Wirebounds Patents Co. v. HR Gibbons Box Co.

• Decision Date: 06 July 1928
• Docket Number: No. 3650.,3650.
• Parties: WIREBOUNDS PATENTS CO. et al. v. H. R. GIBBONS BOX CO.
• Court: U.S. Court of Appeals — Seventh Circuit

25 F.2d 363 (1928)

WIREBOUNDS PATENTS CO. et al. v. H. R. GIBBONS BOX CO.

No. 3650.

Circuit Court of Appeals, Seventh Circuit.

February 6, 1928.

Rehearing Denied May 2, 1928.

Second Rehearing Denied July 6, 1928.

Emery, Booth, Janney & Varney, of New York City (L. A. Janney, of New York City, of counsel), for appellants.

Cheever & Cox, of Chicago, Ill. (A. C. Paul, of Minneapolis, Minn., and Howard M. Cox, of Chicago, Ill., of counsel), for appellee.

ALSCHULER and EVANS, Circuit Judges, and LINDLEY, District Judge.

LINDLEY, District Judge.

This appeal involves the questions of validity and infringement of patents to Inwood & Lavenberg, reissue No. 12,725, for folding box blank, No. 1,128,144, for work holder, No. 1,128,145, for machine, and method patent No. 1,128,252. Typical claims will be found in the margin.¹ The District Court dismissed plaintiffs' bill for want of equity.

The character and history of the patents involved are discussed in National Wire-Bound Box Co. v. Healy (C. C. A.) 189 F. 49; Wirebounds Patents Co. v. C., M. & L. Co. (D. C.) 238 F. 929, and Wirebound Patents Co. et al. v. Saranac Automatic Machine Corp., 24 F.(2d) 872. As stated by this court in National Wire-Bound Box Co. v. Healy, 189 F. 49, at page 51, the patents and applications are mere improvements upon, and extensions of, the art. In their basic patent, the patentees, in order to construct "their wirebound foldable box blank," adopted various elements of the prior art. They caught from the teachings of Howenstine, No. 453,479, Hamilton, No. 373,828, Archer British No. 4,793, Healy, No. 768,123, and others, the idea of first selecting a plurality of sheets and preformed cleats secured or to be secured thereto. If they needed any instruction as to construction permitting overlapping of the sides in the completed box, they were taught that art by Archer, British No. 4,793, and Foster, No. 309,297. The idea of folding the wire or metal bound sides together into a box was old, and the specific idea of binding the sides together with wire was taught by Averill and Rosback. Various other patents, included in the prior art references, gave them additional light. They abandoned Rosback's teaching of first assembling one sheet and two coextensive cleats and subsequently cutting and stepmitering the latter, but retained his idea of stapling the binding wire to the sheets and cleats.

However they made a new box out of the old elements. Rosback tried to get a similar result, but his manner and method of construction proved impracticable. He started with the long cleat strips and long side veneer sheets, and proceeded through the successive steps securing the cleats to the rigid side blank, step-mitering the cleats, and scoring the veneer. This resulted in a veneer box bent upon the scored lines, which proved unsatisfactory and impracticable in its method of construction. Patentees' method reversed this order by preforming separately the cleats and sides. They avoided the faulty bending of the veneer along the scored lines and other defects of Rosback's product. They assembled and wired together the separate sections, so as to produce tensioning of the wires over the box corners, thus producing strength both longitudinally and laterally. It was the patentees' fundamental difference in the order of assembly and methods of construction that contributed most to the invention over Rosback. Their new arrangement produced a beneficial and highly successful box, which is flexible, elastic, strong, light, resistent to distortion, and of such character as to tend to resume its original shape and to continue an efficient carrier of its contents after distortion. The result was so successful that the production of the patentees, and their lessees, grew from 60,008 boxes, of the value of $10,339.27, in 1906, to 28,505,562 boxes, of the value of $11,756,285, in 1920. The box blank patent, therefore, is not a mere paper patent, but produces a successful commercial product.

Upon the face of the patent the advantages of the invention might seem slight, but in the light of experience they are manifestly all-important. The language of the Supreme Court in the Barbed Wire Patent Cases, 143 U. S. 275, 12 S. Ct. 443, 36 L. Ed. 154, is pertinent: "Under such circumstances courts have not been reluctant to sustain a patent to the man who has taken the final step which has turned a failure into a success. In the law of patents it is the last step that wins. It may be strange that, considering the important results obtained by Kelly in his (prior art) patent, it did not occur to him to substitute a coiled wire in place of the diamond-shaped prong, but evidently it did not; and to the man to whom it did ought not to be denied the quality of inventor. There are many instances in the reported decisions of this court where a monopoly has been sustained in favor of the last of a series of inventors, all of whom were groping to attain a certain result, which only the last one of the number seemed able to grasp."

The question of infringement of this patent is not difficult, in view of the evidence, for the appellee's expert admitted that the appellee's box is the equivalent of the exact structure registered in the drawings of the reissue patent. For all practical purposes to make its box, the defendant begins at the same starting point and arrives at the same result as the patentees in the reissue patent. It follows, therefore, that, though the reissue patent has expired since the filing of the suit, there should have been a decree finding this patent valid and infringed, and directing an accounting.

We are of the opinion, however, that the entire story of the appellee's invention is told in this reissue patent, and that the solutions of the problems demonstrated in the other three patents were obvious, and involved the exercise of merely ordinary mechanical skill.

The work holder patent describes and claims a portable work holder, the special blocks in the two parallel channels engaging both the rear and front ends of the cleats, holding them against displacement. Upon these cleats, thus engaged, placed in their proper positions, are clamped the box sides. The work holder, thus laden, is carried through the stapling machine, which staples the wire to the sides and cleats thus held in place. The method patent tells us how the process is carried out. When the patentees evolved their scheme of starting with preformed cleats and sides, their important problem for successful construction naturally involved the assembly of the...