Appeal from the District Court of the United States for the Indianapolis Division of the Southern District of Indiana; Robert C. Baltzell, Judge.
Before ALSCHULER, EVANS, and SPARKS, Circuit Judges.
Suit was brought on claim 1 of Patent No. 1,674,942, issued June 26, 1928, to Leon Benoit, covering a machine for assembling cartons such as are suitable for the reception of eggs. The court found that claim 1, the only one involved, "if valid, must be strictly construed," and, when so construed, there was no infringement by appellees' machine. Benoit is the owner of the patent, and his coappellant is the exclusive licensee thereunder. Appellees are the manufacturer and the user of the alleged infringing machine.
Claim 1 reads as follows: "1. A carton assembling machine in which is combined means for centering a slotted carton in position to be operated upon, ejectors for moving simultaneously a plurality of partitions, one into each slot of the carton, and a single operating means for holding the carton in place and for causing advance of said ejectors, substantially as described."
Benoit said in his specifications: "This invention relates to a machine for assembling loose partitions in a carton such, for example, as is suitable for the reception of eggs. A carton of the general type for which the present machine is adapted is set forth in the Coyle Patent No. 1,327,946, * * * this being merely a suggestive construction in this connection."
The Coyle patent covered an egg box, which he described as being formed preferably of cardboard and made in a size suitable to the requirements of trade. The device "consists of a blank which is doubled over along its longitudinal center * * * so that it may be readily folded * * * at these points when being assembled into receptacle form or when folded in the knockdown form * * * slots cut in the blank, and in these slots are disposed walls having formed in their opposite sides notches * * * and in the upper edge a slot flared out at its lower end * * *."
"The distinguishing characteristic of his device" was "partitions are not permanently connected with the sides of the main body, so that they may be folded into position * * * without bending. They lay substantially flat against the sides of the upstanding folded center of the main body, * * *."
His claim 1 read: "An egg box comprising a foldable blank forming the body of the box, and partitions individually removably mounted on the body blank foldable longitudinally within the box, and unfolding automatically when the body is extended, substantially as described."
Benoit continued the description of his invention in the following language: "The carton herein set forth consists of a blank which is doubled over along its longitudinal center and which is provided in each of its two sections with registering transverse slots through which are inserted loose partition members. As these partitions are several in number for each carton, it follows that the operation of setting these partitions in place involves considerable time and effort. It is with a view to expediting this assembly of the partitions in such a carton that the present machine has been designed."
Continuing, the applicant says: "The advantages of the present machine are that it facilitates assembly of the partition members into the carton blank. Were this operation to be performed by hand, it would be necessary to handle each of these partitions separately. With the present machine, however, all the partition members are correctly positioned in one operation. This is accomplished expeditiously and always with a uniformity which is sparing of damage to the carton."
Claim 1, above quoted, must be read in the light of these specifications and with the structure of the Coyle patent as a background.
"The machine of the patent in suit is designed for use by the manufacturer of cartons in the manufacture of an old box of the type shown in the Coyle patent 1,327,946 of 1920, which box is composed of many separate pieces brought together by the machine of the patent in suit ...