Straight Side Basket Corporation v. Kull

• Decision Date: 27 September 1938
• Docket Number: No. 1992.,1992.
• Citation: 24 F. Supp. 771
• Parties: STRAIGHT SIDE BASKET CORPORATION et al. v. KULL et al.
• Court: U.S. District Court — District of Idaho

24 F. Supp. 771

STRAIGHT SIDE BASKET CORPORATION et al. v. KULL et al.

No. 1992.

District Court, D. Idaho, S. D.

September 27, 1938.

Edwin T. Bean and Richard W. Treverton, both of Buffalo, N. Y., and Richards & Haga, of Boise, Idaho, for plaintiffs.

Herbert H. Porter, of Washington, D. C., and George Donart, of Weiser, Idaho, for defendants.

CAVANAH, District Judge.

The plaintiffs bring this patent suit based upon the Schmidtke patents 1752856 and 1895586, relating to the manufacture of fruit and vegetable baskets.

The patents were issued to St. Joe Iron Works, now the St. Joe Machines Incorporated. The Straight Side Basket Corporation acquired exclusive right to issue licenses under the patents. The validity of the claims involved of the patents and infringement are in dispute. The plaintiffs assert that defendants infringed claims 1, 2, 4, 5, 6, 7, 15, 16, 17, 18 and 19 of patent 1752856, and claim 2 of patent 1895586, which relate to the machine and apparatus and method used. The Defendant Kull was licensed to manufacture under the patents from April 1, 1930 to May 18, 1937 and received four licenses covering four different sets of machine attachments. During that period he paid the license fees, and shortly after the termination of the license agreements, which was on May 18, 1937, he complied with the requirements and returned to the plaintiffs the licensed attachments. The defendant Blunck, during a portion of the years Kull was a licensee, solicited orders for baskets in Idaho, and transmitted some of the orders to Kull who accepted and filled them with baskets manufactured under his licenses. After the termination of the license agreement Kull continued the manufacture of baskets and the principal questions in controversy are, did he continue the use of machinery and methods used in the manufacture of baskets, covered by the patents, and did Blunck continue to solicit orders for such baskets made on infringing attachments and by infringing methods, and are the claims of the plaintiffs invalid?

The basket making industry is old, and was first made by hand over basket forms, and the portion of that art we are considering is the continuous stave bushel and half bushel basket. Machines were first developed for the manufacture of two hoop round bottom baskets. A great portion of that machinery was made by the St. Joe Iron Works and the Saranac Machine Company, who have continued to manufacture machinery for making the same round bottom baskets, but it became recognized that the two hoop round bottom basket was not a suitable container for the packing and transportation of certain vegetables and fruit and during the years 1923 and 1924 Schmidtke invented the straight sidewalled continuous stave basket with a bottom hoop, extending an inwardly arched bottom. After numerous experiments Schmidtke invented a method and apparatus for producing this basket economically and applying the bottom hoop while the basket bottom was being held arched and under tension. It involved a machine for a new and popular basket which went into popular and immediate use. A great demand existed for the necessary attachments and equipment changing the two hoop round bottom machine over to the manufacture of the continuous stave, three hoop straight side with a concave bottom basket covered by the Schmidtke patent and which had superior advantage over the old round bottom basket, as it stands straight and its bottom does not sag down. It can be packed one on another to great height. The invention set forth in claim 2 comprehends the location of the lower third hoop adjacent the ends of the bottom members and near the bottom of the side walls and the essential element of the claim is reinforcing hoop adjacent and close enough to the ends of the bottom members to maintain their generally inwardly arched configuration, a continuous stave basket having straight side walls and abrupt and sharp or break at the bottom. The location of the third hoop adjacent to the bottom serves to assist in maintaining the arch of the basket bottom. Prior to securing the license for the use of the Schmidtke machine and method for the production of the Schmidtke basket, the defendant Kull agreed to consider the Schmidtke patents valid. He operated under the license for seven years, and the process he used during that period was the process covered by the Schmidtke patents until he decided to cancel the license. He continued manufacturing and selling of that basket after the cancellation of the license without the payment of royalty, with the hoop located adjacent to the bottom of the basket to maintain the arched condition in the bottom of the basket and the machinery and attachments he used were the machinery and attachment disclosed in the Schmidtke patent, and while a licensee he changed to making baskets with the lower edge of the bottom hoop substantially at the bottom of the basket. The method of manufacturing baskets now by him is identical with the method he used while a licensee with the only difference that the bottom hoop had been raised a distance of approximately ¼ to 3/8 of an inch. The same three hoops, and the bottom hoop being located adjacent to the bottom; the same abrupt bend of the staves between the side walls and the bottom and the same inward arch of the bottom, and the same straight side wall construction are retained by Kull. There is no difference in the function of the hoop at the bottom. The arch in defendants' basket is sufficient to strengthen the basket and achieve the objects of the invention. From a comparison of the elements of the claims of the patent with the elements of the defendant Kull's machine and methods, the evidence establishes clearly an infringement as the same function and purpose is accomplished by the machinery and method of the patent and by the Kull machine and method. The principle governing the question of infringement is that infringement is not avoided by mere change of form or substitution of mechanical equivalent, as it is the claims that are controlling and not the specific form of the invention.

This principle is recognized by the Supreme Court in the case of Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 50 S.Ct. 9, 13, 74 L.Ed. 147; "`so that if two devices do the same work in substantially the same way, and accomplish substantially the same result, they are the same, even though they differ in name, form, or shape.' Union Paper Bag Machine Co. v. Murphy, 97 U.S. 120, 125, 24 L.Ed. 935. And see Elizabeth v. Pavement Co., 97 U. S. 126, 137, 24 L.Ed. 1,000. That mere colorable departures from the patented device do not avoid infringement, see McCormick v. Talcott, 20 How. 402, 405, 15 L.Ed. 930. A close copy which seeks to use the substance of the invention, and, although showing some change in form and position, uses substantially the same devices, performing precisely the same offices with no change in principle, constitutes an infringement." Again in the case of Crown Cork & Seal Company v. Aluminum Stopper Co., 4 Cir., 108 F. 845, 866: "Reference to some of the decisions of the supreme court will show that infringement is not avoided by mere change of form, or renewals of parts, or reductions of dimensions, or the substitution of mechanical equivalents, or the...