Diamond Match Co. v. Sun Match Corp.

HOUGH, Circuit Judge

(after stating the facts as above). It may be, and we think is, admitted that in its entirety the combination of parts producing a mechanism capable of doing what this machine does is an invention of importance, and both by its commercial success and the surmounted difficulties .of co-ordinate operation, deserving of that sympathetic consideration, usually expressed by granting a wide rangfe of equivalents.

This doctrine needs no citation for its support, but neither do other and important considerations, viz. that the patent is not on a new product or composition of matter, for match books consisting of the same parts similarly fastened to each other are admittedly old; also, therefore, that any one may make match books, and the test of infringement is whether the means of fabricating the book— i. e. the machine — is that described and claimed by the patentee. And further that it cannot he and is not asserted that defendant makes match books by using that combination of elements which is plaintiff’s entire described machine.

It is well to remember, when interpreting and applying a patent, that infringement can seldom he safely rested or denied upon a comparison of defendant’s mechanism with the commercial embodiment of plaintiff’s patent. A closer scrutiny is usually necessary, but tbe comparison bas its uses. In this instance it shows at once that the absence of the ignition-painting element (to use the word loosely) from defendant’s device necessarily results in a totally different organization from that of plaintiff; also that plaintiff’s first step, of folding the cover to make a receptacle for the insertion of match bottoms, necessitates a wholly different sequence of operations from that employed by defendant, who does not want any fold, crease, ór receptacle, until cover and match card are to be stitched or stapled together.

Again, it is to be noted, in comparing the two machines, that the existence of plaintiff’s ignition-painting element dominates and dictates the way or method of utilizing this patent. In order to apply the paint, it is necessary for plaintiff to apply the match card to the under side of the cover as it moves on the carrier, and so the important parts of the match book are (so to speak) carried “upside down” through the formative stages of their joint life, while defendant’s cover is “right side up” throughout, because it is prepainted.

Finally, the devices of the parties are alike, in that each employs a chain or belt for purposes of carriage, each places articles thereon, and each at some stage of travel performs some act or operation upon and with what has been placed on the carrier. This method of transport has been recognized as long “generally known and used in mechanical arts.” Union, etc., Co. v. Diamond, etc., Co., 162 F. 148, 89 C. C. A. 172.

Result of foregoing is that the sole inquiry in this ease is whether the subeombinations, defined in the claims in suit as existing in “a machine for making match books,” have been infringed by certain mechanisms in another machine organized as a whole in a quite different manner.

We have advisedly not spoken of defendant’s machine as one for “making match books,” because in the sense of the patent defendant cannot perform that feat. The ignition paint is essential, and that must be supplied to defendant’s book from an alien source. In answering the query of the case, as last above put, it is first necessary to decide: To what art does this patent belong? Where must we look for that prior art, which both suggests and limits invention. We have no doubt that all devices for mechanically wrapping any article with any protective or confining wrapper are relevant and may be important.

We find that art on this record full and suggestive. It was not new per se to wrap or cover any article as matches are covered in the so-called “book,” while stapling card and cover together by machine is not asserted to possess novelty.

Having assigned the patent to its class, the second step is to read the claims on defendant’s device, having ascertained the meaning of the claims by reference to the specification. Here we note that every claim must be read as defining a subcombination in such a machine as is described.

Passing the point that defendant’s machine will not make match books in plaintiff’s sense, and treating it as a machine for completing such books; can the combinations of the claims or their equivalents be found in defendant? We think not, because, first, there is not even an asserted or suggested interchangeability of parts between the mechanisms, and this indicates noninfringement (Miller v. Eagle, etc., Co., 151 U. S. 186, 14 S. Ct. 310, 38 L. Ed. 121); secondly, the elements of. plaintiff’s combination are not found in defendant.

The eighteenth, twenty-first, and twenty-sixth claims in terms require the match cards “inserted” or fed “within,” or moved “into the carrier and the covers therein,” and these words cannot be satisfied by placing a card in a cover under a wholly independent clip that is part of the machine, and not under a prefolded part of the cover itself.

The twenty-second claim speaks of “feeding the severed cards successively to the covers”; words which must refer to the kind of covers existing when the feeding occurs, and the only kind plaintiff can use at that time must be folded, for the “insertion,” which is the central thought of plaintiff’s “upside down” traverse of card and cover. We have said that the whole machine of the patent is a device of such successful importance as to merit a wide range of equivalents, but that does not extend to subeombinations, which do not, any one of them, show such importance.

Yet every equivalent, whether asserted in respect of a small or great invention, must respond to the rule enunciated in Morley v. Lancaster, 129 U. S. 263, 9 S. Ct. 299, 32 L. Ed. 715, viz. that where a combination of a plurality of mechanisms constitutes the invention, each mechanism is to be individually considered to determine equivalency, though the result of the plural operations working conjunctively is identical in the patented and accused devices.

This rule is fatal to plaintiff, and we agree with the court below that there is no infringement.

Decree affirmed, with costs.