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DE CEW v. UNION BAG & PAPER CORP.

August 16, 1944

DE CEW
v.
UNION BAG & PAPER CORPORATION



The opinion of the court was delivered by: SMITH

This is a suit under the patent laws for the infringement of two patents of which the plaintiff is admittedly the owner. The one, No. 1,558,845, hereinafter referred to as '845, issued on an application filed by the plaintiff on July 7, 1924; the other No. 1,589,947, hereinafter referred to as '947, issued on an application filed by the plaintiff on September 19, 1925. The defendant denies infringement and challenges the validity of the patents.

The patents pertain generally to the manufacture of paper and relate particularly to improvements in the method of sizing the cellulose fibers of which papers are made. The claims of the respective patents are limited to the successive mechanical steps of the methods therein defined; the chemical process is concededly old. The present suit is directed to an alleged infringing method practiced by the defendant in the manufacture of kraft papers and liners.

 State of The Art

 An extensive recital of the history of the paper industry seems unnecessary, but it should be noted that the progress of the industry has been marked by numerous inventions, discoveries, and technical improvements. The patents in suit must be examined and appraised in the light of these advances, and, therefore, a general knowledge of the art of paper manufacture, and particularly that branch thereof to which the said patents relate, is necessary, not only to the proper interpretation of the claims, but also to the adequate understanding of the issues here presented. It is with this in mind that we undertake an outline of the state of the art, omitting, of course, the technical detail.

 The wood, cleaned and suitably prepared, is cooked in a solution of caustic alkali and reduced to pulp; the ligneous constituents of the wood are thus removed, leaving a soft, wet, and slightly cohering mass of insoluble cellulose fibers. This fibrous material, having been thus extracted and prepared, is converted into paper in three successive operations, identified in the industry as "beating," "refining," and "felting." These operations have remained essentially the same for many years although there have been many improvements in the apparatus used in their performance.

 The pulp, brought to a predetermined fluidity and consistency by the introduction of water, is milled in a hollander, *fn1" in which the pulp is circulated between a bedplate and a rotating roll, each of which is equipped with blunt metal bars or knives. This operation imparts to the fibrous material the physical properties essential to the formation of the paper; the individual fibers are isolated and suspended, short-ened, and hydrated, and the stock becomes gelatinous. This stock, after having been thus treated and prepared, is then refined in a jordan, *fn2" in which the stock passes between the inner periphery of a conical shell and the outer periphery of a rotating plug, each of which is equipped with blunt metal bars or knives. This operation, as the term "refine" imports, improves the physical qualities imparted to the fibrous material in the initial operation, and, in addition, "brooms" or "fibrillates" the fibers.

 These successive operations, except for the apparatus in which they are performed, are similar, and in each of them the fibers are subjected to a "beating action" which differs only in degree. This "beating action" imparts to the fibers certain physical properties which not only contribute to the formation of the paper but also enhance its quality and strength. It necessarily follows that the "beating action," indispensable in the manufacture of paper, is peculiarly essential in the manufacture of kraft papers.

 It should be observed that the "beating action" of the hollander and the "beating action" of the jordan are basically indistinguishable in practice, principle, or result. The hollander and the jordan, designed to perform identical functions, are similar in their essential structural elements, and differ only in their form of construction; the jordan, which was invented and introduced many years after the hollander, in 1858, may be utilized as a hollander, and in many modern paper mills has replaced it.

 The final operation, the formation of the paper, is continuous and consists of three successive steps which are carried out on the paper machine, or Fourdrinier. The stock, previously prepared in the manner described, and diluted with water, is conducted to the paper machine, and the paper is formed in the following manner: "First, the stock is conducted onto an endless belt of wire cloth on which the fibers are felted and the excess water removed; second, the moist sheet thus formed is passed through a series of press rolls which set the fibers and compact the sheet; and third, the sheet is passed through a series of heated drying rolls which dry and finish the paper. A cylinder machine is frequently used instead of a Fourdrinier, but the operative steps of the final operation are substantially the same.

 The modern paper mill is so constructed, and the equipment is so arranged, as to permit either an intermittent or continuous flow of stock from the hollander to the paper machine. There is between the hollander and the jordan a storage chest, hereinafter referred to as the "beater chest"; there is between the jordan and the paper machine a storage chest, hereinafter referred to as the "machine chest." These chests are equipped with appropriate apparatus to control the flow of stock. It seems unnecessary for our present purposes to describe the construction and operation of this equipment, but it is necessary to note its relative location.

 The "engine sizing" process, as hereinabove stated, is carried out as a concomitant operation in the preparation of the stock. The chemical ingredients, aluminum sulphate and rosin emulsion, are introduced as the stock is prepared, and in the following manner: First, the rosin emulsion is introduced into the stock at the hollander, where it is thoroughly mixed with the stock to insure uniformity; second, the aluminum sulphate, either dry or in solution, is introduced into the stock at the hollander, but after the "beating action" has been completed and the beater roll has been raised. The stock thus treated by the addition of the chemical ingredients is thoroughly agitated in either the beater or a separate mixing hollander; if the beater is used the "roll is raised" to avoid damage to the size, the coagulum or precipitate, prouced by the chemical reaction between the ingredients.

 The sizing of the paper, by the practice of this method, is accomplished by the coagulation or precipitation of a film of rosin size on the fibers suspended in the stock. The individual fibers are thus coated with a water repellent size, which is rendered permanent in the final drying operation, imparting a finish to the sheet. The coagulum or precipitate is an irreversible gel *fn3" of aluminum resinate and free rosin produced by the chemical reaction between aluminum sulphate *fn4" (the precipitating agent) and rosin emulsion *fn5" (the sizing agent); this coagulum or precipitate, because of its nature, is susceptible of impairment by the "beating action" of either the hollander or the jordan.

 The introduction of the rosin emulsion before the aluminum sulphate in the manner described is the common practice in the industry, but the introduction of the aluminum sulphate before the rosin emulsion is not unknown. The introduction of the aluminum sulphate before the rosin emulsion is frequently necessary to counteract the effects of hard water; the presence of calium carbonate and other substances in hard water has been found to be injurious to the size.

 The "tub sizing" process, as hereinabove stated, is carried out after the sheet has been formed. The chemical ingredients are introduced at the size tub or press through which the formed sheet is passed. The sizing of the paper by the practice of this method is accomplished by the deposit of a film of rosin size on the surface of the sheet. The surface of the paper, as distinguished from the individual fibers of which it is made, is coated with a water repellent size which is rendered permanent in the final drying operation. We note here, for the purpose of emphasis, that this process, which is the older of the two, is carried out after the "beating action" has been completed.

 Patients in Suit

 The purported inventions of the respective patents are directed to the solution of the same problem, to wit, the damage to the coagulum or precipitate occasioned by the "beating action" of the jordan. This problem is stated in the specifications of the patents in identic language. *fn6" The invention of Patent No. '845 is generically defined in claim 1 thereof as follows: "The method of sizing paper which consists in withholding the precipitation of the rosin until after the beating action of the jordan engine is complete. " The invention of Patent No. '947 is generically defined in claim 3 thereof as follows: "A method of sizing paper which consists in coagulating the size in the stock after said stock has passed through the jordan. " (Emphasis by the Court.)

 It is obvious upon a mere reading of these claims that the inventions therein defined are identical. The claims are co-extensive, and are indistinguishable except in their descriptive language. The claims cover the same method, and each of them is sufficiently broad to embrace all of the adaptations recommended by the patentee: The introduction of the rosin emulsion into the stock at the beater, followed by the introduction of the aluminum sulphate after the stock has passed through the jordan; the introduction of the aluminum sulphate into the stock at the beater, followed by the introduction of the rosin emulsion after the stock has passed through the jordan; and, the introduction of both ingredients into the stock after it has passed through the jordan. The novel principle common to both claims -- and the only one to which the patentee asserts a claim of invention -- is the coagulation or precipitation of "the size in the stock" after the "beating action of the jordan engine is complete." The conclusion that the inventions are identical seems inescapable.

 It is well established that where, as here, two patents, issued to the same patentee, embrace inventions which are patentably indistinguishable, the second patent is void. Suffolk Co. v. Hayden, 3 Wall. 315, 18 L. Ed. 76; James v. Campbell, 104 U.S. 356, 382, 26 L. Ed. 786; Miller v. Eagle Mfg. Co., 151 U.S. 186, 14 S. Ct. 310, 38 L. Ed. 121; Lion Fastener v. Hookless Fastener Co., 3 Cir., 72 F.2d 985; Oliver-Sherwood Co. v. Patterson-Ballagh Corp., 9 Cir., 95 F.2d 70, certiorari denied 304 U.S. 573, 58 S. Ct. 1042, 82 L. Ed. 1537. Accord: In re Gollmar, 67 F.2d 907, 21 C.C.P.A., Patents, 749; In re Barge, 96 F.2d 314, 25 C.C.P.A., Patents, 1058; In re Sherman, 121 F.2d 527, 28 C.C.P.A., Patents, 1329; In re Christmann, 128 F.2d 596, 29 C.C.P.A., Patents, 1037; In re Copeman, Cust. & Pat.App., 135 F.2d 349. The validity of the later patent may be sustained only if the invention therein defined is essentially different from that comprehended in the earlier patent. Ibid. It follows that under the settled law Patent No. '947 is void.

 Anticipation

 The validity of the patents in suit is challenged on the ground of anticipation, or absence of novelty. The defendant, in support of this defense, cites numerous patents and publications of the prior art, but the necessary limits of this opinion will not permit a comprehensive discussion of all of them. There art but eight of the cited references which are apposite: Weygang Patent, British No. 7904; Capazza Patent, British No. 5776; Irving-McNeil Patent, U.S. No. 60635; Lamb Patent, British No. 3306; Munroe Patent, U.S. 1,335,909; Beltzer, The Sizing of Paper, Pulp and Paper Magazine (August 14, 1824); Klemm, Handbuch der Papier Kunde (1904); The Sizing of Paper, The Paper Mill (February 13, 1904). These references are hereinafter considered in the order of their relative importance.

 The patent to Weygang, granted on July 12, 1886, covers "Improvements in Water-proofing and Sizing Paper and such like Material," and embraces alternative methods. The one conforms to the conventional practice hereinabove described; the other conforms to the method defined in the patents in suit. It is necessary to weigh only the latter.

 This patent, after describing the conventional practice, defines the alternative practice in the following language: "Instead of completing the entire sizing operation in the beating engine *fn7" as described" (the conventional practice) "similar results are produced by passing the fibrous pulp after the size has been added and thoroughly mixed in the said beating engine into another suitable apparatus8 fitted with mixing arms or other contrivance capable of mixing the pulp without much friction and adding the alum or other precipitating solution to the pulp in this apparatus. " The language of this patent is somewhat ambiguous, but its pertinent disclosure is sufficiently clear and unmistakable.

 It is significant that the stated object of this practice, in the language of the patentee, is "to avoid or lessen the effects of the friction and agitation of the beating roll whilst and sizing matter is being and after it is precipitated." It seems reasonably apparent that Weygang not only perceived the problem but also conceived that its solution lay in withholding the precipitation or coagulation of the size until after the "beating action."


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