Perkins Glue Co. v. Solva Waterproof Glue Co.

• Decision Date: 19 June 1915
• Docket Number: 127.
• Citation: 223 F. 792
• Parties: PERKINS GLUE CO. v. SOLVA WATERPROOF GLUE CO. et al.
• Court: U.S. District Court — Northern District of Illinois

223 F. 792

PERKINS GLUE CO. v. SOLVA WATERPROOF GLUE CO. et al.

No. 127.

United States District Court, N.D. Illinois, Eastern Division.

June 19, 1915

Brown Hanson & Boettcher, of Chicago, Ill., and Wm. Houston Kenyon Robert N. Kenyon, and Gorham Crosby, all of New York City for complainant.

Rector Hibben, Davis & Macauley, of Chicago, Ill., and Livingston Gifford, of New York City, for defendants.

SANBORN District Judge.

This is a suit for infringement of United States reissue letters patent No. 13,436 and United States original letters patent No. 1,020,656; the claims relied upon being Nos. 11, 13, 16, 19, 20, 24, 28, 30, 31, 32, 37 and 38 of the reissue patent and Nos. 1, 2, 3, 6, 7, and 9 of patent No. 1,020,656. Both patents were applied for by Frank G. Perkins, and issued to the complainant.

The patents relate to the process of making starch glue, also to the glue itself; cassava starch being preferably employed. The first or reissue patent covers in its first step the use of acid and heat, but the second employs an alkali without heat. Hence the first is called the acid, and the second the alkali, patent. The process is described in the second patent thus:

'As an illustration of my process, I preferably take the cassava carbohydrate in dry form and mix with it a small amount of water and provide agitation. To this batch I then add preferably from 1/4 per cent. to 1 per cent. by weight of sodium peroxid in the form of a solution of substantially 20 parts of water to 1 part of peroxid by weight. Shortly before or after this treatment I also add 1/4 per cent. to 1/2 per cent. by weight of caustic soda in the form of a solution of about 10 parts of water to 1 part of caustic by weight. These proportions of reagents are based upon the weight of dry materials. This mixture is more or less continuously agitated for about 12 hours, but without the application of heat. The batch is then removed and dried, and is made ready for shipment to the consumer in dry form, if it is not to be used at the place where made. The glue base is preferably left in this condition until just before it is desired to use it, when it is treated in accordance with the second part of my process. The dry material obtained from the first part of my process is mixed with preferably from 2 to 3 parts by weight of water, according to the economy and strength of glue joint desired. A liquid suspension is thus formed, which is agitated and treated with a reagent which will act to dissolve the material. I believe the result is a colloidal solution. For this purpose I preferably use an aqueous solution of caustic soda or potash, using from 6 to 10 per cent. of the weight of the dry powder, of dry caustic soda, or equivalent of caustic potash. The alkali is best added in the form of a solution of from 33 per cent. to 50 per cent. strength.'

Claims 7 and 9 are given as most nearly expressing the two steps referred to:

'7. The process of making a wood glue, which consists in agitating a starchy carbohydrate or its equivalent with a solution of sodium peroxid and caustic soda to decrease the water absorptive properties of the carbohydrate without rendering the carbohydrate materially soluble in water, to properly proportion the viscosity, adhesiveness, and cohesiveness resulting when the carbohydrate is dissolved to form glue, and dissolving the product thus produced with caustic soda, or its equivalent, and about 3 parts of water or less, to produce a glue for application.'

'9. The process of making glue, which consists in treating a suitable amylaceous material in two stages, in the first stage treating it with sodium peroxid, or its equivalent, and caustic soda, or its alkali equivalent, and in the second stage treating with caustic soda, or its equivalent, to form an alkaline wood glue.'

It is claimed for Perkins that he was the first to produce wood glue from starch which could be used in the wood veneer art with results equal to animal glue, and that he was able to get this result only after the most extended and patient experiment for a number of years. It is conceded that starch sizes and pastes had been produced by others, but it is said he was the first to discover the suitable proportion and co-ordination of the variable factors of the two successive steps; the first a slow and partial starch-degenerating step, and the second an alkaline dissolving step, so regulated as to make the product like good animal glue of the proper viscosity to be spread by machinery over a large surface, and of suitable cohesiveness in itself and adhesiveness to the wood, and possessing penetration and holding power, as well as being moisture proof and not affected by heat or drought. It is also claimed that substantially all the prior art was considered by the Patent Office on Perkins' applications, and that he was granted a German patent after strenuous opposition, and upon a full hearing, accompanied by actual experiments and tests.

There are many prior patents covering vegetable paste, size, and mucilage. Of these are the French patent to Ferdinand Virneisel, No. 337,001, issued November 16, 1903; the German patent to Gerson & Sachse, No. 167,275, of January 31, 1906 (which is the German edition of Virneisel); the German patent to Kantorowicz, No. 88,468, of August 7, 1896; and the American patent to Higgins, No. 579,872, of 1897. Of these the best examples are Virneisel and Gerson & Sachse. If the patents in suit were only for sizes, pastes, or mucilages, they could only be sustained as covering specific processes. But it is claimed that Perkins was the first to teach the practical art of making vegetable glue equal to animal glue, and that, even if his glue base is substantially the same as that of Virneisel (which is not admitted), he applied it to a new use of great utility by producing a cheaper adhesive, as good as animal or hide glue, less objectionable as to odor and in other respects. It is further claimed that defendants deliberately appropriated the Perkins base after it had become successful, by sending an agent to the Perkins manufactory under a false name, hiring a perkins foreman, advertising that they could produce the Perkins base, and using the identical process for awhile, and then changing it only in an unimportant particular.

Defendants do not make, use, or sell the Perkins glue as it is after the second step, ready to apply to the wood veneers. They only make the Perkins glue base, and sell it to wood veneer manufacturers, who are equipped with the tanks, pipes, rolls, and other machinery used for spreading the product. If they do not infringe, therefore, by producing the base, they can be held as infringers only if the facts justify a finding of contributory infringement.

The veneer gluing industry is now very extensive. Veneers are made with from two to five layers, often with the grain at right angles in the adjacent sheets, and are very strong, durable, and ornamental. Before the Perkins invention the more expensive animal glue was used exclusively for this purpose, but the former may now be used as a substitute. It must, however, have a large footage in order to compete. One pound should cover an average of 50 square feet. It must be spread by machinery, have the proper consistency to flow through feed pipes to the spreading rolls, properly penetrate the wood as well as cover its surface, and must not penetrate too far so as to leave an empty joint. It must be homogeneous and nongelatinous, and above all possess great cohesive strength and great adhesion to the wood. It should dry rapidly, and never contract materially, so as to destroy cohesion. The necessity or desirability of these qualities, and others which might be mentioned, shows the exacting character of the glue veneer art, so it is not strange that it should require such long and patient experiment as the testimony shows.

The Perkins invention has been very successful. Millions of pounds of what is called the glue base (being the product of the first step of the alkali patent) are sold each year. Apart from certain equities and presumptions favorable to the complainant, the following account of the prior art and defendants' practice, written by defendants' counsel, is a clear and generally fair statement:

'At the time Perkins entered this field it had long been old to form adhesives by dissolving starch in a suitable aqueous solution in different proportions of starch to solution, according

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