Roberts Cone Mfg. Co. v. Bruckman

• Decision Date: 12 June 1920
• Docket Number: 5310.
• Citation: 266 F. 986
• Parties: ROBERTS CONE MFG. CO. et al. v. BRUCKMAN et al.
• Court: U.S. Court of Appeals — Eighth Circuit

266 F. 986

ROBERTS CONE MFG. CO. et al. v. BRUCKMAN et al.

No. 5310.

United States Court of Appeals, Eighth Circuit.

June 12, 1920

Rehearing Denied October 1, 1920.

H. A Toulmin, of Dayton, Ohio (Culver & Phillip, of St. Joseph Mo., and H. A. Toulmin, Jr., of Dayton, Ohio, on the brief) for appellants.

Albert E. Dieterich, of Washington, D.C., for appellees.

Before SANBORN and STONE, Circuit Judges, and MUNGER, District Judge.

STONE Circuit Judge.

Appeal from decree of infringement of Bruckman patent No. 1,071,027 covering a machine to manufacture ice cream cones. This decree was on a supplemental bill. The original proceeding was for infringement of the same patent by another machine, and resulted in a consent decree, adjudging validity and infringement of the Bruckman patent, and enjoining use of the machine there involved. This consent decree was entered during the trial of the case as a result of a licensing arrangement then made. Thereafter appellants changed the machine being used by them and refused to pay royalties under the license upon the new machine, claiming that it was an essentially different machine. Thereupon appellees applied for a contempt citation, and asked discovery of the new machine. The trial court ruled that there was no cause shown for such citation, allowed discovery, and stated that appellees might reform their pleadings into a supplemental bill, which they did, praying injunction, accounting, and cancellation of the former license as applicable to the new machine, and for general relief. A motion to reverse and transfer to the law docket of the trial court, filed in this court, was adversely determined. 255 F. 957, 167 C.C.A. 249.

The contentions of the parties here are most conveniently stated from the standpoint of the appellees, and are as follows: (1) That the consent decree estops appellants from questioning, in this supplementary proceeding, the validity of the Bruckman patent and the infringement by the old machine used by appellants at the time of that decree; (2) that the construction of the Bruckman patent in regard to equivalents should be liberal, as that patent was a pioneer in the industry of automatic cone making machines; (3) and that the new machine is in essence the same as the old; and therefore an infringement. The appellants claim the contrary as to these three contentions.

1. Consent decrees as to validity, scope, and infringement in patent cases are regarded as constituting no adjudication of such matters which will affect other than the parties consenting thereto. But they are intended by the parties to control their rights in respect to the matters covered thereby, and they do have that effect. The method of enforcing this result is by estopping either party from denying the binding effect of the decree so procured. When, as here, a patent is, in a consent decree, adjudged valid, and infringed by a certain machine, that decree has, as between those parties, settled that that patent is valid, and that machine is an infringement. When thereafter complainant desires by a supplemental bill to extend the relief to another machine, which he claims is essentially the same as the one held to be an infringement, the issue thus presented is whether, in the light of the patent as valid, the new machine is essentially the old infringement.

2. Such an inquiry into the similarity of the new machine and the old infringement must, of course, be made in the light of the claims, scope and character of the patent. It is therefore of importance to examine the contention of appellees that these patents should be liberally construed as to equivalents, because the patent is a pioneer. Appellants contend that this claim of pioneering is dissipated by an examination of the prior art and the prior commercial usage in the industry. It is therefore necessary to examine the patented machine and the prior art and commercial usage. The purpose and accomplishment of the patented machine is to receive sweetened batter, and through a continuous operation, during which the product is not touched by hands, to bake, extract, and place upon a receiving table finished ice cream cones. The method of operation is for a dipping arm to pick up batter from a receptacle, deposit this batter in proper quantity in cone-shaped molds, to place and secure the cores in the molds for the purpose of properly distributing and forming the cones, to pass this combination over a heating surface, where the batter is cooked, to then carry the cooked cone away from the baking place, to release the core and open the mold in such a manner that the cone will drop into a cutting tube, where surplus adherences of cooked batter are removed, and to deposit the finished cone upon a conveyor, where it is carried on to a packing table. A prime commercial result accomplished by the machine is the elimination of all contact of human hands with the cones during the process of production. There is considerable heat about cone machines, because of the baking unit. Handling under such conditions would be highly unsanitary; also, the sugar in the batter tends to cause adherence of the cones and the overflow from them to the molds, thus necessitating much handling to detach the cones. It is also claimed that it was difficult and hazardous for employes to handle these hot cones in the hot machine. By eliminating these objectionable features this machine has accomplished a desirable result in a novel and useful manner.

While only 13 of the 70 claims of the patent are involved here yet, for the purpose of testing the character of this patent as a pioneer, it should be considered as a whole, having in mind the entire invention, its purposes, and its results. The Bruckman patent was applied for May 11, 1910, and issued August 26, 1913. Appellants claim that at most it is but an assemblage of early known elements. Appellants classify these elements and their several anticipations as follows: The horizontal rotatable wheel, anticipated by Trewick, No. 967,147, application May 28, 1908, issued August 9, 1910; Flagstad, No. 1,200,600, application March 15, 1909, issued 1916; Croskey, No. 820,479, issued 1906; Dennison, No. 841,644, issued 1907. A series of separable molds, made in halves capable of opening and closing, with locking devices which are automatically operated to lock and unlock the mold halves, such mold being mounted on a horizontal rotatable table, Flagstad, supra; Dunn, No. 416,450, issued 1889; Croskey, supra; Dennison, supra. An adjunct to the molds, consisting of an arrangement of toggle bars to form locks for locking the mold halves together, and operable, at certain intervals, by cam...