The owner of patents for improvements in metallic cotton bale
ties, each tie consisting of a buckle and a band, granted no
license to manufacture the ties, but supplied the market with them,
the words " Licensed to use once only" being stamped in the metal
of the buckle. After the bands had been severed at the cotton mill,
A. who bought them and the buckles as scrap iron, rolled and
straightened the pieces of the bands and riveted together their
ends. He then cut them into proper lengths and sold them with the
buckles, to be used as ties, nothing having been done to the
buckles.
Held that A. thereby infringed the patents.
Quaere would A.'s sale of the buckle apart from the
band be an infringement of the patents?
The facts are stated in the opinion of the Court.
MR. JUSTICE BLATCHFORD delivered the opinion of the Court.
This is an appeal by the plaintiffs in a suit in equity from a
decree dismissing the bill of complaint. The suit was brought for
the infringement of three several letters patent: No. 19,490,
granted to Frederic Cook, March 2, 1858, for an "improvement in
metallic ties for cotton bales," and extended for seven years from
March 2, 1872; reissued letters patent No. 5,333, granted to James
J. McComb, as assignee of George Brodie, March 25, 1873, for an
"improvement in cotton bale ties," the original patent having been
granted to Brodie as inventor March 22, 1859, and reissued to him
April 27, 1869, and extended for seven years from March 22, 1873,
and No. 31,252, granted to J. J. McComb January 29, 1861, for an
"improvement in iron
Page 106 U. S. 90
ties for cotton bales" and extended for seven years from January
29, 1875. They are severally known as the Cook, the Brodie, and the
McComb patents. The Cook patent expired March 2, 1879; the Brodie
patent March 22, 1880, and the McComb patent January 29, 1882. The
plaintiffs are the American Cotton tie Company (Limited), a British
corporation; James J. McComb, administrator of Mary F. McComb,
deceased, and the said James J. McComb, Charles G. Johnson, and
Emerson Foote, each in his own behalf and as a co-partner in a firm
called the American Cotton tie Company. The defendants are Simeon
W. Simmons and two other persons, doing business as the Providence
Cotton tie Company. The Cook patent was assigned to McComb March
21, 1872. The Brodie reissue of 1869, with all rights to reissue,
renewal, and extension, was assigned to McComb March 19, 1873. On
the 22d of June, 1874, McComb assigned to himself, Johnson, and
Foote, who composed the firm called the American Cotton tie
Company, the Cook patent as extended, and the Brodie patent as
reissued in 1869 and as extended. Mary F. McComb became, in 1861,
the owner of the McComb patent. She died in 1874 intestate, and
McComb was appointed her administrator. On the 1st of March, 1876,
the firm called the American Cotton Tie Company assigned to the
corporation called the American Cotton Tie Company (Limited) the
Cook patent as extended, and the Brodie patent as extended and as
reissued in 1873. On the same day, McComb, individually and as
administrator, assigned to the said corporation the McComb patent
and its extension.
The bill is in the usual form, and was filed in November, 1876.
It alleges that the defendants have made, used, and sold to others
to be used, the patented inventions and also metallic ties for
cotton bales containing the patented inventions. No defense
affecting the validity of the patents sued on is set up in the
answer. The only defense pleaded or made is as to infringement.
The corporation plaintiff, since it acquired title to the three
patents in March, 1876, has carried on the business of making
cotton bale ties under the patents. The form of tie it has
principally made is the form of the McComb patent which is called
the "arrow tie" from the shape of the five sided hole
Page 106 U. S. 91
cut in the plate of the buckle. It has not granted any licenses
to make the ties, but has itself supplied the demand for them. The
tie consists of a buckle and a band all made of metal. The band
goes around the bale, and the two ends of it are confined by means
of the buckle. On each of the buckles which the corporation has
made and put upon the market it has placed the words "Licensed to
use once only" stamped into the body of the metal. This practice
was also observed by its predecessor, the co-partnership firm. The
tie, consisting of buckle and band, is purchased by the person who
desires to use it to confine the cotton in the bale, and is placed
around the bale on the plantation or at the cotton press. It
remains on the bale until the bale reaches the cotton mill, and the
band of the tie, which is of hoop iron, is then cut. The buckle and
the band, thus free, become scrap iron and are sold as such. The
hoop is too short for the length required for baling if it were to
be mended by lapping and riveting the two ends at the place of
severance, and to bale with it requires that there should be a free
end which may be confined at the buckle in the process of baling.
The defendants buy the buckles and severed hoops at the cotton
mills as scrap iron, the hoops, when bought, being in bundles,
bent, and being pieces of unequal lengths, some cut at one distance
from the buckle and some at another. The defendants straighten the
old pieces of hoop and roll them by cold rolling, and punch the
ends with holes, and rivet the pieces together, and form a band by
cutting it to the proper length, which band, with the buckle
accompanying it, makes a tie ready for use. In using the tie, one
end of the band is attached to one end of the buckle by a loop in
that end of the band, and then the band is passed around the bale
and its free end is slipped by a loop made in it through a slit in
the buckle around the other end of the buckle while the bale is
under pressure. When the pressure is removed, the expansive force
of the compressed cotton holds the looped ends of the bands in
place in the buckle, the looped ends being confined between the
bale and the body of the band. The use of the arrow tie has been
very extensive. The defendants sell to others to be used the ties
which they so prepare, and do not themselves bale cotton with them.
Baled cotton is sold in the
Page 106 U. S. 92
United States without tare -- that is, the iron of the buckle
and the hoop is weighed with the cotton and the bagging, and the
whole is sold by weight at the price of the cotton per pound. The
scrap iron, consisting of the buckles and cut hoops, is sold at one
cent and a quarter per pound, while the corporation sells its ties
at six cents per pound.
The specification of the Cook patent describes a buckle with a
slot cut through one of its end bars, so that the end of the band
may be slipped through sidewise instead of being pushed through
endwise. The third claim is to
"the herein described 'slot,' cut through one bar of clasp,
which enables the end of the tie or hoop to be slipped sidewise
underneath the bar in clasp, so as to effect the fastening with
greater rapidity than by passing the end of the tie through
endwise."
The specification of the Brodie reissue states that his
invention "relates to the combination with open slot ties of
metallic bands having their ends free, and held in position by the
expansion of the bale." Some of the drawings show an open slotted
link or buckle in connection with a band, and the specification
states that the ends of the band are "turned under the link and
held in position by the pressure exerted by the expansion of the
bale." It adds:
"In the latter mode of use, the slack may be readily taken up by
forming the loop in the iron at the moment of making the fastening,
and passing the end thus looped through the opening in the side of
the link. The band is thus slipped sidewise through the opening
into the slot, instead of thrusting it through endwise."
The third, fourth, and fifth claims of the Brodie reissue are in
these words:
"3. The combination of an open slot for introducing the band
sidewise with a link having a single rectangular opening for
holding both ends of a metallic band, and the band."
"4. An open slotted link, when combined with metallic bands, the
ends of which are turned under the link and held in position by the
expansion of the bale."
"5. The method of baling cotton with metallic bands, and taking
up the slack of the band by bending the same at any desired point
into the form of a loop, and passing such loop sidewise through an
open slit into the slot intended to receive it, and over the bar of
the clasp intended to hold it. "
Page 106 U. S. 93
The specification of the McComb patent states that the nature of
his invention "consists in the use of a peculiarly shaped buckle as
a fastening or tie for the ends of the iron hoops." It says that
the "buckle is a piece of wrought iron or other metallic substance
about the eighth of an inch thick, an inch and three quarters wide,
and two inches long (the size being modified to suit the width of
the hoop used), with an oblong hole or aperture cut or punched
through the center;" that the five sides of the plate of the buckle
are equal and parallel, and that the two largest of the five sides
of the oblong hole are of equal length, and are equal in length to
the width of the hoop. The drawings show the two sides forming the
arrow part as of equal length. The slit or slot is cut through one
of the sides of the plate opposite one of the two longest sides of
the central hole, so that one of the loops of the hoop stretches
across and covers the slit. The claim of the patent is this:
"Forming a link or tie with an oblong aperture, one end of which
is arrow-shaped, or rather presents two sides of an equilateral
triangle, the design of this arrow shaped end being not only to
force the loop or bend of the hoop over the slot, which it does
with unerring precision when the bale expands after being released
from the press, but also to secure an equal bearing upon the
separated parts of the slotted side of the tie."
A buckle without a band will not confine a bale of cotton.
Although the defendants use a second time buckles originally made
by those owning the patents and put by them on the market, they do
not use a second time the original bands in the condition in which
those bands were originally put forth with such buckles. They use
bands made by piecing together severed pieces of the old bands. The
band in a condition fit for use with the buckle is an element in
the third claim of the Brodie reissue. That claim is for a
combination of the open slot arranged to allow of the sidewise
introduction of the band, the link or buckle with the single
rectangular opening arranged so as to hold both ends of the band,
and the band. The old buckle which the defendants sell has the slot
of Cook, and the slot and rectangular opening of Brodie, and the
slot and arrow shaped opening of McComb. Whatever right the
defendants could acquire to the use of the old buckle,
Page 106 U. S. 94
they acquired no right to combine it with a substantially new
band to make a cotton bale tie. They so combined it when they
combined it with a band made of the pieces of the old band in the
way described. What the defendants did in piecing together the
pieces of the old band was not a repair of the band or the tie in
any proper sense. The band was voluntarily severed by the consumer
at the cotton mill because the tie had performed its function of
confining the bale of cotton in its transit from the plantation or
the press to the mill. Its capacity for use as a tie was
voluntarily destroyed. As it left the bale, it could not be used
again as a tie. As a tie the defendants reconstructed it, although
they used the old buckle without repairing that. The case is not
like putting new cutters into a planing machine, as in
Wilson v.
Simpson, 9 How. 109, in place of cutters worn out
by use. The principle of that case was that temporary parts wearing
out in a machine might be replaced to preserve the machine, in
accordance with the intention of the vendor, without amounting to a
reconstruction of the machine.
The defendants contend that they do not combine the band with
the buckle, and do not infringe the third claim of the Cook patent,
or the third, fourth, and fifth claims of the Brodie reissue, or
the claim of the McComb patent, because they do not bale cotton
with the tie. But they participate in combining the open slot, the
buckle, and the band, the whole being so arranged that the ends of
the band can be turned under the buckle and held in position by the
expansion of the bale, and that the slack of the band can be taken
up by bending the band into the form of a loop, and passing the
loop sidewise through the open slit into the hole and over the
holding bar of the plate. They sell the tie having the capacity of
use in the manner described, and intended to be so used. Only the
bale of cotton and the press are needed to produce the result set
forth in the specifications of the patents, and without the bale of
cotton and the press the tie would not be made or sold. The slot
through the end bar of the buckle in the Cook patent is of no
practical use apart from the band and the bale of cotton, and the
same thing is true of the link of the McComb patent with its arrow
shaped aperture, and although a person
Page 106 U. S. 95
who merely makes and sells the buckle or link in each case may
be liable for infringing those patents, he is so liable only as he
is regarded as doing what he does with the purpose of having the
buckle or link combined with a band and used to bale cotton.
Because the defendants prepare and sell the arrow tie, composed of
the buckle or link and the band, intending to have it used to bale
cotton and to produce the results set forth in the Cook and the
McComb patents, they infringe those patents.
Saxe v.
Hammond, 1 Holmes 456;
Bowker v. Dows, 3 Banning
& Arden 518. We do not decide that they are liable as
infringers of either of the three patents merely because they have
sold the buckle considered apart from the band or from the entire
structure as a tie.
We are therefore of opinion that the defendants have infringed
the third claim of the Cook patent, the third, fourth, and fifth
claims of the Brodie reissue, and the claim of the McComb
patent.
Decree reversed, with costs, with directions to enter a
decree for the plaintiffs in respect to those claims for an account
of profits and damages, as prayed in the bill, and to take such
further proceedings in the suit as may be in conformity with the
opinion of this Court.