Appeal from the District Court of the United States for Eastern District of Wisconsin, F. Ryan Duffy, Judge.
Before EVANS and SPARKS, Circuit Judges, and LINDLEY, District Judge.
Plaintiff charged defendant with infringement of plaintiff's patent No. 1,932,041 issued to Jacobson October 24, 1933, on an application filed December 12, 1931. The defenses were non-infringement and invalidity, and the answer prayed that the patent be declared invalid. The District Court decreed the patent valid but not infringed, and from that decision plaintiff has appealed. This patent relates to improvements in baling presses and more particularly to a triple compression press.
The District Court handed down a written opinion (51 F.Supp. 796) fully setting forth the description of the patent and its uses and objects, and they will not be repeated here. The use of the patent and the accused device is for baling metal scrap, and the object is to get it in such compressed form as to be satisfactory to steel mills, who are the purchasers. Single and double compression presses were quite old in the art and were used for many years for baling lighter materials. The bales thus produced were necessarily limited to the final width of the bale. Bulky scrap could not be satisfactorily handled with such limitation, and the disclosures of the present patent were designed to overcome such limitation. Claims 1, 2, 3 and 5 were in issue, and claim 2 was considered typical.*fn1
On June 24, 1930, a prior patent for a three-ram compression press was issued to the patentee of the patent here involved, and to one Kruse, under the name of Jacobson and Kruse. Under that patent the present defendant had manufactured a three-ram compression press in which all three rams operated within a rectangular box or chamber. That patent was declared invalid by this court for lack of novelty on December 2, 1938. Logemann Bros. Co. v. Galland-Henning Co., 7 Cir., 100 F.2d 557.
In the present disclosure, the receiving box as shown by the exhibit is likewise rectangular (although it is not thus specified in the claims) and it differs from the former patent in the addition of an offset recess, which is aligned with the bottom and that side of the main box which contacts the second ram. This recess accommodates the vertically moving third ram, operating upward from the bottom.
The specification states: "In carrying out the present invention, various conventional features are employed, such as a sliding cover and the usual compression rams. Therefore, the same form no specific part of the present invention, which is directed broadly to the manner in which the respective compressions are effected, and the highly novel design of the press box."
The accused structure accomplishes precisely the same result. One distinction between the two devices, by which the defendant seeks to avoid infringement, lies in the order of the use of the respective rams. The patentee with considerable stress designates his respective rams as transverse, longitudinal and vertical, and yet he states that the drawings constitute "one complete example of the physical embodiment of the present invention constructed according to the best mode so far devised for the practical application of the principles thereof." The operation of his device consists of filling the receiving chamber of the box from its side. The scrap is then pressed by what he calls his transverse ram against the opposite side of the box until its width is the same as that of the longitudinal ram. This longitudinal ram then operates to compress the mass of material into the offset pocket. In the accused device, which is of the same form as that of the patented structure, the receiving box is filled from the end instead of the side, and the operation continues in the same manner as stated above. The defendant argues, therefore, that his first ram does not move transversely but longitudinally, because it travels along the length of the box instead of the width of it; and that his second ram is transverse the box because it travels across the box from side to side and not longitudinally. The District Court thought that this was a very narrow difference, but that it was sufficient to avoid infringement because of the crowded condition of the art and because of the stress which plaintiff had placed upon the order of the use of his rams.
It is interesting to compare the two devices when they are placed in the same relative position with respect to the first, second, and third rams, instead of using the words transverse, longitudinal and vertical. They operate in precisely the same manner and they produce precisely the same result. A line transverse of a box may cross from end to end as well as from side to side, but of course a longitudinal line no doubt means one running lengthways of the object. Hence the only difference between the patented article and the accused device, with respect to the use of the rams, relates only to the second ram. That difference is not one of direction, but of choice of words to express the same direction, for in each device the course of the second ram crosses the projected course of the first ram at right angles.
Apparently there is no advantage or disadvantage in filling the receptacle either from the end or from the side, and we think a mere difference in the description of direction of the rams is not sufficient to avoid infringement. It seems to us that the issuance of the patent was not due, in whole or in part, to the order in which patentee uses his rams, or to the limitation of filling the receptacle from the side. To construe the patent as suggested by defendant we think would lead to an absurdity, for if one should use a square receptacle, which is certainly permissible under the claims, it could not be said to infringe because, all sides being equal, the phrase "longitudinal of the box" would be meaningless. That there is a distinction between length and breadth is due to the fact that the patentee chose to use as a preferred embodiment of his disclosure, a rectangular box, not a square, to be filled from the side, and chose an inept word to express the course of the second ram. We think such subtle refinements cannot constitute a valid basis for the issuance of a patent, or a defense against infringement. See Westinghouse v. Boyden Co., 170 U.S. 537, 18 S. Ct. 707, 42 L. Ed. 1136.
Defendant further contends that its device is an improvement over Jacobson and Kruse, and does not infringe the patent in suit, in that when the second ram of the accused device is closed and the third or vertical ram is in operation, the first ram may be opened while the third ram is in operation. In the Jacobson and Kruse disclosure, two walls of the third chamber are formed by the stationary walls of the receiving chamber, and the other two are formed by the faces of the first and second rams when closed, and of course they must remain closed during the operation of the third ram. In the accused device, and also the patent, the face of the second ram when closed still forms one wall of the third chamber, and of course must be kept closed during the operation in that chamber. The first ram may be opened after the second ram is closed, because its face no longer forms any part of the wall of the third chamber, due to the fact that the third chamber is recessed outwardly from the rectangular receiving chamber. This is also true of the patent.
As to the accused device, however, defendant urges a differentiation with respect to the patent in that when the first ram of the accused structure is opened, the receiving chamber may be partially filled while the third ram is in operation, thus saving time. This is due to the fact that the patent uses but one cover for the entire structure which must be kept closed until the third chamber and its ram have performed their functions, whereas the defendant uses a split cover, one for the second and third chambers, and another for the receiving chamber which may be removed when the first ram has performed its function, and the first chamber is ready for refilling when the first ram has been withdrawn to its original position. However, Jacobson is not limited to any particular form of cover, and it forms no specific part of his invention, and we think there is infringement. See Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 50 S. Ct. 9, 74 L. Ed. 147; Singer Mfg. Co. v. Cramer, 192 U.S. 265, 24 S. Ct. 291, 48 L. Ed. 437.
However, we think the patent is invalid in view of the teachings of the prior art, which we discussed in Logemann Bros. Co. v. Galland-Henning, supra, and in view of the further fact that whatever new thing the patent in issue discloses in addition to that ...