Pittsburgh-Erie Saw Corporation brought this suit against Southern Saw Service, Inc. on March 9, 1954, seeking injunctive relief and damages for an alleged infringement of its reissue patent No. 23,231. Plaintiff-appellee is the assignee of the original Wilson and Wilson patent No. 2,458,971, granted on January 11, 1949, for Methods and Apparatus for Wrapping Saw Blades or the Like. In 1948 and prior to issuance of the original patent, defendant-appellant had one of its employees build the accused machine for wrapping band saw blades. Within a year after the original patent had been granted and on November 29, 1949, the patentees, joined by plaintiff, filed application for a reissue of the original patent and reissue patent No. 23,231, the patent in suit, was granted on May 16, 1950. The Patent Office record with respect to the claims in the reissue patent shows that numerous claims of the original patent, including Claim 19,
Four years after the reissue was granted, the instant complaint was filed in which it was alleged that within six years prior to the filing of the complaint, defendant, despite notice of the infringement, had been and still was infringing plaintiff's reissue patent by making and using an apparatus embodying the patented invention and method for wrapping band saw blades or the like. Defendant in its amended answer admitted that at times between March, 1948, and the date on which the complaint was filed, it made and used the accused machine, and by way of defense denied infringement, and the validity of the reissue patent and its claims, and asserted that it has an intervening right and is not liable for infringement, if any.
The case came on for trial before the court on the pleadings, stipulations, oral testimony and documentary proofs, and the court after having had the benefit of arguments of counsel orally and on brief, made complete and explicit findings of fact and stated its conclusions of law.
Thereafter, in conformity with its findings there was entered the judgment appealed from in which the court rejected the defense of intervening rights, declared that plaintiff's reissue patent No. 23,231 was valid and Claims 20, 23, 24, and 25 thereof infringed by defendant's accused machine, and perpetually enjoined defendant and all persons in privity with it from infringing reissue patent No. 23,231.
Appellant is here insisting that the judgment should be reversed in its entirety and each of the specifications of error assigned will now be considered.
With reference to the defense of intervening rights, the trial court concluded that it mattered not whether the "old"
It is the contention of appellee that former Section 64 governs with respect to the issue of intervening rights, but that in any event the trial judge was correct for the reasons which he gave. The contention that Section 64 controls is predicated upon the provisions of Sections 4(a) and 5 of the Act of July 19, 1952, c. 950, 66 Stat. 792, 35 U.S.C.A. preceding section 1, by which the revised U.S.C. Title 35 was enacted. Appellee argues that these sections saved from repeal its right of recovery for infringement of any claim of the original patent, without regard to whether such claim had been carried over in the reissue, and that survival of the right to prosecute such cause of action carried with it the correlative right to negative the within claim of intervening rights by showing insubstantial use. In support of this construction of the savings and repealing sections of the Act of July 19, 1952, appellee contends that the evidence clearly shows that the accused machine infringed Claim 19 of the original patent, and under the old law such infringement would negative appellant's claim of intervening rights. We do not at all agree. It is true that Section 5 of the Act of July 19, 1952, repeals certain sections of the prior patent act, including former Section 64, and the second paragraph of Section 5 states that "Any rights or liabilities now existing under such sections or parts thereof shall not be affected by this repeal." It is also true that former Section 64, which provides in part that "the reissue patent to the extent that its claims are identical with the original patent"
The first paragraph of Section 252 is a restatement of former Section 64, but the second paragraph is a new provision which protects intervening rights of any person who "made, purchased or used prior to the grant of a reissue anything patented by the reissued patent."
The remaining claims, which are set forth in the margin,
On this appeal, appellant contends that the reissue patent is invalid as to the claims in suit for the reasons that they contain new matter and are to a different invention than that disclosed in the original patent, and that they are anticipated by the prior art and obvious to a person skilled in such art.
We have carefully considered the issue of the validity of the patent in suit, but our interpretation of the prior art, the physical exhibits and the testimony compels us to agree with the district court's conclusion that the patent is valid. We think it plain that appellant has failed to overcome the presumption of validity which attached to the patent claim. 35 U.S.C.A. § 282.
The evidence here shows that the changes made in the reissue patent were solely for the purpose of clarification, amplification, expression of a more general aspect of the invention, and for alternative expression or for correction of unclear language. Each of the elements of the invention referred to in the reissue claims was in fact disclosed by the original patent and the reissue patent did not involve any new idea or disclosure. The reissue claims simply gave a more adequate description of the invention, enlarged the claims to some extent, but did not enlarge the invention by changing, adding or deleting its elements.
No useful purpose would be served by unduly lengthening this opinion with a detailed discussion of the divergencies in purpose, structure and mode of operation of all of the various prior art patents that have been cited.
On the issue of infringement the trial court found that the patent in suit is a pioneer patent and has advanced the state of the art of wrapping endless, flexible flat articles such as band saw blades; that appellant's machine and method are in all respects the same as the patented machine and method, although the machines differ in form; that the differences in form are not differences which reflect a departure by the appellant from the invention of the patent in suit; that the accused apparatus responds completely in terms and substance to reissue patent Claim 20; and that appellant's method similarly responds completely to Claims 23, 24 and 25 of the reissue patent. From these and other findings of fact the trial court concluded as a matter of law that the patent was entitled to a liberal construction and a broad and liberal range of equivalence, and is not to be limited to the precise device and instrumentality disclosed; and that the four reissue claims in suit had been infringed.
Appellant contends that the patent in suit is not a pioneer patent
We also agree with the trial court that appellant's machine and method are in all material respects the same as the patented machine and method, and that such differences as exist do not avoid infringement. The record shows that the preferred embodiment of the invention includes a table adapted to support the endless flexible band on edge, and a means for advancing the band together with the paper wrapping strip along a predetermined wrapping path. It is clear from the description of the patent that it consists of a specific combination of (1) strip folding means which are openable to permit introduction of the band and removal of the wrapped endless band, together with (2) opposed pinch rolls acting upon the flat faces of the band and wrapping strip so that as the pinch rolls advance or move the band and wrapping strip along the wrapping path, the folding means act on the wrapping strip to fold it about the band. The folding is accomplished during the progress or movement of the wrapping strip and band through the wrapping path and is not limited to folding of first one and then the other edge of the wrapping strip in separate successive steps.
Claim 20 can be read in express terms upon the accused device. The endless flexible band on the accused machine is disposed vertically, the paper strip is brought against the inner side of the band, and the two edges of the paper strip are turned up at the same time about both edges of the band. Both edges of the paper strip are then folded to overlap at the outside of the band by folding devices which can be opened in order to permit insertion of the band and the removal of the wrapped band. The trial court found and we agree that the fact that the preferred embodiment is accomplished by disposing the band in a generally horizontal plane does not limit the invention to such disposition. The principal difference between a horizontal and a vertical embodiment is found to be in the detailed structure of the folding means, but in either case, the wrapping strip will be wrapped about the band longitudinally in a predetermined wrapping path as the band and
In view of our decision above that the degree of use is immaterial to appellant's claim of intervening rights, we deem it unnecessary to rule on appellant's objections to the trial court's rulings in respect to certain evidence, since all of the evidence objected to and conclusions drawn therefrom pertained solely to the issue of extensiveness of use of the accused machine prior to reissue of the patent in suit, and the admission or rejection of this evidence could not possibly affect the result.
For the reasons stated, the judgment should be modified so as to hold that Southern Saw Service, Inc. has intervening rights and is entitled to the continued use of the accused machine, and as thus modified the judgment is affirmed.
Modified and affirmed.
HUTCHESON, Chief Judge (concurring in part and dissenting in part).
Of the opinion that the judgment should be affirmed as written, I dissent from its modification so as to provide that appellant "has intervening rights and is entitled to the continued use of the accused machine".
Because, aside from this, I find myself in complete agreement with the excellent opinion of the majority, I think it desirable to precisely state the point of difference between us and to briefly give my reasons therefor.
I agree with the view of the majority that "the question of intervening rights should and must be resolved under Section 252 of the 1952 Patent Act". I agree, too, with its view that the district judge erred in reading the word "or" in the provision "to continue the use of the specific thing so made, purchased, or used", as "and", as I agree with its view that "Claim 19 of the original patent does not constitute a barrier to defendant's claim of intervening rights."
I nevertheless disagree with the ultimate conclusion that "Section 252 gives appellant an absolute right to continue using [the accused machine] without regard to the extent of its use prior to reissue". This is so because it is my view that the statute, in line with decisional law under Sec. 64 of the earlier statute remits the matter to the discretion of the court "before which such matter is in question", for determination by it upon equitable considerations, and the undisputed evidence, particularly the testimony of Anderson, defendant's president, establishes conclusively that there is no basis here for the claim of equitable rights.
On Petition for Rehearing
As neither of the judges who concurred in the decision of the Court in the above numbered and entitled cause is of opinion that the petition for rehearing
HUTCHESON, Chief Judge, dissenting.
"No reissued patent shall abridge or affect the right of any person or his successors in business who made, purchased or used prior to the grant of a reissue anything patented by the reissued patent, to continue the use of, or to sell to others to be used or sold, the specific thing so made, purchased or used, unless the making, using or selling of such thing infringes a valid claim of the reissued patent which was in the original patent. The court before which such matter is in question may provide for the continued manufacture, use or sale of the thing made, purchased or used as specified, or for the manufacture, use or sale of which substantial preparation was made before the grant of the reissue, * * * to the extent and under such terms as the court deems equitable for the protection of investments made or business commenced before the grant of the reissue."
"24. In a method of wrapping an endless flexible flat band having cutting means at one edge thereof the steps comprising introducing laterally into a wrapping path a portion of the band, introducing longitudinally into the wrapping path the leading end of an elongated wrapping strip wider than the band with said portion of the band and the leading end of the wrapping strip in face-to-face contact, pressing the flat faces of the band and wrapping strip together and applying tractive force to the band and wrapping strip between the inside and the outside of the band generally in a plane normal to the band and wrapping strip and thereby advancing the band and wrapping strip lengthwise until the length of wrapping strip thus advanced is at least substantially equal to the circumferential length of the band, in the wrapping path progressively folding the wrapping strip about the band during such advance and withdrawing laterally from the wrapping path the portion of the wrapped band disposed in the wrapping path upon completion of the wrapping.
"25. In a method of wrapping an endless flexible flat band having cutting means at one edge thereof, the steps comprising disposing a portion of the band in a substantially straight wrapping path, also disposing in the wrapping path a portion of a wrapping strip wider than the band with said portion of the band and said portion of the wrapping strip in face-to-face contact, pressing the flat faces of the band and wrapping strip together and advancing the band and wrapping strip lengthwise through force applied between the inside and the outside of the band generally in a plane normal to the band and wrapping strip until the length of wrapping strip thus advanced is at least substantially equal to the circumferential length of the band so that the wrapping strip at least approximately overlaps itself and in the wrapping path progressively folding the wrapping strip about the band during such advance."