CERTIORARI TO THE CIRCUIT COURT OF APPEALS FOR THE FIRST CIRCUIT.
MR. CHIEF JUSTICE TAFT, after stating the case as above, delivered the opinion of the Court.
The evidence in the case establishes that before Eibel entered the field, continued high speeds in the wire of the Fourdrinier machine much beyond five hundred feet a minute resulted in defective paper. Eibel concluded that this was due to the disturbance and ripples in the stock as it was forming at a point between the breast roll and the first suction box, caused by the fact that at that point the wire was travelling much faster than the stock, and that if at that point the speed of the flowing stock could be increased approximately to the speed of the wire, the disturbance and rippling in the stock would cease and the defects would disappear from the paper product. Accordingly he proposed to add to he former speed of the stock by substantially tilting up the wire and giving the stock the added force of the down hill flow. He thought that as long as he could thus maintain equality of speed between stock and wire at the crucial point, and prevent the disturbance and rippling there, a further increase in the speed of the wire would not result in a defective product. He confirmed this by actual trial.
The first and most important question is whether this was a real discovery of merit. The Circuit Court of Appeals thought not. The prior art and the obvious application of the principle that water will run down hill in their opinion robbed it of novelty or discovery. The issue is one largely of evidence.
The plaintiff below introduced the patent and some evidence of infringement and a single expert to explain the discovery and invention and rested. Then the defendant brought in a mass of evidence to show prior discovery and use, to impeach the utility of plaintiff's alleged invention and to demonstrate the indefiniteness of specification and claims. The fact that the adjudication of the
validity of the patent would impose a royalty on many of the paper manufacturers of the country who were not already licensees of the plaintiff led to the defendant's sending a circular letter to awaken the interest and secure the help of all so situated. This, as the record shows, had the effect to invoke offers of testimony on the critical points in the case from the unlicensed part of the trade. The plaintiff adduced a few witnesses in rebuttal as to particular details and the same expert as in chief. The plaintiff's case as presented on the record is largely the presumption of validity and novelty attaching to the patent and such evidence as comes from defendant's witnesses. A case that can be made out in all its elements by cross-examination of opposing witnesses is a strong case. Implication of facts and conditions falling from the months of witnesses when only collateral to the exact point of inquiry for which they are called is generally the most trustworthy evidence because the result of the natural, so to say, subconscious adherence to truth uninfluenced by a knowledge or perception of the bearing of the implication on the ultimate issue in the case.
A thorough examination of the whole voluminous record produces a satisfying conviction, first, that for years news print paper makers and manufacturers of paper-making machinery were engaged in seeking a method of increasing the speed of the news print machines, and that they had succeeded by improving the stock and by strengthening the parts in bringing the speed of the wire and the delivered paper up to between five and six hundred feet a minute, but that, when these high speeds were attained and maintained for any length of time, though they served to enable manufacturers to advertise such maximums, their continued and regular operation showed defects in the paper which were only overcome by a reduction of speed to something less than five hundred feet.As against advertisement, and the exuberant
memory of witnesses, the actual contemporaneous record of daily figures of production whenever brought to light justifies this conclusion. A leading manufacturer, one of the most enthusiastic witnesses on the subject of speed before Eibel, produced a memorandum of a visit he made in October, 1904, less than two years before Eibel's application, to see the operation of a machine he had manufactured which he called "the banner installation of the world" and made an entry in his diary, "Grand Sight -- 475 feet." There is the usual unconscious straining of memory without written record carried back ten or fifteen years, but the evidence on the whole is satisfying that the practical speed for the regular production of good news print paper never much exceeded that speed which had gratified the pride of this witness. A typical case is in that of machines made by Bagley & Sewall, large manufacturers of paper-making machines for the Laurentide Paper Company. The president of Bagley & Sewall testified that the speed of the machine was 552 feet a minute with satisfactory paper, and that he visited Laurentide in October, 1904, and counted the revolutions himself. He produced a letter from Mr. Chahoon, of the Laurentide Company, of about the same date, confirming his statement of the count and the satisfactory product, and an advertisement of Bagley & Sewall to the same effect of January, 1905. In rebuttal, a monthly record of the work of the machine is produced by the foreman at Laurentide for this same machine from January, 1905, to December, 1906, showing the speed to vary from a maximum of 518 in 1905 to 475 in 1908, with a general average of less than 500, and an explanation that the high speeds did not make a good product and were reduced. Our conclusion is confirmed, and indeed the importance of the issue of fact as to maximum speed before Eibel is minimized, by the circumstance, uncontroverted, that the owners of these fastest machines, at once upon Eibel's publication
of his discovery, adopted his pitch and increased their product.
What Eibel tried to do was to enable the paper maker to go to six or seven hundred feet and above in speed and retain a good product. Did he do it? Eibel was the superintendent of a paper mill at Rhinelander, Wisconsin. Before August, 1906, he raised the pitch of the wire from two or three inches to twelve inches and greatly increased the speed with a satisfactory product, and in that month he applied for a patent. The defendant's witnesses without exception refer to that disclosure as something that surprised and startled the paper-making trade. It spread, to use the expression of one witness, like wild fire. There were those who hesitated to take the venturesome step to give such an unheard-of pitch to the wire and waited until others assumed the risk, but the evidence is overwhelming that within a short interval of a year or two all of the fast machines were run with wires at a pitch of twelve inches and that this pitch has been increased to fifteen and eighteen and even twenty-four inches, that the speed of the machines with satisfactory product has increased to six hundred, six hundred and fifty, and even seven hundred feet, with plans now even for a thousand feet and that the makers of two-thirds of the print paper of the country are licensees of Eibel.
Defendant attempts to break the effect of this evidence by showing that five of the largest paper manufacturers who are licensees of Eibel are also shareholders in the Eibel Process Company, the plaintiff, and that they make 2200 tons of the 5000 tons of paper made daily in the United States. This circumstance seems to have had influence with the Circuit Court of Appeals. There are, however, ten other paper-making companies, not shareholders, who are licensees and use the Eibel pitch, and whose aggregate production is 1200 tons a day; and what is equally significant, thirteen other companies have contributed
to a fund to help in resisting the establishment of the right of Eibel to claim a royalty for the use of this high or substantial pitch of the wire in the making of paper. Presumably they too find it wise to use the Eibel pitch. The paper makers in this country who do not use the Eibel pitch, therefore, are few. It can hardly be that dividends on the shares of stock in the Eibel Company held by the five large companies would furnish motive enough for them to continue to be licensees and to use something that was not of great advantage to them in their chief business of making paper; and certainly no such motive would explain the action of the licensees who are not stockholders or that of the infringers, in continuing to use the Eibel pitch. It should be said that one of the large manufacturers of paper-making machinery called by the defendant said that since 1907 he had not installed a single machine without the Eibel pitch.
The fact that the Eibel pitch has thus been generally adopted in the paper-making business and that the daily product in paper making has thus been increased at least twenty per cent. over that which had been achieved before Eibel is very weighty evidence to sustain the presumption from his patent that what he discovered and invented was new and useful. Of course, although very persuasive, it is not conclusive and may be explained. This brings us to the consideration of the evidence of the prior art and the contention of the defendant, and the conclusion of the court below, that the step taken by Eibel, so far as he took one, was a mere obvious application of fully developed devices in the prior art.
Eibel in his patent gives this measure of the prior art:
"The Fourdrinier wire has usually been arranged to move in a horizontal plane, although I am aware that means have been provided for adjusting the breast-roll end of the wire to different elevations, usually below the level, to provide for running with different grades of
stock -- as, for instance, with quick stock and slow stock; but so far as I am aware the making-wire has always had to perform the work of drawing along the stock, and as the wire moved much faster than the stock the stock waved or rippled badly near the breast roll end of the wire, which gradually diminished until an equilibrium was established and a smooth, even, and glassy surface presented, and not until the waving or rippling ceased did the fibers lay down uniformly and produce a well-formed sheet of paper. The machine has been run necessarily at a slow rate of speed to give ample time for the water to escape and for the fibers to lay down so as to make a uniform sheet, and in case the time was insufficient the breast-roll end of the wire has been lowered still farther until the desired result was accomplished. In accordance with my invention I operate entirely above the level to cause the stock to travel by gravity at a velocity approximately equal to the speed of the making-wire, which I believe to be a new principle of operation."
It is important that the stock when it reaches the "Dandy" roll beyond the first suction box of the machine, shall be, on the one hand, free enough of water to be a formed sheet and take an impression from the Dandy roll, and on the other than it shall not be so dry that it will not retain the impression. Paper of such a heavy composition of fibre and water that it holds water long is said to be slow stock. Paper of lighter and thinner composition parting with water easily and drying quickly is called quick stock. Various means were adopted to give the stock the proper degree of dryness at the Dandy roll, usually by adjustment of the composition of the stock. What Eibel describes in this reference was another means. It was not widely used ...