United Shirt & Collar Co. v. Beattie

• Decision Date: 18 October 1906
• Docket Number: 219.
• Citation: 149 F. 736
• Parties: UNITED SHIRT & COLLAR CO. et al. v. BEATTIE et al.
• Court: U.S. Court of Appeals — Second Circuit

149 F. 736

UNITED SHIRT & COLLAR CO. et al. v. BEATTIE et al.

No. 219.

United States Court of Appeals, Second Circuit.

October 18, 1906

On Rehearing, January 30, 1907.

George A. Mosher, for appellants.

E. H Brown, for appellees.

Before WALLACE, LACOMBE, and COXE, Circuit Judges.

COXE Circuit Judge.

The Pine patent relates to improvements in machines for infolding the edges of cuff blanks by which the infolds are formed in the blanks and are pressed with the fabric folded back on itself by the combined action of the support on which the blanks are placed, a templet defining the form of the blanks and infolders actuated to carry the subtending edges of the blanks inwardly or over the defining edges of the templet. The infold thus formed is fixed in the blanks by pressure between the support and the infolders before the templet has been removed and the infolders withdrawn from the folded edges of the blanks. Two blanks are then placed together with the folded over edges concealed between them and united by a line of stitching along their folded edges, the stitching being done, of course, on another machine. The patented device may be used not only for folding cuffs but for collars and other similar articles.

Five pages of drawings containing seven figures, illustrating the machine in its minutest details, accompany the description. The claims involved contain, substantially, the same elements. The first claim which is a sufficient exemplification of the others is as follows:

'(1) In a machine for infolding cuff-blanks or analogous articles, the combination of a support for the blanks, a templet having expanding and contracting plates, edge portions of which are adapted to bear directly upon the blanks upon said support, and within edge portions of the blanks, infolders constructed to move inwardly and outwardly whereby the edge portions of the blanks may be folded over the edge portions of the templet, and means whereby the folds of the blanks may be pressed between the support and the infolders after withdrawal of the plates of the templet from the folds and thereby fixed with a sharp fold.' The combination here claimed contains the following elements in a machine for infolding cuff blanks: (1) A support for the blanks. (2) A templet, having expanding and contracting plates with edge portions bearing directly upon the blanks within the edge portions of the blanks. (3) Infolders constructed to move inwardly and outwardly for folding the edges of the blanks over the edges of the templet. (4) Means whereby the blanks may be fixed with a sharp fold by being pressed at the infolds between the support and the infolders after the templet has been contracted and withdrawn. An analysis of the other claims is unnecessary, further than to say that the fourth claim is specifically limited to 'means for forcing the bed against the infolders, ' whereas the other claims are broad enough to include means for forcing the infolders down upon the support. The infolders of this claim are 'constructed to move inwardly and outwardly on all sides simultaneously.'

The operation of the machine is as follows: A blank is placed on the bed, or support, and the templet is brought down on the blank with the expanding plates resting thereon. By means of a lever these plates are moved outwardly over the blank. The folders are then moved inwardly carrying the edges of the blanks over the outer edges of the plates. The plates are then drawn out of the folds by reversing the lever. By means of a foot treadle the support is forced up pressing the infolds between it and the infolders. The templet is then raised and the infolders are moved outwardly leaving the blank smoothly and sharply folded on the support. The patentee takes pains to explain, what the law probably implies, that the machine can be made applicable to folding square corners and blanks of other forms and that other, equivalent, means can be substituted for the pressing upward of the support without departing from the spirit of the invention.

We do not think that Pine has made a 'pioneer invention,' but we cannot resist the conclusion that he has made a valuable improvement, which, for the first time, placed in the hands of manufacturers of collars and cuffs a practical working device which does the work faster and better than previous devices. Though not entitled to a broad range of equivalents the complainants are entitled to protection against one who has admittedly appropriated the identical combination of three of the claims in controversy. Time will be saved if the concession be made at the outset that the elements of the claims, considered separately or in different environments, were, speaking generally, all old. The question here is was the combination old? That the claims cover a combination, and not an aggregation, we have no doubt, even though the operations of the separate elements do not synchronize. Forbush v. Cook, 2 Fish Pat.Cas. 668, Fed. Cas. No. 4,931; Heath Cycle Co. v. Hay (C.C.) 67 F. 246; Int. Recording Co. v. Dey (C.C.A.) 142 F. 736, 744.

The patent chiefly relied on by the defendants is the one granted to George Boxley, January 29, 1878, No. 199,615. The judge of the Circuit Court carefully considered this patent and the machine alleged to be built under it, and, as we agree, in the main, with his conclusions it is unnecessary to repeat what he has so well and carefully stated. The admission by the defendant that the Boxley patent does not disclose the fourth element of the claims as stated, supra, removes it at once from the list of anticipating references.

The Circuit Court did find, however, that the Boxley machine was capable of being used to perform this pressing operation by withdrawing and raising the templet and then extending the blades of the templet and lowering it upon the blades of the infolders still extended over the folded edges of the blank. Although such use was possible the court was not satisfied that the machine ever was so used and was of the opinion that it was not constructed for such use and if so used it would soon be worn out and destroyed. This view is, we think, as liberal for the defendants as the proofs warrant. The Boxley prior use has not been established beyond a reasonable doubt for the following reasons:

First. It is most improbable that a machine which could do the work of the Pine machine would be permitted to go out of existence when skillful men, knowing the needs of the business, were searching for such a machine.

Second. No writing supports the defendants' contention and human memory is not to be relied upon as to minute details of transactions occurring twenty-five years before. Keasbey & M. Co. v. Carey Mfg. Co. (C.C.) 139 F. 571, and cases cited.

Third. The omission of the pressing mechanism from the specification, which was prepared after the machine had been in operation and was well understood by the patent solicitor, is most significant, and the same is true of the 1882 patent to Boxley.

Fourth. The machine as constructed was not adapted to accomplish the pressing work, the edge portions of the templet plates, which were to force the infolders down upon the folded edges of the blanks, to be pressed between them and the bed, were thin and flexible and were supported far from their operative edges. In other words, they were wholly unsuited to do the heavy work of pressing the edge portion of the folded blanks.

Fifth. Various other matters of construction in the Boxley machine tend to strengthen the conclusion that it was not intended to accomplish the purpose of the Pine machine in the particulars under discussion and that it was incapable of being so used as a practical operative device.

Of course, if it be true that Boxley, even though ignorant of the fact, had previously made a machine capable of doing the work of the Pine device in the same way, the patent of the latter cannot be sustained. But, on the other hand, if Boxley intending to accomplish a different result ignorantly stumbled upon a structure which, in the light of Pine's achievement, can be distorted into a temporary...