Campbell Printing-Press & Mfg. Co. v. Duplex Printing-Press Co. , 41 C.C.A. 351 ( 1900 )

SEVERENS, District Judge,

haying stated the foregoing facts, delivered the opinion of the court.

This case was brought here on a former appeal by the defendant from an order of the circuit court granting a preliminary injunction. Our opinion affirming that order is reported in 16 C. C. A. 220, 69 Fed. 250. We there held that in view of the fact tlxat in a former litigation between this complainant and a vendee of the defendant, in the circuit court for the district of Massachusetts, a decree had been awarded in favor of the complainant upon a somewhat similar record, proper regard for that decision and the obliga-

tions of comity arising therefrom required that the preliminary injunction should issue as prayed; taking care, however, to state that our action then taken was not to be construed as a determination of the issues, either for the circuit court or this court, upon final hearing of the issues of law and fact. It now becomes our duty to re-examine the case upon its merits, and in doing this we are not constrained by the reasons which guided our former action.

The printing presses involved in the present suit are recent illustrations of an art which had its beginning with the invention of printing upon beds of movable type more than 400 years ago. The art being one of great and constant interest to the public, the inventive faculties of great numbers of ingenious men have been exercised in developing it, and bringing it to the almost marvelous state of perfection in which it now exists. For a long time presses were built upon the plan of making the printing impression by feeding the paper in sheets over the face of the type-bed, and thereupon causing pressure upon it of a flat plate of the same area as the type-beds. About 100 years ago the use of revolving cylinders was adopted; the type being transferred to the surface of the cylinder, and the impression produced by rolling them over the paper laid upon a flat bed. Later, about the year 1820, English inventors brought out forms of presses in which the types were set in beds of “forms,” as in the old platen presses; the paper was fed over the type-beds, and the impression was made by revolving cylinders moving both forward and backward over the paper, pressing it against the face of the type. Some of these presses printed on both the forward and backward stroke. The first of these English patents, which is shown in this record, was issued in 1820 to Winch. But, as this was soon improved upon by another, we shall not stop to notice its details. The English patent, No. 4,690, issued to Bold in 1822, was for a printing press having stationary type-beds located on tbe same horizontal plane, a carriage traveling back and forth, carrying impression-rollers over the type-beds, and printing at each forward and backward motion, inking-i»ollers and guiding-rollers placed on each side of the cylinders for the purpose of holding the paper off the type, except at the moving point of contact on the instant of impression. With the foregoing description, the diagram here shown, and which accompanied the same, is easily understood:

A press of similar construction was patented to Smith in 1885 (English patent’ No. 6,793), except that this was automatic, and one of its forms contained a device for lowering the type-bed during the backward stroke of the cylinder, and while the paper was being fed in.

Prior to 1850, so far as thev proof shows • (except by a somewhat crude patent to Senefelder in’ 1801), the paper on which printing was done was fed in by hand in sheets. But in 1853 one Montague was granted a patent in this country (No. 9,993) for a web-fed press. In this press the web of paper was suspended in the frame upon a roll from which it was drawn through the press by feeding-rollers. It was provided, also, with a stationary cylinder with guiding-rollers to hold the web away from the type-bed except on the line of impression, inking-rollers, and a traveling type-bed; also, a looping-roller between the cylinder and the outward delivery-rolls to produce • an intermittent movement of the web, feeding it in proper lengths while the impression was thrown off. This latter feature' will be noticed hereafter in dealing with the Stonemetz patent.

In 1851 an English patent (No. 886) was issued to Tannahill for an automatic press printing a web of paper upon stationary type-beds by locomotive impression-cylinders, guiding-rollers in front of and behind the cylinders being dispensed with, the web-roller and the feeding-rollers, by reason of their location, performing the function of holding the web off the type except at the line of impression. It showed, also, feed and inking rollers, and means for taking in the unprinted web while the impression of the cylinders was off. In one of the forms of his invention, Tannahill drops the type-bed while the cylinder is making its reverse movement and the web is fed in. In another the type-bed remains stationary, and the cylinder is raised at the end of the printing movement, and is sustained during the reverse movement out of contact with the type, and while the web is being fed in. And he detains the web while the printing is being done by “tension put upon it.”

In 1868 Boyal Cummings obtained a patent (No. 83,171) for a web-fed platen press. This was a perfecting press; that is, one producing printing on both sides of the paper, with stationary cylinders and movable type-beds. It showed, also, guiding-rollers. and inking-rollers, and means for feeding in the web at the proper time, all of which had for some time been well known in the art. Other patents are exhibited in the record prior to Kidder’s invention, involving the forms and operations of printing presses, which, with those already recited, showed substantially all the elements of the Kidder press. We say substantially, becá.use there are one or two variations in the relation of parts by Kidder which will be referred to later on. Proper regard to the limitation of the space to be occupied in an opinion forbids our giving a detailed analysis of all such former patents. It is sufficient to say that they exhibited stationary type-beds (one or more), traveling impression-cylinders, stationary impression-cylinders, inking-rollers, traveling type-beds, guides for the web on each side of the cylinders, and feeding-rolls and devices for bringing the web between the types and the cylinders while the impression was thrown off, and means for holding the web stationary while the impression was being taken. Borne were perfecting presses. Some printed on both the forward and backward movements of the cylinders. Others printed only with one movement. Kidder found all these things in the prior art. He varied the position of his double-cylinder press by making it vertical, bringing the type-beds face to face, and so locating his cylinders with reference to each other that they would subserve the purposes of guiding-rollers, each to the other; and he located a rigid clamp in front of the type-beds to grasp the unprinted web while the printing was done. In his single-cylinder horizontal press, he moved one of his guiding-rollers close to the cylinder, so that it should Bind the paper upon it, and the contact thus produced should operate as a detent of the paper while the printing was being done. Assuming that such variations made his combinations patentable, it is clear that the defendant’s press is no infringement of them. Cox, too, in his construction took his material from the prior art, and used nothing which was peculiar to Kidder. Neither of them can claim anything new beyond the specific forms of the elements combined by them. Their presses bear less resemblance to each other than the Cox press does to the older forms. Unfounded pretensions are made for the Kidder patent. In view of all that had been done before, it is useless to claim for him that he was a pioneer, and it would be necessary to establish such a claim in order to render it possible to give his patent so broad a scope as to include means varying thus widely from his own. In Kidder’s double-cylinder construction he describes it as vertical, the two type-beds facing each other. The court below thought that he should he held to the vertical position described by him, and that his patent would not cover the same construction laid horizontally. We are not satisfied that this would be so upon the reason given by the learned judge, but for another reason we think his conclusion would follow, that there Is no infringement. Kidder’s press could not he constructed with type-bed^ one above the other, and having both type-beds facing* upward ak in the defendant’s, without such an entire reconstruction of his press as would eliminate its, peculiarities in the manner of “presenting the web,” upon which he lays so much stress, and which he says is the main feature of his invention. In this manner of presenting the web, as before pointed out, the cylinders perform an important function, relatively to each other, as guides for the web. 'And, in his horizontal single press, the friction upon the web, whereby it is held taut, produced by bringing the guide against the cylinder, with the web between, and which he says is an illustration of the-substance of his invention, has no similitude in the defendant’s press. Again, there is a wide dissimilarity between the clamp in front of the web-roll on the Kidder press, which closes and holds rigidly the paper while the cylinder is making the impression, and the defendant’s looping-roller, which does not rigidly hold the paper, but holds it sufficiently taut for the printing, while it also feeds from the roll the requisite length of web for the next impression. We are satisfied that our view of the scope of his invention was that taken at the patent office; for it rejected his original broad claims by references to former patents, one of, which was the Cummings patent, already referred to. The latter Kidder thereupon distinguished from his own by saying that it differed radically therefrom, in that in Cummings’ patent the feed was simultaneous with the printing, while in his the feed took place while the impression was thrown off. Inasmuch as nearly all web printing presses, which had been patented, fed the paper while the impression was'thrown off, the acquiescence of the patent office can be construed to mean only that Kidder’s patent was allowed for its special means of feeding the web while the impression was thrown off, as disclosed by him. The circuit court for the district of Massachusetts, and counsel in their briefs in the present case, refer to the movement in the Kidder press as that of a cylinder “traveling in the moving fold of the web,” as if it were a peculiarity. But it means no more than that the cylinder travels in a loop of the web which is made by the depression of the cylinder between the guiding-rollers, — a feature which was present in nearly, if not quite, all cylinder presses since they were first brought into use many years ago. In the Kidder patent a larger surface of the cylinder is in contact with the web than in former constructions, but .this is a matter of degree only. Besides, the defendant’s press is in this particular the same as that of presses long antecedent to both the Kidder and the defendant’s presses. For the reasons stated, we conclude that there was no error in holding that the defendant did not infringe the Kidder patent. We have therefore not found it necessary to consider the prior use by Oox of the matter of Kidder’s invention, upon which the defendant relied as one of the grounds of its defense.

The application for the Stonemetz patent was filed July 30, 1886. The patent was issued January 3, 1888, and was for improvements in web printing machines. The press which he describes as containing his improvements involved the combination of two stationary type-beds, located on the same horizontal plane, a traveling carriage, conveying impression-cylinders with inking-rollers moving backward and forward over the beds, and guiding-rollers and rollers to turn the face of the web in opposite directions while the printing was being done. It also contained feeding-rollers to draw the web through the press, and a vertically-moving roller for taking up the slack of the. web as it was. unwound from the roll,, and another vertically-moving roller between tbe feeding-rollers and the printing parts to draw the web forward intermittently while the impres: sion was oh. This last feature (that of the looping-rollers to take up the slack and draw forward the web) is one much relied upon by the complainant. A description of this press, and a statement of the claims alleged to have been infringed, appear in the statement preceding this opinion.

Between the application for the Kidder patent and that of the Stonemetz, other inventions of improvements in printing presses became the subject of patents. We shall take space to describe only a few of them. In 1884 a patent (No. 305,469) was issued to J. Gf. Northrup, showing a perfecting press, wherein the type-beds travel under stationary cylinders, but the web is taken from one impression to the other in much the same way as the Stonemetz patent, though it must be conceded that there was nothing new of much substance in tbis respect, beyond wbat had long before been accomplished. Tbe beds were on tbe same horizontal plane, end to end, as in the Stonemetz patent. We may at this point observe that, in our opinion, there was no invention in constructing a press with traveling cylinders over stationary type-beds, instead of stationary cylinders and traveling type-beds, if no other difference existed in the operation of the machine. The art was long ago full of both forms, and they may be regarded as substitutes, one for tbe other, so far as this feature is concerned.

In 1883 an English patent (No. 2,161) to Lake was issued, which involved all the features of the web-feeding devices of the Stonemetz patent. It was a platen press, but the mode.of feeding was the same; and it did not require any invention to bring in the cylinders, instead of the plate, to make the impression, with the well-known incidental apparatus required for the change. This patent is illustrated in the following diagram:

From the web-roll, B, the web is slacked off by the rolls, L, carried under the vertical looping-rollei’, J2; thence oyer the guiding-rollers before and behind the type-bed, located high enough to carry the paper clear of the type while the impression was off; thence under the vertical looping-roller, J1; thence through the feeding-rollers to the delivery. The looping-rollers, J2, and J1, were positively actuated by the web through the arms pivoted on the ends of the reciprocating lever, L1, the pressure on the outer end of which was reinforced by a spring, L8, to impel the roller, J1, in forming the loop between the type-bed and the delivery rolls. The only material difference between the looping-rollers of the Lake patent and that of the Stonemetz was that both of them were positively actuated in Lake’s, while in that of Stonemetz the roller in front of the web-roll floated in the loop, being actuated only by gravity, and the other near the feeding-rolls was actuated by a cam in the downward movement in forming the loop. In the defendant’s press the looping-rollers are both positively actuated, and in this respect bear a much nearer resemblance to the Lake than they do to the Stonemetz patent.

In 1885 the defendant built, and put into use in the printing room of the Grand Rapids Democrat, a press designed by Cox, which has been'in use ever since, composed of a pair of cylinders oyer traveling type-beds, located one above the other, and printing on both the forward and backward movements upon a web of paper fed automatically through the machine. It did not, as we understand, employ the looping-rollers, alternately supplying and delivering the web to and from the press, but these elements were supplied, as we have seen, by the Lake patent; and there was no invention, any more than there was in the Stonemetz patent, in bringing into the Cox machine old elements, known to the art, to perform the same duty they did in an earlier structure in the same art. It is, moreover, not to be lost sight of that Montague’s patent, which was referred to in connection with the Kidder patent, showed a looping-roller for precisely the same purpose between the feeding-rollers and the type-bed. It did not have one between the web-roll and the type-bed, but, if there was need of it, it did not require invention to duplicate it in another place to perform the same function. Kor was it new, for, as we have stated, it was shown in the Lake patent, above mentioned. The mere bringing together of elements selected from old machines, to perform the same functions which they severally performed in the machines from which they were taken, and producing the same result, is not invention. Hailes v. Van Wormer, 20 Wall. 350, 22 L. Ed. 241; Royer v. Roth, 132 U. S. 201, 10 Sup. Ct. 68, 33 L. Ed. 322; Union Edge Setter Co. v. Keith, 139 U. S. 530, 11 Sup. Ct. 621, 35. L. Ed. 261; Wright v. Yuengling, 155 U. S. 43, 15 Sup. Ct. 1, 39 L. Ed. 64.

From these considerations, it is manifest that, if the Stonemetz patent can be sustained at aÚ, it must be limited to the specific elements described in his combinations. It is impossible that it should be so broadened as to cover all means for accomplishing the same results which others had already accomplished, or might thereafter accomplish. His was in no sense a primary invention, but, at most, a bringing together of old elements, with a slight variation in respect to some of them; and upon this variation rests whatever of noA’elty there is in his invention. This also accords with -what transpired in the patent office upon Ms application. He originally made claims for a somewhat generic invention. His seventh claim at first was of that character, and is given as an illustration:

“(7) In a printing machine, the combination of stationary type-beds with a traA-eling impression-cylinder carriage carrying impression-cylinders and inking-i'ollers, mechanism for operating said carriage, and means for conveying a web of paper betiveen said impression-cylinders, and type forms, placed on said stationary beds, substantially as and for the purpose set forth.”

Such claims were rejected upon references showing the stale of the art substantially as we have here shown it. Thereupon his attorney addressed to the office the following letter:

‘‘Sir: In presenting the inclosed amendment in case of John II. Stonemets’s application for improvement in web printing presses, filed July 30, 1880, serial No. 209,575, applicant desires to call Uie attention of the examiner to the fact that the impression-cylinders operate in contact with the type on the type-beds both in their forward and backward movements, and also to the fact that the type-beds are located on substantially the same horizontal plane, end to end. In this construction applicant is enabled to operate his press without lifting the type off tlieir feet, as the upright Kidder press does, and he is enabled to print double the number of impressions that Kidder’s press will do at the same speed, as Kidder’s cylinders operate on the type-beds only one way, while applicant’s operate both ways: 1 have endeavored to so amend applicant’s claims as to limit him to his construction, and trust that they will prove satisfactory.” .

Upon this and some further limitation the patent was allowed. The patentee cannot now expand his claims to cover the ground he yielded in order to obtain the patent. What he conceded was accepted as one of the terms of the grant. Roemer v. Peddie, 132 U. S. 313, 10 Sup. Ct. 98, 33 L. Ed. 382; Royer v. Coupe, 146 U. S. 524, 13 Sup. Ct. 166, 36 L. Ed. 1073; Thomas v. Rocker-Spring Co., 47 U. S. App. 125, 23 C. C. A. 211, 77 Fed. 420, — a ease decided by this court. Neither the Kidder nor the Stonemetz patent is fortified by any inference of the novelty or utility of their inventions arising from general adoption and use. The first was granted in 1884, and the latter in 1888. This suit was commenced in 1895. In the interval only two of the Kidder presses were put into use. These were both installed in a single establishment, in Lockport, K. Y. The Stonemetz patent did. not go into use at all. These facts would not of themseKes establish that the inventions were not novel and useful, but such circumstances, unexplained, give additional ground for the belief that no very substantial improvement of the art was made. The explanation which is offered is not satisfactory. It is said the corporations organized for utilizing these patents were of limited capacity, but they were assumed to be sufficient for the purpose, and nothing- appears to show that the patents were of a character to commend them to public favor. We have not found it necessary to deal with their respective claims, one by one, but have given to each all that could be claimed upon the descriptions therein of the inventions under the restrictions imposed by the state of the art and the limitations of the patent office.

Errors are assigned upon taxation of costs, a part of which, only, ■are. referred to: in the brief for the appellant. It appears that the -costs were taxed by the clerk, in the ordinary manner, apon the ■.bill of costs tendered, and affidavits.' It also appears, inferentially, . that the- complainant appealed from the clerk’s taxation to the court, where -the taxation by the clerk was affirmed. The proper prac,tice.in order to lay the foundation for an appeal to this court (if, indeed, an appeal will lie on a mere matter of taxing costs, as dis'tinguishéd from an adjudication for costs between the parties) was ‘ hot Observed in the court below. In order to bring the specific items to which the objection was intended to be made either on retaxa- . tion before the clerk, or before the court on appeal from the clerk, they should have been distinctly pointed out and the reasons for the objections duly filed. 2 Daniell, Ch. Prac. 1449, 1450. In the : absence of any'such, specification of the objections or grounds relied :upon, the court did not err in affirming the taxation of the clerk. ■ However, it is proper to say that we have looked into the matters ; complained of, and do not see that any substantial injustice was * done to the appellant. We think the court below did not err in its conclusion that no infringement of either patent is shown. Its decree is accordingly affirmed.