1. Patent No. 1, 128, 145 (Claim 25), granted to Inwood and
Lavenberg, for mechanical means of holding in proper relative
positions side pieces and step-mitered end cleats, preformed and
separate, while joining them by stapling and wiring into a foldable
box-blank,
held invalid for want of invention. P.
282 U. S.
711.
2. The method of making the box-blanks out of separate,
preformed pieces, suitably held for stapling and wiring, was
involved in and disclosed by an earlier, and now expired, product
patent to the same persons. P.
282 U. S.
709.
3. The present patent (Claim 25) covers only a mechanical means,
useful in pursuing that method but which did not, in itself,
involve invention. It cannot be construed as embracing the method,
nor be given the effect of extending the monopoly, of the expired
patent. P.
282 U. S.
714.
37 F.2d 830 reversed.
Certiorari, 281 U.S. 711, to review a decree holding a patent
valid and infringed and reversing a decree of the district court,
which adjudged otherwise, 24 F.2d 872.
Page 282 U. S. 705
MR. JUSTICE STONE delivered the opinion of the Court.
In this case, certiorari was granted, 281 U.S. 711, to resolve a
conflict of decision between circuit courts of appeals with respect
to the validity of Claim 25 of patent No. 1,128,145, granted
February 9, 1915, application filed October 27, 1904, to Inwood and
Lavenberg, for a machine for making box blanks. I n the present
suit, brought by respondents, in the District Court for Western
Michigan to enjoin infringement of this and other patents, the
district court held the patent "invalid if infringed," and entered
a decree for petitioner, 24 F.2d 872, which the Court of Appeals
for the Sixth Circuit reversed, holding Claim 25 valid and
infringed. 37 F.2d 830. The Court of Appeals for the Seventh
Circuit had held the patent invalid,
Wirebounds Patents Co. v.
Gibbons Box Co., 25 F.2d 363, affirming a decree without
opinion of the District Court for Northern Illinois.
The present suit was based on three patents, all issued to the
same patentees: the machine patent, already referred to; No.
1,128,144, issued February 9, 1915, application filed October 14,
1904, for a "work holder," used in connection with the box blank
machine, and No. 1,128,252, issued February 9, 1915, application
filed April 21, 1914, for a method of making wirebound boxes. The
first two were based upon co-pending applications filed in October,
1904, and the third upon a divisional application cut out of the
work holder application. Typical claims are printed in the margin.
* A fourth product
patent, now
Page 282 U. S. 706
expired and only indirectly involved, was No. 799,854, issued to
the same patentees September 19, 1905, application filed October
17, 1904 (reissued in 1907, No. 12,725), covering a specific form
of box blank which could be produced by the use of the machine and
method patents, but also might be made without resort to
either.
The court below, after pointing out that the three patents
directly involved were all issued on the same day and will expire
at the same time, and that there could be no commercially important
infringement of any of the patents which did not infringe the
machine patent, limited its decision to determining the validity
and infringement of Claim 25 of that patent. It gave the usual
decree for injunction and accounting with respect to this claim,
and dismissed the bill as to the work holder and method patents,
but with leave to counsel to apply for further consideration of any
other claim of the patents in suit if deemed necessary to settle
the controversy. No
Page 282 U. S. 707
such application was made, and it was conceded at the bar that
the disposition here of the issues raised with respect to Claim 25
will be, for all practical purposes, determinative of the case.
By the teachings of the Inwood and Lavenberg patents, to which
reference has been made, wirebound box blanks may be produced,
consisting usually of four panels which may be conveniently folded
and attached to box ends so as to form strong, lightweight,
commercially useful boxes. The blanks, before folding, comprise the
panels of side material in straight edged sheets of thin wood or
veneer, stapled at each end, to cleats placed at right angles to
the side material, the staples straddling reinforcing wire. The
cleats, which have previously been step-mitered or beveled, and
which in practice are usually eight in number, one at each end of
the four panels of side material, are fastened to the side material
in such position with respect to it and to each other that, when
the blank is folded, the reinforcing wires serve as hinges; the
ends
Page 282 U. S. 708
of adjoining cleats engage, and the panels form the four sides
of a box, with or without overlapping edges, as may be
preferred.
Before Inwood and Lavenberg, the method of manufacturing box
blanks, under the so-called Rosback patents, had been to form a
blank of a single sheet of side material stapled at each of its two
sides, to a single cleat. The rigid blank formed by this first step
was then prepared for folding by a second and distinct mechanical
procedure, in the course of which each of the cleats was cut into
four separate cleats, step-mitered at their ends, and the single
sheet of side material scored. The blank was then capable of being
folded by bending the side material along the scored lines so that
the adjacent ends of the cleats would meet. Before any of their
applications, Inwood and Lavenberg appear to have devised a machine
or work holder for holding in position, and fastening, pre-formed
cleats to a single piece of side material; but that did not wholly
eliminate the second part of the earlier procedure, by which the
side material was scored before folding. The final step which
brought them to their improved method was taken only when both
cleats and side panels, assembled in position, were fastened into a
foldable box blank by a single operation. The difference between
the two methods was that the old taught the production of foldable
relationships by cutting the rigid box blanks. Inwood and Lavenberg
taught the new by assembling and fastening together the separate
elements. Their method constituted an important advance over the
old, which had not been commercially successful. The new, by the
substitution of a single for a two-step procedure, saved the
expense and inconvenience of double handling, and made it
practicable to use cleats which could be pre-formed in quantities
cheaply, and permitted the use for that purpose of short and
otherwise waste pieces of lumber. It eliminated certain mechanical
difficulties of the
Page 282 U. S. 709
old method of mitering and scoring the rigid blanks, and
resulted in a product with fewer defects and which folded more
easily than the forms produced by the earlier.
Numerous details of the new procedure had been taught by the
prior art. The idea of folding wire- or metal-bound sides into a
box was old. Averill (1900, No. 661,481) and Rosback (1898, No.
608,796) specifically taught the binding of the sides together with
wire Howenstine (1891, No. 453,479), Hamilton (1887, No. 373,828),
and others had developed the idea of using pre-formed cleats
attached or to be attached to a plurality of side sheets. Rosback
had developed elaborate machines for step-mitering (1898, No.
609,630; 1899, No. 623,258), and for stapling box blanks (1898, No.
614,348; 1899, No. 630,303), and devices for feeding box blank
material into the stapling machine (1899, No. 625,958, No.
636,068).
The conception of Inwood and Lavenberg which was new was that
the pre-formed cleats and side materials could be assembled and so
positioned with reference to each other that they could be stapled
together to manufacture, in a single stapling operation, the
finished product, the box blank ready for folding. This constituted
an important advance over the use of the rigid box blanks in the
two-step method of the prior art, which had been developed by
Rosback. The new method had a large and immediate commercial
success, and we assume, as the court below held, that it involved
invention.
See The Barbed Wire Patent, 143 U.
S. 275,
143 U. S. 283;
Krementz v. S. Cottle Co., 148 U.
S. 556,
148 U. S. 560;
Minerals Separation, Ltd. v. Hyde, 242 U.
S. 261.
This conception is that of the reissue (product) patent, held
valid as a basic patent in
Wirebounds Patents Co. v. Chicago
Mill & Lumber Co., 238 F. 929, and by the Seventh Circuit
Court of Appeals in
Wirebounds Patents Co. v. Gibbons Box Co.,
supra. As it has now expired, the public is free to use the
new procedure of making
Page 282 U. S. 710
wirebound folding box blanks, so far as taught by that patent.
The patent is for a product, an improved wirebound box blank,
foldable into a box with overlapping sides. It describes the
earlier two-step procedure by which the rigid box forms were first
assembled and then, by a second separate step, prepared for folding
by step-mitering the cleats and scoring the side material. The
specification of the patent is:
"Our invention relates to certain improvements in wirebound
boxes, especially of that class in which the blanks constituting
the four sides of the box are assembled and secured in relative
position to each other prior to folding by reinforcing wires, and
has for its object the assembling and fastening together such parts
constituting the completed blank so that the same when folded will
produce overlapping edges of the side sheets."
The drawings of the patent, which show a completed blank ready
for folding, read with the specifications, indicate unmistakably
that the advance, achieved by the improvement over the existing
method of manufacturing box blanks was in the process, by which the
product of the patent could be made by assembling and positioning
pre-formed cleats and sides, so spaced that, when stapled, they
will fold to form the four sides of a box.
Thus, this patent completely discloses the invention of Inwood
and Lavenberg and the advance which it made over the prior art. It
taught all that was disclosed by their method patent, for the
method claimed is but the process of the now expired reissue patent
resulting in the product of the patent. As only the validity and
infringement of the machine patent are now before us, it is
unnecessary to consider whether, for the reason just stated, the
later method patent is invalid, although granted on a co-pending
application, as was held in
Mosler Safe & Lock Co. v.
Mosler, 127 U. S. 354,
127 U. S. 361,
or whether it is invalid
Page 282 U. S. 711
because of the delay in filing the divisional application, as
was held by the district court below.
All else embodied in the machine and work holder patents, we
think, involved not invention, but the application of mechanical
skill to the solution of the problem of devising suitable
mechanical means for the manufacture of foldable box blanks by the
process or method disclosed by the reissue patent.
The prior art had taught how to construct a machine which would
fasten with staples the elements of the box blank of the reissue
patent. That of Rosback, No. 614,348 and No. 625,958, used for
stapling the rigid box forms of the earlier art, consisted of a
stapler, stationary guides for directing the sheets and cleats, and
an endless chain with attached pushers for feeding the materials
along the guides to the stapler. Once it became apparent that an
improved method could be employed in manufacturing the completed
box blank by assembling all its pre-formed elements and holding
them in their appropriate relative positions while they were being
fed through a stapling machine, it was equally apparent that the
new method could be used only by resort to some appropriate
mechanical means for holding the elements of the blank in position
until fastened. But the solution of that problem was, we think,
obvious, involving only the adaptation of familiar mechanical means
for holding cleats and sides in place, and requiring no more than
the mechanical skill of the calling. That, we conclude, was all
Inwood and Lavenberg achieved by their work holder and machine
patents, and it is all that petitioner has done in the adaptation
of the Rosback machine which it employs in the use of the method
which it is now free to make.
The work holder patent describes and claims a portable work
holder, embracing two parallel channels in which are placed the
preformed cleats, their ends engaging space
Page 282 U. S. 712
blocks of such size, shape, and location as to hold the cleats
in appropriate position. The box sides, resting upon the cleats so
engaged, are positioned by the space blocks and held in place by
clamps. The work holder, with the assembled elements of the box
blank thus held in position, is then passed through the stapling
machine, which staples together wire, sides, and cleats. Claim 25
of the machine patent, it will be observed, relates only to cleat
treatment. The mechanism which it claims could be operated to make
box blanks having multiple preformed cleats and a single piece of
side material. It obviously would not, without some modification,
hold both cleats and separate side panels in appropriate relative
positions for stapling, and so could not be used for making boxes
by the improved method. As other claims of the machine patent may
be taken to supply this deficiency, we assume, for present
purposes, that Claim 25, with others of the machine patent, is
broad enough to embrace the essential elements of the work holder,
and that the work holder is an exemplification of them. The machine
patent, aside from the work controlling means, consists generally
of a stapling head surmounting a table with feed roller mechanism
for pushing the work holder under the stapler.
We think that the machine and work holder patents, read
separately or together, apart from such disclosure as they make of
the process or method of the reissue patent, disclose only the
results of the application of mechanical skill to the development
of a convenient mechanism for using the method. Petitioner, by the
adaptation of the Rosback machine which it uses to produce the box
blank of the reissue patent, has done no more. It has increased the
number of pushers to that required for the desired number of
assembled separate elements -- cleats and side material. The
pushers are spaced at appropriate distances and used in conjunction
with a detent or "hold back," so that, by the cooperation of the
pushers
Page 282 U. S. 713
and hold back, cleats and side material are held in appropriate
positional relationship as they pass under the stapler. By this
multiplication of pushers, the Rosback machine did for each panel
only what it had previously done for the single rigid box blank. In
making the latter, as well as the former, the pushers performed a
positioning function, a fact which, alone, challenges the
patentability of respondents' machine claim. With the old blank, as
well as the new, the pushers could not be placed at random, and
cleats and side materials both had to be brought into appropriate
relative positions. Moreover, the spacing of the panels with
reference to each other in box- or crate-making machines of the
Rosback type, by the use of a plurality of space pushers on the
same endless feed chain, was old. Such an arrangement, where the
pushers performed this positioning function, is shown in
Greenstreet (1895, No. 547,486; 1897, No. 579,574), and Lipps &
Springer (1905, No. 801,998).
The pushers and hold back, like the channels and space blocks of
the work holder, are familiar mechanical means for holding
materials in position while work is being done upon them. Given the
method of the reissue patent, failure to adapt these obvious means
to the solution of the problem in hand would, we think, have
evidenced a want of ordinary mechanical skill and familiarity with
them. Their adaptation to the new use was not the creative work of
the inventive faculty. It was
"but the display of the expected skill of the calling, and
involves only the exercise of the ordinary faculties of reasoning
upon the materials supplied by a special knowledge, and the
facility of manipulation which results from its habitual and
intelligent practice."
Hollister v. Benedict Mfg. Co., 113 U. S.
59,
113 U. S. 72-73;
Concrete Appliances Co. v. Gomery, 269 U.
S. 177;
Aron v. Manhattan Ry. Co., 132 U. S.
84,
132 U. S.
90.
The court below upheld the validity of the machine patent
because it had contributed to the market success of the product,
which could not have been attained without
Page 282 U. S. 714
an automatic machine for its manufacture, and because it thought
that the "dominating new result" was to be found in the combination
of machine elements. In considering the objection that the machine
patent did not involve invention, it said, p. 836:
"It has been suggested that the disclosure made by the method
patent left no room for invention in the machine patent. This
suggestion cannot be of force, since the patents were co-pending,
and one is not prior art as against the other, even if they had not
both been issued on the same day. . . . If, by the suggestion, it
is meant that the primary thought was in the method, and that
little or no invention was needed to make a machine once the method
had been conceived, that may be true, but that cannot militate
against the validity of the machine patent when the two are
practically simultaneous, for in such case the concept involved in
the method is an important and perhaps a vital part of the machine
invention. The concept which underlies and precedes the machine may
or may not involve an independently patentable method; in either
event alike, the machine is patentable."
But this, we think, does not meet the objection, which, more
precisely stated, is that the machine and work holder patents,
fairly read, do not embrace a patent for the dominating new result,
the process of the reissue patent, but are patents for a particular
combination of mechanical means, useful, as is that of petitioner,
in availing of the process, but which, as we have said, does not
involve invention. That the new result is not so embraced is
apparent from respondents' insistence, to establish the seniority
of the machine invention over that shown by the reissue patent,
upon the early use, to which we have referred, of the Inwood and
Lavenberg machine for stapling a plurality of pre-mitered cleats to
a single piece of side material. But such use of the machine
invention did not
Page 282 U. S. 715
disclose or involve the conception of the reissue patent of
producing foldable relationships in one step, which, as we have
said, is the new result.
The machine and work holder patents describe and claim only a
combination of mechanical elements enumerated and arranged as
stated in Claim 25, as we have construed it. This combination,
which had been found suitable for manufacturing blanks with a
plurality of pre-formed cleats and a single piece of side material,
was suitable for using the process of the reissue patent, as is the
combination used by petitioner. Such possibilities of use might be
spelled out of the machine and work holder patents by one skilled
in the art and familiar with the process described in the reissue
patent. But nowhere do they describe or claim, as the invention of
the patent, the new method or procedure of Inwood and Lavenberg
which was their improvement on the prior art. That is told in full
in the reissue patent, and it is there that the dominating new
result appears. Obviously, from what we have said, if the method
concept which underlay and preceded the machine had not been
independently patentable, the machine could not have been. For the
same reasons, the machine cannot be patentable merely because it is
capable of use in applying a conception independently
patentable.
The question, therefore, is not one of reliance upon the prior
art of the reissue patent as against a co-pending patent, or of
double patenting, or of the overlapping of specific and generic
patents. It is the attempted extension of the monopoly of the
expired reissue patent in Inwood and Lavenberg's invention by
resort to the machine patent, and to the work holder from which the
described invention had been subtracted by division, and which
cover, not the invention of the reissue patent, but a mechanical
device which does not involve invention.
Reversed.
*
"
Machine Patent No. 1,128,145 Claim 25. A machine for
making box blanks comprising work controlling means having
cleat-positioning means to receive sectional cleats in parallel
lines, and spacing means to space cleats endwise from each other in
each line, preparatory to connecting said cleats in their spaced
relation, said work controlling means being arranged to receive
side material to be secured to said cleats; fastener applying means
for securing binding means to the side material and cleats
controlled by the work controlling means; means for relatively
feeding the work controlling means and fastener applying mechanism
for securing said binding means across the intervals between said
spaced cleats to secure them together in their spaced relations to
form a foldable blank."
"
Machine Patent No. 1,128,145 Claim 55. A machine for
making box blanks comprising a plurality of groups of working
controlling means, each group for a separate individual side
section of the box, and comprising means to support cleats and side
material in cooperative relationship for being secured together to
form a box side, and each group having means to support its cleats
and side material in a relationship to enable the same to be folded
cooperatively with corresponding portions of a side section
controlled by another group, and means to secure wire binding to
the respective side sections and to provide wires for connecting
one section and another in foldable relationship."
"
Work holder Patent No. 1,128,144, Claim 6. Work
controlling means for use in the manufacture of wire-bound boxes
comprising, in combination, cleat-positioning means to receive a
plurality of rows of cleats disposed substantially end to end, and
cleat-spacing means relatively adjustable to suit individual cleats
of different lengths to be received in said positioning means."
"
Method Patent No. 1,128,252, Claim 2. The method of
making wirebound boxes having individual cleats and individual side
pieces separated at the lateral corner edges of the completed box
and connected by wires at said edges, which comprises assembling
previously formed individual cleats with the separate previously
formed side material for an individual side to provide a side unit
of the box; assembling additional such side units to provide the
other sides of the box; securing to the cleats of each side unit a
wire binding extending completely across said unit; connecting said
side units by said wire binding, while leaving the latter laterally
flexible to accommodate relative shifting of the separate meeting
edges of the pieces of side material, arranging said side units in
box form, and completing the continuity of the wire binding;
whereby relative longitudinal shifting of meeting edges or pieces
of side material tends to bend the wire binding out of normal
alignment, and is resisted by the tensile strength of the
wire."