Petersen v. General Seafoods Corporation

• Decision Date: 16 August 1933
• Docket Number: No. 2793.,2793.
• Citation: 66 F.2d 459
• Parties: PETERSEN v. GENERAL SEAFOODS CORPORATION et al.
• Court: U.S. Court of Appeals — First Circuit

66 F.2d 459 (1933)

PETERSEN v. GENERAL SEAFOODS CORPORATION et al.

No. 2793.

Circuit Court of Appeals, First Circuit.

June 30, 1933.

As Amended August 16, 1933.

George W. Hansen, of Chicago, Ill. (Jones, Addington, Ames & Seibold and Sidney Neuman, all of Chicago, Ill., and Nathan Heard and Frederick A. Tennant, both of Boston, Mass., on the brief), for appellant.

Hector M. Holmes, of Boston, Mass., and W. B. Kerkam, of Washington, D. C., for appellees.

Before BINGHAM, WILSON, and MORTON, Circuit Judges.

WILSON, Circuit Judge.

The original bill in equity brought by the appellant was against the General Seafoods Corporation, and alleged an infringement by the General Seafoods Corporation of two patents owned by the appellant, who will be hereinafter referred to as plaintiff, said patents being numbered, respectively, No. 1,681,009 and No. 15,683, the latter being a reissue patent. So much of the plaintiff's bill as related to patent No. 1,681,009 was later dismissed on plaintiff's own motion.

After answer to the original bill by the General Seafoods Corporation, the plaintiff filed a supplemental bill in which it joined the Frosted Foods Company, Inc., as codefendant, and alleged that the patent No. 1,773,079, known and hereinafter referred to as the Birdseye patent, originally issued to one Clarence Birdseye and by him assigned to the Frosted Foods Company, Inc., and the reissue patent, No. 15,683, of the plaintiff are interfering patents; that the defendants have continued to infringe the plaintiff's patent No. 15,683; and praying that the defendants Frosted Foods Company, Inc., and the General Seafoods Corporation be enjoined from manufacturing, producing, selling, or offering for sale any apparatus, processes, methods, or comestibles embodying the invention of the plaintiff described in patent No. 15,683, and that the so-called Birdseye patent No. 1,773,079 be adjudged inoperative and void as an interfering patent within the provisions of section 4918, R. S. (35 USCA § 66).

After hearing the plaintiff's testimony and such documentary evidence of the plaintiff as the court deemed admissible, the court sua sponte dismissed both the plaintiff's original and supplemental bills. From his decree the plaintiff appealed, alleging as error:

(1) That the court erred in finding as a fact that the scope of the Petersen reissue patent is limited to a process of handling and freezing comestibles, which consists essentially of packing them tightly in a container and immersing them in a refrigerant.

(2) That the court erred in finding as a fact that the process shown in the Petersen reissue patent is not infringed by a process of freezing, which consists of placing the food between two metal surfaces and spraying the outside of those surfaces with a freezing mixture.

(3) That the court erred in holding as a matter of law that the defendants' process complained of did not infringe claim 7 of the Petersen reissue patent No. 15,683.

(4) That the court erred in finding as a matter of law that the Petersen reissue patent No. 15,683, and Birdseye patent No. 1,773,079, are not interfering patents within the provisions of section 4918 of the United States Revised Statutes.

(5) That the court erred in excluding certain evidence offered by the plaintiff.

Other formal assignments were made but raised no issue not covered by the above assignments.

The law is well settled that, if upon the face of the pleadings or the plaintiff's evidence there is no infringement or interference, the court may dismiss a bill of this nature sua sponte. Bronk v. Charles H. Scott Co. (C. C. A.) 211 F. 338; Pelton v. Williams (C. C. A.) 235 F. 131, 134; Chase v. Reliable Mfg. Co. (D. C.) 58 F.(2d) 676; Friend v. Burnham & Morrill Co. (C. C. A.) 55 F.(2d) 150.

The plaintiff's original bill alleged infringement of claims 1 and 7 of the plaintiff's patent. Plaintiff, however, does not now claim any infringement of claim 1, which related to the handling of comestibles, such as fish, for refrigeration en masse, but bases his claims on an infringement of claim 7, which reads as follows:

"The process of freezing a plurality of fish without appreciable evaporation of moisture therefrom which consists in tightly packing the fish within a comparatively deep, elongated, narrow container and thereby substantially minimizing air pockets within the container, and then immersing the container in a low temperature refrigerating liquid of a level not permitting the entry of the refrigerant into the container, but substantially on a par with or above the level of the comestible contained therein, whereby all parts of the fish may come into close proximity of the surrounding refrigerating liquid and whereby a rapid dissipation of heat takes place from the closely packed fish directly contacting with the container walls."

It is not necessary on the issue of infringement to consider the claims in the Birdseye patent. It is only necessary to consider whether the process used by the defendants in refrigerating comestibles, including fish, as described by the plaintiff, and in the application for the Birdseye patent and certain publications by Birdseye himself, infringes upon claim 7 of the plaintiff's patent No. 15,683.

The plaintiff's patent No. 15,683 is a process patent, the function of which is the refrigeration of "a plurality of fish" without appreciable evaporation of the moisture contained in them by (1) tightly packing the fish within a comparatively deep, elongated, narrow container, thereby substantially minimizing air pockets within the container; (2) then immersing the container in a low temperature refrigerating liquid to a point above the level of the top of the comestible contained therein, without permitting the refrigerant to enter the container, so that practically all parts of the fish in the container may come into close contact with the metal walls of the container and be thus surrounded by the refrigerating liquid, whereby, through conduction, a rapid dissipation of heat takes place in the fish or comestibles in the container.

It is suggested that the Petersen patent is a pioneer patent, and therefore should be liberally construed, and that the Birdseye process, which performs the same function, though in a different manner, constitutes an infringement.

If a pioneer patent, the inventor is entitled to a broad range of equivalents, but, if he has simply improved upon the prior art, he is entitled only to such equivalents as are included in his improvement. McCormick v. Talcott, 20 How. 402, 15 L. Ed. 930; Chicago & N. W. Railway v. Sayles, 97 U. S. 554, 24 L. Ed. 1053; Morley Machine Co. v. Lancaster, 129 U. S. 263, 9 S. Ct. 299, 32 L. Ed. 715; Kokomo Fence Machine Co. v. Kitselman, 189 U. S. 8, 23 S. Ct. 521, 47 L. Ed. 689; Vol. 1, Walker on Patents (6th Ed.) § 230, in which the author, interpreting the McCormick Case, says:

"The original inventor of a machine will have a right to treat as infringers all who make machines operating on the same principle, and performing the same functions, by analogous means, or equivalent combinations; even though the infringing machine be an improvement on the original, and patentable as such. But if the invention claimed, be itself but an improvement on a known machine, by a mere change of form or combination of parts, the patentee cannot treat another as an infringer, who had improved the original machine, by use of a different form or combination, performing the same functions. The inventor of the first improvement cannot invoke the doctrine of equivalents to suppress any other improvement which is not a mere colorable invasion of the first."

Again, in construing the Sayles Case:

"If one inventor, in a particular art, precedes all the rest, and strikes out something which underlies all that they produce, he subjects them to tribute. But if the advance toward the thing desired is gradual, so that no one can claim the complete whole, then each inventor is entitled to the specific form of device which he produced, and every other inventor is entitled to his own specific form, so long as it differs from those of his competitors and does not include theirs."

The desirability of preserving foodstuffs by refrigeration is no new discovery, or that it may be done by the application of cold or heat. The process of immersing a comestible to be preserved, such as fish, in a cold brine, or placing it in a closed container and immersing the container in a cold brine or in a liquid that will not congeal at a temperature far below the freezing point of water, is also old.

In view of the prior art in refrigeration processes, an early exemplification of which is recognized in the old and well-known ice cream freezer — which, while it produced a delectable comestible, had the disadvantage of requiring somewhat laborious manipulation — and the development of the art as outlined by the report in 1920 of the British Food Investigation Board on refrigeration of food products, and particularly fish, and, as admitted by Petersen in his application, we think the Petersen patent No. 15,683 cannot be deemed a pioneer patent, but is merely a step in the development of the art.

A patent for refrigerating fish by the salt and ice method was granted in this country as early as 1861. In 1889 a patent was granted in England to Everard Hesketh and Alexander Marcet. The invention claimed by them was described as follows:

"According to our invention, we freeze the meat or other perishable articles by massing cooled brine or other cooling medium into a tank or vessel or tanks or vessels of sufficient size to allow of the meat or perishable articles being wholly or partially immersed directly in the cold brine either with or without a watertight covering to prevent contact with the brine, or we may place the meat or perishable articles in small watertight boxes of such a size as to just admit the carcase or article to be...