Saranac Automatic Mach Corporation v. Wirebounds Patents Co

• Decision Date: 24 February 1931
• Docket Number: No. 51,51
• Parties: SARANAC AUTOMATIC MACH. CORPORATION v. WIREBOUNDS PATENTS CO. et al
• Court: U.S. Supreme Court

282 U.S. 704

51 S.Ct. 232

75 L.Ed. 634

SARANAC AUTOMATIC MACH. CORPORATION

v WIREBOUNDS PATENTS CO. et al.

No. 51.

Argued Jan. 13, 1931.

Decided Feb. 24, 1931.

Messrs. Howard M. Cox and Amasa C. Paul, both of Chicago, Ill., for petitioner.

Messrs. Laurence A. Janney, and Edward G. Curtis, both of New York City, for respondent.

Mr. Justice STONE delivered the opinion of the Court.

In this case certiorari was granted, 281 U. S. 711, 50 S. Ct. 346, 74 L. Ed. 1133, to resolve a conflict of decision between Circuit Courts of Appeals with respect to the validity of claim 25 of patent No. 1,128,145, granted February 9, 1915, application filed October 27, 1904, to Inwood and Lavenberg, for a machine for making box blanks. In the present suit, brought by respondents, in the District Court for Western Michigan to enjoin infringement of this and other patents, the District Court held the patent 'invalid if infringed,' and entered a decree for petitioner, 24 F.(2d) 872, which the Court of Appeals for the Sixth Circuit reversed, holding claim 25 valid and infringed. 37 F.(2d) 830. The Court of Appeals for the Seventh Circuit had held the patent invalid, Wirebounds Patents Co. v. Gibbons Box Co., 25 F.(2d) 363, affirming a decree without opinion of the District Court for Northern Illinois.

The present suit was based on three patents, all issued to the same patentees: The machine patent, already referred to; No. 1,128,144, issued February 9, 1915, application filed October 14, 1904, for a 'work holder,' used in connection with the box blank machine; and No. 1,128,252, issued February 9, 1915, application filed April 21, 1914, for a method of making wirebound boxes. The first two were based upon co-pending applications filed in October, 1904, and the third upon a divisional application cut out of the work holder application. Typical claims are printed in the margin.¹ A fourth product patent, now expired and only indirectly involved, was No. 799,854, issued to the same patentees September 19, 1905, application filed October 17, 1904 (reissued in 1907, No. 12,725), covering a specific form of box blank, which could be produced by the use of the machine and method patents, but also might be made without resort to either.

The court below, after pointing out that the three patents directly involved were all issued on the same day and will expire at the same time, and that there could be no commercially important infringement of any of the patents which did not infringe the machine patent, limited its decision to determining the validity and infringement of claim 25 of that patent. It gave the usual decree for injunction and accounting with respect to this claim, and dismissed the bill as to the work holder and method patents, but with leave to counsel to apply for further consideration of any other claim of the patents in suit if deemed necessary to settle the controversy. No such application was made, and it was conceded at the bar that the disposition here of the issues raised with respect to claim 25 will be, for all practical purposes, determinative of the case.

By the teachings of the Inwood and Lavenberg patents, to which reference has been made, wirebound box blanks may be produced, consisting usually of four panels which may be conveniently folded and attached to box ends so as to form strong, light weight, commercially useful boxes. The blanks, before folding, comprise the panels of side material in straight edged sheets of thin wood or veneer, stapled, at each end, to cleats placed at right angles to the side material, the staples srad dling reinforcing wire. The cleats, which have previously been step-mitered or beveled, and which in practice are usually eight in number, one at each end of the four panels of side material, are fastened to the side material in such position with respect to it and to each other that, when the blank is folded, the reinforcing wires serve as hinges; the ends of adjoining cleats engage; and the panels form the four sides of a box, with or without overlapping edges, as may be preferred.

Before Inwood and Lavenberg, the method of manufacturing box blanks, under the so-called Rosback patents, had been to form a blank of a single sheet of side material stapled, at each of its two sides, to a single cleat. The rigid blank formed by this first step was then prepared for folding by a second and distinct mechanical procedure, in the course of which each of the cleats was cut into four separate cleats, step-mitered at their ends, and the single sheet of side material scored. The blank was then capable of being folded by bending the side material along the scored lines so that the adjacent ends of the cleats would meet. Before any of their applications, Inwood and Lavenberg appear to have devised a machine or work holder for holding in position, and fastening, pre-formed cleats to a single piece of side material; but that did not wholly eliminate the second part of the earlier procedure, by which the side material was scored before folding. The final step which brought them to their improved method was taken only when both cleats and side panels, assembled in position, were fastened into a foldable box blank by a single operation. The difference between the two methods was that the old taught the production of foldable relationships by cutting the rigid box blanks. Inwood and Lavenberg taught the new by assembling and fastening together the separate elements. Their method constituted an important advance over the old, which had not been commercially successful. The new, by the substitution of a single for a two-step procedure, saved the expense and inconvenience of double handling, and made it practicable to use cleats which could be pre-formed in quantities cheaply, and permitted the use for that purpose of short and otherwise waste pieces of lumber. It eliminated certain mechanical difficulties of the old method of mitering and scoring the rigid blanks, and resulted in a product with fewer defects and which folded more easily than the forms produced by the earlier.

Numerous details of the new procedure had been taught by the prior art. The idea of folding wire- or metal-bound sides into a box was old. Averill (1900, No. 661,481) and Rosback (1898, No. 608,796) specifically taught the binding of the sides together with wire Howenstine (1891, No. 453,479), Hamilton (1887, No. 373,828), and others had developed the idea of using pre-formed cleats attached or to be attached to a plurality of side sheets. Rosback had developed elaborate machines for step-mitering (1898, No. 609,630; 1899, No. 623,258); and for stapling box blanks (1898, No. 614,348; 1899, No. 630,303); and devices for feeding box blank material into the stapling machine (1899, No. 625,958, No. 636,068).

The conception of Inwood and Lavenberg which was new, was that the pre-formed cleats and side materials could be assembled and so positioned with reference to each other, that they could be stapled together to manufacture, in a single stapling operation, the finished product, the box blank ready for folding. This constituted an important advance over the use of the rigid box blanks in the two-step method of the prior art, which had been developed by Rosback. The new method had a large and immediate commercial success, and we assume, as the court below held, that it involved invention. See The Barbed Wire Patent, 143 U. S. 275, 283, 12 S. Ct. 443, 36 L. Ed. 154; Krementz v. S. Cottle Co., 148 U. S. 556, 560, 13 S. Ct. 719, 37 L. Ed. 558; Minerals Separation, Ltd., v. Hyde, 242 U. S. 261, 37 S. Ct. 82, 61 L. Ed. 286.

This conceptio is that of the reissue (product) patent, held valid as a basic patent in Wirebounds Patents Co. v. Chicago Mill & Lumber Co. (D. C.) 238 F. 929, and by the Seventh Circuit Court of Appeals in Wirebounds Patents Co. v. Gibbons Box Co., supra. As it has now expired, the public is free to use the new procedure of making wirebound folding box blanks, so far as taught by that patent. The patent is for a product, an improved wirebound box blank, foldable into a box with overlapping sides. It describes the earlier two-step procedure by which the rigid box forms were first assembled and then, by a second separate step, prepared for folding by step-mitering the cleats and scoring the side material. The specification of the patent is: 'Our invention relates to certain improvements in wirebound boxes, especially of that class in which the blanks constituting the four sides of the box are assembled and secured in relative position to each other prior to folding by reinforcing wires, and has for its object the assembling and fastening together such parts constituting the completed blank so that the same when folded will produce overlapping edges of the side sheets.' The drawings of the patent, which show a completed blank ready for folding, read with the specifications, indicate unmistakably that the advance, achieved by the improvement over the existing method of manufacturing box blanks, was in the process, by which the product of the patent could be made by assembling and positioning pre-formed cleats and sides, so spaced that, when stapled, they will fold to form the four sides of a box.

Thus this patent...