Renton patent, are substantially alike, and in each the ring has been shortened or made approximately of the length shown by Defendant's Exhibit A; it appearing that the saving of metal has been found consistent with sufficient strength of joint. The general idea of fastening such a flange or a ring by bolts seems to have been adopted from the other class of joints, which have been passed over so far, and which have been called "sink-joints" as a general classification. It is evident that in a sink-joint the thread-end of the holding bolts would not be placed so as to project up through the bottom of the sink. When the positions are reversed, as in a floor-joint, it would not seem to require invention to make use of such a joint, by turning the bolts with the heads down and with the thread-ends exposed above the base or flange of the closet. Such a method of fastening had been also taught by a number of patents shown in the testimony with reference to floor-flanges or water-closet joints, and in the patents granted to Dellamore, No. 699,497, May 6, 1902 (application filed June 6, 1901), Delehanty, No. 682,046, September 3, 1901 (application filed December 7, 1900), Johnson & Martin, No. 679,459, July 30, 1901 (application filed November 23, 1900), and the Paradice patent, No. 653,524, July 10, 1900 (application filed July 1, 1899), such a method for fastening the flange to the base by inverted bolts is shown. Leaving aside again the improvements in sink-joints, we find that at a period represented by the Bride patent, No. 303,615, August 19, 1884, and Bride patent, No. 274,434, March 20, 1883, the principle of a tight joint by a structure fastened to the floor was the recognized form for the so-called water-closet joint and it must be held that the knowledge of the trade had advanced to such a point at the time of Renton's experiments that the recognized method of fastening the joint in question was by bolts whose heads were buried in the flange or structure upon which the gasket was intended to be compressed. It would also appear, from such patents as Johnson & Martin, Delehanty, and Dellamore, above referred to, that the idea of turning over the upper portion of the lead pipe and of the insertion of packing around the top of the pipe was known, and in the Delehanty patent solder was used to fasten the flange to the end of the pipe. It is difficult to see, therefore, how Renton can claim either the invention of the different elements going to make up his flange or the right to their combination as invention, unless that combination and his invention be limited to the single style constructed with a converging wall or ring of considerable length, as suggested in the patent. It is stated by both the defendant and the complainant that no difference, whether under the patent or in practical application, results from the use of a long ring, after a point has been reached where the ring furnishes sufficient strength and a holding surface to meet the requirements of the situation. The structures produced by the defendant (both that now made by him and that made by the complainant) do not so depart from the designs shown in the earlier patents as to justify a finding of invention, either in the shape of the flange or in the combination of parts, except in the one particular that the complainant's device combines the good qualities of these other patents with a strong and simple form of construction, of value commercially, worthy of patenting as an invention if worked out at a time when others were not in possession of the same commercial ideas. There is no need of discussing infringement, inasmuch as the two structures are to all intents and purposes the same, and the complainant, upon the testimony, secretly holding his application for patent for a period of nearly two years, while he was experimenting with material for a satisfactory gasket, did not thereby lose the right to apply for a patent at the time he did file his application. We need not discuss the different language of the separate claims, and the variations of claims 2 and 3 or 5 and 6 from the general ideas of claims 1 and 4; for the broad claims are anticipated, and the more specific claims do not show invention by describing the precise style of structure itself which we have been considering. The so-called "combination" claims (4 to 6) are in reality merely detailed statements of the method of applying the devices described in claims 1 to 3, and do not thereby disclose anything more than claims 1 to 3. The whole patent seems to have been woven around a structure worked out by Renton, as well as by others, to make the soldered joint strong and tight by improvements or mechanical methods which were obvious and could not be called invention. The defendant should have a decree. EASTERN PAPER BAG CO. v. CONTINENTAL PAPER BAG CO. No. 639. PATENTS (328*)-INFRINGEMENT-PAPER BAG MACHINE. The Liddell patent, No. 558,969, for a paper bag machine, as construed in prior litigation between the parties held infringed by a certain type of machine used by defendant, and not infringed by another type. In Equity. Suit by the Eastern Paper Bag Company against the Continental Paper Bag Company. On final hearing. Decree for complainant. Betts, Sheffield, Bentley & Betts and Francis T. Chambers, for complainant. Albert H. Walker, for respondent. BROWN, District Judge. The bill charges infringement of letters patent No. 558,969, issued April 28, 1896, to complainant, as assignee of William Liddell, for a paper bag machine. In former litigation between these parties on the same patent opinions were given by the Circuit Court for the District of Maine (142 Fed. 479), the Circuit Court of Appeals for the First Circuit (150 Fed. 741, 80 C. C. A. 407), and the Supreme Court (210 U. S. 405, 28 Sup. Ct. 748, 52 L. Ed. 1122). By each of these courts the patent was held valid and infringed by the defendant. Subsequently the defendant made mechanical changes in its machines and continued their use. This led to contempt proceedings in *For other cases see same topic & § NUMBER in Dec. & Am. Digs. 1907 to date, & Rep'r Indexes the Circuit Court for the District of Maine, whereupon the petition. that the defendant be adjudged in contempt was— "dismissed, with costs for respondent, the judgment on this petition not to prejudice any position which may be taken by complainant elsewhere or in any other proceedings." After this dismissal the present bill was filed. The record in the present case is made up in accordance with a stipulation and contains evidence that was before the Circuit Court upon the contempt proceedings. At the final hearing of the present case this stipulation was modified by consent, and the record was enlarged by the introduction in evidence of certified copies of the certificate of incorporation of the Eastern Paper Bag Company, with certain annexed documents. The case now presented for decision is practically a new case. The previous opinions make it clear that the specific grounds upon which the patent was held to cover a novel inventive conception, and upon which the doctrine of equivalents was applied in respect to the embodiment of this inventive conception in defendant's machine, were quite different from the grounds upon which the complainant now rests its case. Claims numbered 1, 2, and 7 are in suit, but both sides agree that in this as in former litigation it is necessary to consider only "Claim 1. In a paper bag machine the combination of a rotating cylinder provided with: one or more pairs of side-folding fingers adapted to be moved toward or from each other, a forming-plate also provided with side-forming fingers adapted to be moved toward or from each other, means for operating said fingers at definite times during the formative action upon the bag-tube, operating means for the forming-plate adapted to cause the said plate to oscillate about its rear edge upon the surface of the cylinder during the rotary movement of said cylinder, the whole operating for the purpose of opening and forming the bottom of the bag-tube, and means to move the bag-tube with the cylinder." The element of chief importance in the present case is: "Operating means for the forming-plate adapted to cause the said plate to oscillate about its rear edge upon the surface of the cylinder during the rotary movement of said cylinder." In the opinion of the Circuit Court of Appeals it was said: "The patent in suit is concerned with folding the bottoms of S. O. S. paper bags. In the prior art this had been accomplished both by a folding-plate reciprocating upon a plane, and by the operation of fingers upon a cylinder. The folding-plate and the cylinder had never been combined. The complainant urges with much probability that the reason why they had not been combined lay in the difficulty of operating a pivoted folding-form upon the surface of a cylinder. Two circles external to each (other) can be in contact at but one. point, while, in order that the folding-plate may operate, its end, as it moves upon a pivot, must remain for some distance in contact with the surface of the revolving cylinder. The problem may be solved by causing the pivot or axis of the folding-plate to yield away from the cylinder, or by causing the surface of the cylinder to be depressed away from the folding-plate. The patent in suit adopts the first device, the defendant's machine the second; and the crucial question before the court is this: Under all the circumstances of the case, is the second method, as compared with the first, within the doctrine of equivalents?" The court observes: "We have been unable to find any operative combination of a rotary cylin der and a forming-plate oscillating thereon earlier than the patent in suit." In the Paper Bag Patent Case, 210 U. S. 405, 420, 421, 28 Sup. Ct. 748, 752, 52 L. Ed. 1122, the argument was largely devoted to questions remote from those before us. The language of the Circuit Court is referred to as follows: "The Circuit Court said that the 'pith' of the invention is the combination of the rotary cylinder with means for operating the forming plate in connection therewith, limited, however, to means which cause the plate to oscillate about its rear edge on the surface thereof,' and distinguished the invention from the prior art, as follows: 'Aside from the cylinder and the forming plate oscillating about its rear edge everything in these claims (the claims of the patent) is necessarily old in the arts.' It was this peculiar feature of novelty, it was said, which clearly distinguished it from all that went before it. This conclusion was in effect confirmed by the Circuit Court of Appeals." The opinion of the Supreme Court also observes: "But abstractions need not engage us. The claim is not for a function, but for mechanical means to bring into working relation the folding plate and the cylinder. This relation is the very essence of the invention, and marks the advance upon the prior art.” We have to inquire, then, what was the working relation of the plate and cylinder in the Liddell machine, and what the mechanical means for bringing into working relation the folding plate and cylinder. The complainant's brief states: "The effect of the motions given to the plate by Liddell was to cause it to operate with respect to the cylinder and during the opening of the blank, exactly as did the similar plate of the earlier Lorenz & Honiss machine on its reciprocating folding bed. That is to say, to so turn the plate that its forming fingers engaging the upper ply of the blank rotated backward around the line on the bed which substantially coincides with the cross fold line of the blank. "There was absolutely nothing new in Liddell's machine with respect to the action of the plate and folding bed on the blank. The one new thing was the devising of means for making possible this old action where the bed was a part of a cylinder and the forming plate an independently supported device, not, as in the earlier machine, a device supported on and sharing the movements of the bed." As the movement of the forming plate while performing the operation of folding the blank was old, it seems quite clear that the mere fact that in the defendant's machine there is this old movement is not a sufficient ground for holding the defendant to be an infringer. In other words, the movement of the forming plate whereby the bag blank is folded is not new, and is not the Liddell invention. Neither is the use by the defendant of a cylinder in conjunction with a forming plate having the old movements a sufficient ground for declaring the defendant an infringer, irrespective of the other elements with which they are combined. In the larger number of machines now used by the defendant there is what may be termed a forming plate with the old movement in folding the bag blank; but this plate moves in a path so remote from the path of the cylinder that the plate neither rests upon the cylinder nor requires, in order to avoid collision, a to and fro movement of the axis that supports the plate, or a depression of the surface of the cylinder. By the complete separation of the paths of movement of plate and cylinder there disappears entirely the need for mechanical means operating for the purpose of preventing a collision between the plate and cylinder during the working stroke of the plate. It is quite apparent that the mechanical problems involved in a combination wherein the plate and cylinder continue in actual contact during the working stroke of the folding plate are entirely different from. those that arise when the plate and cylinder are given separate paths. In the former litigation the defendant was held an infringer, for the reason that its mechanical means for depressing the cylinder to avoid collision with the plate were the equivalent of Liddell's operating means for the plate whereby its to and fro movement in relation to the cylinder avoided collision. In the greater number of its machines the defendant does not now use that which was held to be the equivalent of Liddell's "operating means for the folding plate adapted to cause the said plate to oscillate about its rear edge upon the surface of the cylinder." Conceding that the receding movement of the cylinder section still continues, it is not used in the greater part of defendant's machines as a means for getting the cylinder out of the path of the plate, and no longer performs that function wherein it infringed. If the means for depressing the surface of the cylinder have now no effect upon the forming plate or upon its movements, it seems to follow that in the defendant's combination there is entirely lacking the element of "operating means for the forming plate adapted to cause the said plate to oscillate about its rear edge upon the surface of the cylinder." The direct operating means for defendant's forming plate is a fixed axis, which has a variable rotary movement timed according to the movements of the cylinder. Its movements are so timed that the folding plate co-operates with the cylinder in folding the blank, but does not travel upon the surface of the cylinder. In the affidavit of William A. Lorenz, quoted in complainant's brief, it is stated concerning the Liddell machine: "The relative to and fro motion of the axis supporting the plate with reference to the surface of the folding bed on the cylinder serves also the function of preventing a collision between the plate and the cylinder during the working stroke of the plate; but this is an incidental rather than a primary function of the peculiar motion given to the plate with reference to the folding bed, because the primary and essential function of this motion is, of course, to enable the parts which act directly upon the blank and effect the operating of opening the end of the blank into a diamond fold to accomplish this work," etc. The complainant's brief seems to adopt this view, so that in the present case we have the contention that what was regarded by the Circuit Court of Appeals as the solution of the problem of combining a folding plate and a cylinder is to be treated as merely incidental. But it is quite clear that the defendant by the course of the former litigation was justified in the opinion that it was held liable as an infringer because of its adoption of this "incidental feature," and that by the omission of this feature it would avoid infringement. The dis |