U.S. Supreme Court
Hobbs v. Beach, 180 U.S. 383 (1901)
Hobbs v. Beach
Argued January 16-17, 1900
Decided March 5, 1901
180 U.S. 383
The first three and sixth claims of reissued letters patent No. 11,167 to Fred H. Beach for a machine for attaching stays to the corners of boxes were not anticipated by prior devices, and are valid.
It is within the jurisdiction of the Commissioner of Patents to order a patent to be reissued to correct an obvious error in one of the drawings.
The claims of the Beach patent were not unlawfully expanded pending the litigation of interferences in the Patent Office.
A patent is not terminated by the expiration of a foreign patent for the same invention unless such patent were obtained by the American patentee, or by his consent, connivance, or authority.
The first three and sixth claims of the Beach patent held to be infringed by defendant, manufacturing under a patent to Horton of December, 1890.
The fact that a claim contains the words "substantially as described" does not preclude the patentee from insisting that his patent has been infringed by the use of a mechanical equivalent. These words are entitled to but little weight in determining the question of infringement, although, if a doubt arose upon the question whether an infringing machine is the mechanical equivalent of a patented device, that doubt might be resolved against the patentee where the claims contain the words "substantially as described, or set forth."
This was a bill in equity by Fred H. Beach against Clarence W. Hobbs and Richard Sugden, now deceased (whose estate is chanroblesvirtualawlibrary
represented by his executors), doing business under the name of the Hobbs Manufacturing Company, for an injunction and a recovery of damages for the infringement of reissued letters patent No. 11,167, dated May 26, 1891, for a "Machine for Attaching Stays to the Corners of Boxes."
In his specification the patentee makes the following statements:
"That it has been customary heretofore, in making paper or straw-board boxes, to apply a stay or fastening strip over the joints at the corners of the boxes, which strip is pasted down on the outside of the box or is folded over the edge of the box and secured by paste both outside and inside of the corner, and such work, as far as I am aware, has heretofore been done by hand."
"My invention relates to a machine for doing this work, and it consists in the matters hereinafter set forth, and pointed out in the appended claims."
Following are fifteen drawings of the machine and distinct portions thereof, and a minute description of the same. The patentee continues:
"The machine herein shown is, as hereinbefore stated, constructed to turn into the inside of the box the projecting end of the stay, and for this purpose the stay-strip is made of such width, and its guides are so arranged, that the inner edge of the strip extends over or past the edge of the box-wall, so that, when the stay is pasted down on the outside of the box-corner, a loose or free end projects outward beyond the inner edge of the box. After the plunger G has pressed the stay upon the box the, secondary plunger or strip-bender H then descends and bends or turns this loose end vertically downward."
"In many boxes, the stay is simply pasted against the exterior surface of the box-corner, and is not turned in or over the edge of the same, in which case the work can be done by using a nonreciprocating angular lower die, or anvil, and a single upper die, or plunger. In such case, the form B will obviously be not necessary as a part separate from the die, or, in other words, a single lower die or form will take the place of the form B and movable lower die I. "
"As far as the main features of my invention are concerned, forms other than those illustrated of the several parts of the machine may be employed without departure from my invention -- as, for instance, in place of the particular mechanism shown for feeding or delivering fastening-strips or stay-strips to and between the clamping dies, or for applying paste or glue to the said stay-strips, for applying paste or glue to the said stay-strips, pasting devices may be used in practice with the same general result, as above described."
The following are the claims alleged to have been infringed by the defendants:
"1. The combination, with opposing clamping-dies, having diverging working faces, of a feeding mechanism constructed to deliver stay-strips between said clamping-dies, and a pasting mechanism for rendering adhesive the stay-strips, said clamping-dies being constructed to cooperate in pressing upon interposed box-corners the adhesive stay-strips, substantially as described."
"2. The combination, with opposing clamping-dies, having diverging working faces, said clamping-dies being arranged to cooperate in pressing adhesive fastening strips upon interposed box-corners, a feeding mechanism constructed to feed forward a continuous fastening-strip, and a cutter for severing the said continuous strip into stay-strips of suitable lengths, substantially as described."
"3. The combination, with opposing clamping-dies, having diverging working faces, said clamping-dies being arranged to cooperate in pressing an adhesive fastening-strip upon the corner of an interposed box, a feeding mechanism constructed to feed between the dies a continuous fastening-strip, a pasting mechanism for applying adhesive substance to the strip, and a cutter for severing the strips into stay-strips of suitable lengths, substantially as described."
"6. The combination of opposing clamping-dies having diverging working faces constructed to cooperate in pressing an adhesive stay-strip upon an interposed box-corner, one of said clamping-dies being constructed to act with an elastic or yielding pressure to enable the dies to operate upon the box-corners of different thicknesses, substantially as described. "
Upon a hearing upon pleadings and proofs, the case resulted in a decree in favor of the plaintiff Beach upon the sixth claim, and a further finding that the first, second, and third claims had not been infringed. 82 F.9d 6.
Both parties appealed to the circuit court of appeals, which reversed the decree of the circuit court with respect of the first three claims of the patent and affirmed it as to the sixth claim, and remanded the case for further proceedings in conformity with the opinion. 92 F.1d 6.