The appellees' contention as to jurisdiction in this case is not
justified for reasons expressed in
Clark v. Wooster,
119 U. S. 322, and
Beedle v. Bennett, 122 U. S. 71.
This was an action to recover for infringements of a patent. The
lower courts found as a fact that all the claims of the patent had
been infringed by appellant, and the evidence sustains the finding.
The accounting in the lower court, however, was had upon the basis
of the validity of the process, and therefore the judgment of the
Court of Appeals must be reversed and the cause remanded with
directions to that court to reverse the judgment and decree of the
Supreme Court, and remand the cause to the latter court for further
proceedings in accordance with this opinion.
This suit was brought by appellees against appellant for the
infringement of letters patent No. 204,741, and letters patent No.
452,898, issued to Joshua W. Jones, one of the appellees. An
accounting was prayed, and also an injunction pending the suit. The
bill contained the usual allegations of invention and utility, and
of infringement by the defendant (appellant). The
Page 184 U. S. 599
answer traversed those allegations, and alleged prior use,
disclosure of the invention in prior publications, and also
anticipation by prior devices and processes. The answer contained a
list of the devices. No evidence was given as to, and no judgment
passed on, patent No. 452,898. This appeal therefore is only
concerned with patent No. 204,741. The patent was issued to Joshua
W. Jones, one of the appellees, for a press and process (the
relation of the two is disputed) for "dry pressing" and removing
type indentations from printed sheets. The validity of the patent
was sustained, and its infringement by the defendant (appellant)
was found by the Supreme Court of the district of Columbia, and
decree passed adjudging appellees the sum of $3,491.70, with
interest and costs. The decree was affirmed by the Court of
Appeals. 16 App.D.C. 23. The case was then brought here. The facts
are stated in the opinion.
MR. JUSTICE McKENNA delivered the opinion of the Court.
1. A question of jurisdiction is raised. It is contended by
appellant that the case was not one of equitable cognizance, the
appellees' remedy being, it is claimed at law. The specification of
error upon which the contention is based is expressed as
follows:
"Because at the time of the hearing it appeared from the record
that the only patent before the court had expired before the
hearing, no motion for preliminary injunction having been made
prior to the expiration of the patent, and defendant being a mere
user of one machine, which machine was destroyed by fire before the
case was brought to hearing."
This seeks to determine the jurisdiction of the court by
conditions which came into existence after the commencement of the
suit, not upon those which existed at the time the bill was filed.
It is, however, urged in argument that the contract between Jones
and the W. O. Hickok Manufacturing Company
Page 184 U. S. 600
conveyed the patent rights to the press only, and not the
process described in the fifth claim of the patent, and that "the
court, sitting as a court of equity, had no jurisdiction to order
an injunction at the time the bill of complaint was filed." But
what the contract provided was an issue to be made in the case,
and, pending its decision, the preliminary relief by injunction
could have been granted. Appellees' contention as to the
jurisdiction is therefore not justified, and a discussion of the
reasons for this conclusion is not necessary. They are expressed in
Clark v. Wooster, 119 U. S. 322, and
Beedle v. Bennett, 122 U. S. 71.
2. The patent is designated an "Improvement in Bookbinders' Dry
Press and Sheet Tie." That is, a new press and process for removing
type indentations from printed papers or sheets, the latter when
folded being designated technically as "signatures."
The type indentations are made in printing, the type displacing
somewhat the fiber of the paper, and the removal of the
indentations is technically known in the art as "dry pressing," and
the device by which it is done is called a "dry press." Such a
press the patent is intended to cover, and also a particular
process for dry pressing. As a process, the validity of the patent
is questioned; as a new machine, its invention is controverted. An
inquiry into the prior art becomes, therefore, important, and a
witness, describing it and its imperfections, testified as
follows:
"Previous to the invention of Mr. Jones as described in said
patent, it was the custom to press printed sheets by inserting them
between heavy paper boards, sometimes called 'fuller boards,' but
generally now called 'glazed boards,' and putting said boards with
the printed papers between them into a powerful press, by which
pressure was produced on said boards by various means, sometimes by
means of screw pressure, sometimes by hydraulic pressure. After the
pressure was produced on the paper, it was continued by allowing
the press to remain with its pressure on to its fullest extent for
ten or twelve hours or more, say from one night to the next
morning, when the pressure was removed, the papers and boards taken
from the press and separated by removing the boards from the pile
of
Page 184 U. S. 601
combined boards and paper, and putting the boards on one side on
one pile and making another pile of the printed papers. This was
necessarily comparatively a slow process, inasmuch as, with one
press, only as much printed paper as the press would hold when put
between the boards could be pressed in about ten or twelve hours,
so that, where much work had to be done, a number of such presses
were necessary. It was also costly as to labor because the sheets
had to be placed between the boards and removed therefrom
afterwards, which took much time, especially where, as in the case
of fine work, only one sheet was placed between two boards, and
when this was done, comparatively few sheets could be pressed at
once, because the boards took up much more room than the paper did,
they being quite thick."
It was to meet this condition that the Jones patent was
conceived, and its object is stated to be, first, to
"furnish a bulk compressor device, to be used to prepare the
matter properly before it is inserted in the dry press proper, thus
saving time or repeated travel by the latter before the operation
of tying; second, to furnish a dry press proper in which the
compressing parts or heads -- that is, the base and plunger -- are
constructed dividedly, or with ways through them to afford access
through them, to readily insert and manipulate the twine, and to
tie the bundles of paper while held compressed, thus securing the
bundle together by a powerful tie, which, when they are removed
from the press, retains its force
ad libitum; third, a
press frame, having sides peculiarly set and arranged and provided
with longitudinal slots therein corresponding with the ways in the
press heads above referred to, and for the same purpose, as well as
to rightly lodge and center the paper with relation to the middle
of the press heads; fourth, certain ledges in the said press-frame
and guides on the plunger thereof, to properly center
different-sized sheets in press to secure the tie at the middle of
the bundles both ways; fifth, a new process for treating printed
and folded sheets of paper in dry pressing, consisting of
subjecting a collection of such sheets to pressure without the use
of fuller boards, and, while under such pressure, tying them into
compact bundles, with end boards thereon,
Page 184 U. S. 602
then removing them immediately from the press and allowing them
to remain tied sufficiently long to fix and complete the dry
pressing."
The press is described in the patent with particularity, and
illustrated by drawings. It may be said generally that it is a
press in which bundles of signatures (sheets) are placed, at the
end of which bundles rigid boards are attached to distribute the
pressure which is exerted by the press. The press moves in a
"trough formed" bed so mounted as to incline laterally "so that the
folded paper may securely lodge and carry therein while being
operated on." Rectangular blocks are rigidly secured at both ends
of the bed. The lower block is the base of what is called in the
specifications "a divided head," constructed with "openings or
ways." Opposing this there is a "plunger or follower," to which
there is also attached a "divided head" having "openings and ways"
between the parts of the head. The "openings and ways" are to
enable the operator to pass his hand between the parts of the press
and tie the bundles. The operation of the press is as follows: a
bundle of signatures (sheets) with rigid boards at its ends is
placed in the press, pressure is exerted by means of a screw (other
means may be used) which passes through the upper block and
operates on the plunger or follower and the "divided head" attached
to it, and as the bundle rests on the lower block and its "divided
head," it is evident that the pressure on the sheets will be in
proportion to the power applied. While under pressure in the press,
the bundles are tied, access to them being had through the openings
in the "divided head." The bundle is then removed from the press
and allowed "to remain tied sufficiently long to fix and complete
the dry pressing."
The advantage of the new method is that it is not so dilatory as
the old, and is more economical. In the old method, the sheets,
coming damp from the printing press, had to be dried before dry
pressing, and had also to be subjected to pressure in the press a
number of hours to effect the smoothing (dry pressing) of the
sheets. The quantity of the work therefore was limited by the
number of presses. In other words, as expressed by one of the
witnesses, "where much work had to be done, a number of
Page 184 U. S. 603
such presses were necessary." And it was further testified
that
"it [the old method] was also costly as to labor, because the
sheets had to be placed between the boards [fuller boards] and
removed therefrom afterwards, which took much time, especially
where, as in the case of fine work, only one sheet was placed
between two boards, and when this was done, comparatively few
sheets could be pressed at once, because the boards took up much
more room than the paper did, they being quite thick."
In the new method, there is no such limitations as to time, nor
does it require the same expenditure of money. In the new method,
the initial pressure is applied in the press; the subsequent
pressure necessary to remove the type indentations is continued in
the tied-up bundle. The operation therefore is comparatively rapid.
"Putting the paper into the press," a witness testified, "tying it
up in a bundle, and removing it therefrom" takes a few minutes. And
the longer the sheets remain in the bundles, the better the effect.
Some time is necessary. Another advantage is claimed. It was
testified that, in the Jones method, the sheets, when folded have
the convex impression of one-half of the sheet brought in contact
with the convex side of the other half of the sheet or of the sheet
next to it, "and these convex impressions, coming in contact with
each other tend, when under pressure, to efface each other."
There is, however, no revelation in the specifications of the
patent of the operation of opposing "convex impressions," nor a
word to indicate that Jones was conscious of the advantage of that
assistance to the pressure upon the sheets. The discovery seems to
have been made by one of the witnesses, and also seems to have been
disclaimed by Jones in the following question and answer:
"X-Q. 56. Throughout the testimony, a good deal has been said
about the advantages derived from your supposed invention from the
fact of the type indentations being concaved or convexed, whatever
that may mean. Is there anything said in the patent about
that?"
"A. No; neither do I claim that they are produced by my
process."
There is a dispute as to the character of the patent.
Appellees
Page 184 U. S. 604
contend that it is "a
process of
dry pressing,'
or removing type indentations from printed sheets" (claim
5 of the patent). Second.
"A
press of peculiar construction and
adapted to
the convenient carrying of this process into effect. The novel
features of which press are covered by claims one to four
inclusive."
The appellees contend that the patent is for a machine (claims 1
to 4) and also for a process (claim 5). And it is asserted the
latter claim is but an operation or function of the machine. It is
further contended that the machine and process were
anticipated.
In discussing these contentions, it is not necessary to minutely
observe the distinctions made and disputed by counsel. Even if the
patent is primarily for a novel process, there is a claim for a
novel press, and, by the consideration of the latter, we think, the
validity of the former will be determined.
Was, then, the press anticipated, including broadly in the term
the inquiry whether the press exhibited invention in view of the
prior state of the art? Anticipation is a question of fact, and the
burden of establishing it is on the appellant. The patent bears a
presumption of novelty and invention, and the lower courts, passing
on the evidence, found against appellant's contention. Such united
judgment this Court accepts unless there is a clear showing to the
contrary.
Brainard v. Buck, ante, p.
184 U. S. 99. That
showing appellant claims the record establishes, and even urges
that presses of various kinds had become so familiar before the
Jones patent that judicial knowledge can be invoked for them. Hay
presses, cotton presses, tobacco, wool, and other presses are
instanced, all of which, it is said, were used for applying
pressure to masses of matter to compact them into bundles, and in
all of which the pressure was retained by strings, ropes, or bands
of some kind. But wherein those presses differed one from the other
and received special characterization and utility would be a matter
of proof, not of assumption, and wherein the Jones patent differs
from either of them and has derived its special applicability is
certainly not so clear that it is demonstrated against the judgment
of the Supreme Court and the Court of Appeals of the District. Nor
are we nearer that demonstration by the specific patents
Page 184 U. S. 605
put in evidence by appellant. There is generic sameness, we
concede, but there are differences, and the Patent Office and both
lower courts found novelty and invention in those differences.
The appellant introduced in evidence a patent issued to D.
Kellogg, October 12, 1852, for a wool press; one to W. R. Dingham,
October 20, 1863, for improvement in paper presses; one to S.
Cooley, October, 16, 1866, for a wool press; to Thomas Stibbs,
September 19, 1871, for pressing yarn; to W. P. Craig, for a baling
press; to Thomas G. Hardesty, for tobacco press; to G. B. Archer,
for baling manure and other substances; to C. Brown, for baling
short-cut hay, and another for baling short-cut straw, and a patent
for a signature press to R. A. Hart. There was also testimony of
the existence of a press used in the bookbindery of one John
Palmer, in Philadelphia. The press was used in a later stage of
bookbinding than "dry pressing" for the purpose of tying printed
sheets into bundles for storing. It was an upright press with
opposing platens or heads in which there were grooves to receive
the cords by which the bundle was tied while under pressure.
There is a certain resemblance between all of the devices. They
are all instruments for exerting pressure upon substances placed
between compressing heads or followers to compact such substances
into bundles and afford facilities for tying the bundles while they
are under pressure. The Dingham patent, the one most relied on by
appellant, may be selected for illustration.
The Dingham device is an "Improvement in Paper Presses," and the
inventor claimed to have "invented a new and useful machine for
combining and facilitating the operation of pressing and tying
paper into reams or bundles," which he called "the combination
paper press and tie engine."
There were defects in the art of pressing and tying paper very
similar to the defects in the art of dry pressing "signatures," and
Dingham described the former as follows:
"The process of pressing and tying paper now generally employed
requires a large and somewhat expensive press, which is located in
some corner of the finishing room, and as the paper comes from the
machine, it is carried to the finishing
Page 184 U. S. 606
table, there counted and folded, and when sufficient is obtained
to fill the press (usually about one hundred reams), it is conveyed
to the press and placed therein, and, by means of a large screw and
follower, pressed for about twelve hours, or during the night. It
is then removed and conveyed to the tie table, and there tied into
reams. After this (it being, when it comes from the machine,
usually double crown, or double the length of the ordinary ream of
wrapping paper), it is cut into two reams or single crown. The
usual mode of tying paper is by passing a strong cord or twine
around the ream, with a noose or loop at the end through which the
other end is passed, and then drawn upon with the hand until the
loose ream or bundle is sufficiently compressed. This operation is
laborious and tedious, occupying much time, requires strong twine,
and unavoidably draws the ream away or the paper out of place."
This language is quite similar to that used by Jones and his
witnesses to describe the defects which existed in the bookbinder's
art, and the presses of the inventors also have similarity. In
both, sheets of paper are pressed by being placed between
"compressing heads," which "are constructed dividedly," to use the
words of the Jones patent, "separate and sufficiently disconnected
(to use the language of the Dingham patent) to allow the string or
cord for tying the paper to pass between." Each machine therefore
comprises a compress and tie table. In each, there is the same
rapidity of operation, the same economy of time and means, and in
each the pressure first applied by the machine is retained by cords
and continued in the bundle. And it is manifest that this retained
and continued pressure, which has for its purpose in the Jones
patent to remove type indentations from the sheets and in the
Dingham patent to retain the sheets in the bundle, adds nothing to
the operation of the press of the former and detracts nothing from
the operation of the press of the latter. But, notwithstanding
these resemblances, we may ascribe invention to the Jones patent if
it be confined to the press proper. In other words, the press may
be regarded as a form adapted to the bookbinder's art, and although
preceded by the Dingham patent in a general way, may be considered
as an invention of that form.
Page 184 U. S. 607
The fifth claim of the Jones patent -- the claim for the process
-- must be viewed from a different standpoint. The first four
claims of the patent, as we have said, describe the elements, "In a
printer's and bookbinder's dry press and sheet tie." The fifth
claim is as follows:
"5. The process herein described for treating folded printed
sheets of paper in dry pressing, the same consisting of subjecting
a collection of such sheets to pressure without the use of fuller
boards, and while under such pressure tying them into compact
bundles with end boards, then removing them immediately from the
press, and allowing them to remain tied sufficiently long to fix
and complete dry pressing."
The dependence, therefore, is not, as counsel for appellee
contends, the press upon the process. It is the other way, the
process upon the press, for it is impossible to consider the fifth
claim as describing anything but the operation and effect of the
press. Indeed, the process is the whole value, the sole purpose of
the press. What, indeed, is the process -- what is the force at
work? And the inquiry is entirely independent of questions as to
what constitutes a patentable process discussed by this Court in
Risdon Locomotive Works v. Medart, 158 U. S.
68, and in
Westinghouse v. Boyden Power Brake
Co., 170 U. S. 537.
What, then, is the force at work, and how is it applied? It is
force (pressure) applied to sheets of paper placed between
"compressing heads." In other words, a special application of
pressure began in the press and continued in the bundle by means of
strings and cords. This, however, is the operation and effect of
the machine, and it is nonetheless so because the pressure is held
indefinitely. Its existence in the bundle is not independent of the
press. The pressure is as much an effect in the bundle as when
first applied. The pressure is applied by the press and so,
substantially, are the bands or cords which continue the pressure,
and we cannot assent to the view that the continuation of the
pressure in the bundles with the consequence of removing type
indentations in the printed sheets is anything but the natural and
direct effect of the machine.
Infringement was put in issue by the pleadings and passed on by
the lower courts. They found as a fact that all the claims
Page 184 U. S. 608
of the patent had been infringed by appellant. The finding is
not absolutely disputed. The assignment of error is
"that the patented machine used by defendant, in view of the
state of the art preceding Jones' invention, did not infringe any
claims of the patent in suit."
That is, appellant contends that the evidence exhibits a
complete anticipation, or so limits and narrows the Jones invention
as to make the differences between the Jones press and that which
was used by appellant more than formal. We have decided that the
Jones press had not been anticipated, and both of the lower courts
have found that the differences between it and appellant's press
were not substantial. The evidence sustains the finding. The
witnesses on behalf of appellees testified to the differences
between the presses. They pointed out the essential resemblances of
the presses and the merely formal character of the differences.
There was no opposing testimony.
The accounting in the lower court, however, was had upon the
basis of the validity of the process (claim 5), and therefore the
judgment of the Court of Appeals must be reversed and the cause
remanded, with directions to that court to reverse the judgment and
decree of the Supreme Court and remand the cause to the latter
court for further proceedings, in accordance with this opinion, and
it is so ordered.