water, or, if they contained the requisite small amount of water, lacked for other reasons the cohesive and adhesive strength and the spreading and flowing qualities necessary in the wood-veneering art.

Glue for wood veneering is spread uniformly by machinery, and must have proper consistency to flow through feed pipes to the spreading rolls, so as to properly penetrate the wood, as well as cover the surface. It must not penetrate too far, so as to leave an empty joint. It must be homogeneous and nongelatinous, and, aside from its adhesiveness, it must have great cohesive strength.

The Perkins invention was very successful, as measured by the millions of pounds of glue sold each year. His prepared glue although viscous, is amply fluid. It mixes well, and flows well through the pipes to the reservoir and rolls of the spreader, and spreads rapidly and properly over a large square area, and exhibits the peculiar degree of penetration required. Its fluidity is such as to permit of sufficient penetration to give it firm rootage in the wood pores, while its viscosity is such as to prevent excessive dissipation in penetration. Its cohesive strength is amply in excess of the requirement for a wood joint.

The Perkins patent discloses two steps: A first or degenerative step, to obtain a suitable base; and a second or final step, for converting the base into glue. The first step is not material in this case. In the second step, the dry, degenerated, or converted material-- i.e., the glue base obtained by following the first step-- is mixed with two to three parts of water by weight, according to the economy and strength of the glue joint desired. The batch is then agitated with a carefully regulated heat, if any. The liquid suspension thus formed is treated with a reagent, for which preferably an aqueous solution of caustic soda or potash, using (with normal temperatures) from 6 to 10 per cent. of the weight of the dry powder, of dry caustic soda or equivalent of soda potash, is employed. The alkali is best added in the form of a solution of from 33 per cent. to 50 per cent. strength, to unite with one or more of the starch molecules and with the water to form a colloidal compound. The result is the Perkins glue.

Claims 28, 30, and 31 are for the ultimate prepared glue as a product. Claim 30 is a good example:

'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 hydroxide.' Claims 13 and 38 are the process claims of making the glue. These claims are as follows:

'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.'

'38. The process of making a wood glue, which consists in suspending a glue base containing amylaceous matter insoluble in water in about three parts or less by weight of water, and treating the base with an alkali properly proportioned, substantially as described, to produce a glue having a lasting viscosity to flow through pipes and the adhesiveness of animal glue.'

The defendants omit the first step, but take a cassava starch as a base, and substantially follow the second step of the Perkins patent, and get glue like Perkins glue.

The defenses are: (1) Plaintiff's patent is not infringed; (2) plaintiff's claims are invalid, because of prior art; (3) the subject-matter was in public use more than two years before the filing of the application for a patent; (4) the claims of the reissued Perkins patent in suit are invalid, as embodying new matter inserted subsequent to the death of Perkins; (5) in view of a disclaimer filed by the plaintiff as to claims 13 and 38, these claims are invalid, or there is no infringement.

These defenses will be taken up in inverse order. As to the disclaimer (5), the Circuit Court of Appeals for the Seventh Circuit, in Solva Waterproof Glue Co. v. Perkins Glue Co., 251 F. 64, 163 C.C.A. 314, considered claims 13 and 38 for the process of making glue too broad, apparently because it did not appear that they exclude what was old in the art, and so held them invalid. Immediately thereafter the plaintiff corporation filed a disclaimer with the Patent Office, disclaiming from claims 13 and 38 any process of making glue, excepting where the starch or starchy carbohydrate subjected to the process is degenerated to the extent described in the patent. Thereafter Judge Sessions, in Perkins Glue Co. v. Hood et al. (D.C.) 279 F. 454, held claims 13 and 38, as limited by the disclaimer, to be valid and infringed. This was followed by Perkins Glue Co. v. Holland Furniture Co. (D.C.) 279 F. 457, decided July 8, 1921, to the same effect. In view of the language of both the opinion of the Circuit Court of Appeals in the Solva Case and its mandate, this court feels constrained to adopt a view similar to that of Judge Sessions and hold that claims 13 and 38, as limited by the disclaimer are valid. Infringement is referred to later herein under that subject.

Upon defense (4), that the claims in suit embody new matter not within the scope of the original application, subscribed and sworn to by Perkins, the Circuit Court of Appeals in the Solva Case, 251 F. 64, 66, 163 C.C.A. 314, 316, said:

'Owing to the facts that the inventor died in 1910, before the amendments were made which enter into the claims in suit, and that such amendments were made by his executrix without their being sworn to as required by statute, appellants insist that the same are invalid, as new matter. For appellee it is insisted that said amendments are not new matter, but merely elaborations of the process and product claims of the original patents in suit. While the added matters may in a sense be new, we do not regard them of so important a character as to constitute that class of new matter which would be invalid for want of an oath under the circumstances. They are related to the original purposes and objects set out in the original specification and claims, though some of them approach the border line.'

With that conclusion this court is also in accord.

Defendants' third defense is that the Perkins patent is wholly invalid, because the subject-matter was in use more than two years before Perkins filed his application for a patent. This defense rests upon alleged public use at Poplar Bluff, Mo. The evidence as to the Poplar Bluff practices was before the court in the Solva Case, and has been stipulated into the record here.

In the District Court, Judge Sanborn held in the Solva Case, 223 F. 792, that the practice at Poplar Bluff was largely experimental, and, while the Circuit Court of Appeals did not wholly agree with this view, the court decided against the defense, and affirmed the decision on this point, on the ground that there was a substantial difference between the glue of the patent and that used at Poplar Bluff. This court feels that, in view of the substantial identity of the evidence, the decision in the Solva Case should be followed, in the absence of reasons compelling a contrary holding. Even if not controlling, defendants have failed to prove prior use at Poplar Bluff beyond a reasonable doubt.

Coming now, to the defense numbered 2 above, the prior art, it is found that most of the patents cited by the defendants have heretofore been dismissed by the courts as not being...