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Justia › US Law › US Case Law › US Supreme Court › Volume 152 › Morgan Envelope Co. v. Albany Paper Co.
An inventor who acquiesces in the rejection by the Patent Office of his claim in one form and accepts a patent with the claim changed so as to correspond with the views of that office, is estopped to claim the benefit of the rejected claim.
Letters patent No. 325,410, granted to Oliver H. Hicks September 1, 1885, for a package of toilet paper known as the oval roll or oval king package, is void for want of patentable invention.
Letters patent No. 325,174, issued to said Hicks August 25, 1885, for a toilet paper fixture, and letters patent No. 357,993, issued to said Hicks February 15, 1887, for an apparatus for holding toilet paper, are not infringed by selling such fixture or apparatus, bought of the patentee, with paper manufactured by the seller.
When a patentee has once received his royalty, he cannot treat the subsequent seller or user as an infringer.
issued September 1, 1885, for a "package of toilet paper," known as the "Oval Roll" or "Oval King" package; (2) patent No. 325, 174, issued August 25, 1885, for a "toilet paper fixture;" (3) patent No. 357,993, issued February 15, 1887, for an "apparatus for holding toilet paper." These are known as the "Oval King" fixtures.
The answer made the usual denials of novelty and infringement.
Upon a hearing upon pleadings and proofs, the court dismissed the bill except as to the fifth claim of patent No. 357,993, upon which a decree was ordered for plaintiff, without costs. From this decree, plaintiff appealed to this Court.
Prior to the inventions covered by the patents in this case, toilet paper had been put up in packages of sheets cut to a convenient size, sometimes attached together by a wire, or in cylindrical rolls of continuous length, either perforated transversely at proper intervals for the convenient detachment of the sheets or in similar rolls not perforated, but designed to be cut by a device having a sharp edge to which the rolls were attached. All these methods proved to be objectionable on account of the temptation offered to greed or wastefulness, in the facility with which unnecessary amounts of paper could be detached which were either carried off or allowed to fall on the floor. Where perforated paper was employed in roll form, the litter was increased by the dropping of small particles of paper intended to have been removed by the perforating machine, but which remained attached until the paper was unwound, when they fell upon the floor and became very difficult to remove.
(1) In the specification of his patent No. 325,410, which is for a package of toilet paper, the patentee states that he had in view to furnish a toilet paper in the form which would prevent in a large measure this vast amount of wastage.
"In carrying out this object, I have put up one or more lengths of paper in the form of a continuous band (as contradistinguished from a roll) of oblong or oval shape; the short, rounded ends of the bundle thus produced serving as guides for determining the proper points at which the paper has to be separated in order to produce sheets of a size desirable for use, and affording also the most advantageous surfaces upon which to tear the paper. The band I make of a thickness calculated to produce sheets severed at the point stated of practical and economical lengths from the time the bundle is opened until it is consumed."
"a bundle of paper consisting of one or more lengths, formed into a continuous band, whose internal diameter is greater than the thickness of the paper, substantially as described."
and that the patent, if supported at all, must be for the different purpose for which toilet paper is wound in this form.
"a bundle of toilet paper consisting of one or more lengths of paper formed into a flexible continuous band of oblong or oval shape, the short rounded ends of such band serving as guides for determining the proper points at which the paper is to be separated in order to produce sheets of a size desirable for use, and affording, also, the most advantageous surfaces upon which to tear the paper, substantially as described."
"a bundle of paper consisting of one or more lengths, formed into a continuous band, whose internal diameter [by which we understand the internal diameter when rolled into a cylindrical form] is greater than the thickness of the paper, substantially as described."
see what function is performed by a band of paper so constructed, or what difference it makes whether the internal diameter is greater or less than the thickness of the paper, unless the paper be made in an oval form.
It is insisted in this connection, however, that under the words, "substantially as described," the patentee is entitled to claim a band of oval or oblong shape, and that, looking at his specification and drawing in connection with the claim, it is obvious that the latter should be so limited. But, the patentee having once presented his claim in that form and the Patent Office having rejected it, and he having acquiesced in such rejection, he is, under the repeated decisions of this Court, now estopped to claim the benefit of his rejected claim or such a construction of his present claim as would be equivalent thereto. Leggett v. Avery, 101 U. S. 256; Shepard v. Carrigan, 116 U. S. 593; Crawford v. Heysinger, 123 U. S. 589, 123 U. S. 606; Union Metallic Cartridge Co. v. United States Cartridge Co., 112 U. S. 624.
It is true that these were cases where the original claim was broader than the one allowed, but the principle is the same if the rejected claim be narrower. Why the claim of the present patent was allowed after the rejection of the narrower claim does not appear. The objections made to the claim as originally presented seem to be equally applicable to this.
But, construing this claim as for an oval or oblong roll, it is clearly anticipated by the patent granted March 6, 1883, to one Peacock, for a toilet paper case, used for carrying toilet paper, which was would in an oval form about a spool or core, precisely as described in plaintiff's patent. Apparently it differs from the Hicks roll only in being smaller and having its core hinged to a stiff case in which the paper, for convenience, was carried.
was torn off, the end of the next one would drop down into position to be grasped. While neither of these devices is a precise anticipation of the Hicks patent in the manner in which they are used, it is impossible to say that a mere enlargement of these devices to the size contemplated by Hicks would constitute invention, although by such enlargement the roll became capable of being used in a somewhat different manner.
"to so arrange the paper as to prevent more than a given quantity of it to be withdrawn from the roll at a single operation, and so that in the act of withdrawing such given quantity it shall be automatically severed from the roll, leaving pendant from the roll a free end which shall serve as a means of withdrawing a like quantity by the next user."
This is accomplished by the combination of an oscillating roll of toilet paper actuated in one direction by a pull upon its free end, of a knife or cutter cooperating with the roll to sever the unwound portion when the roll has reached the limit of its motion in one direction, and a stop for so limiting the motion of the roll. The principal difference between the two patents is that No. 325, 174 is limited to an appliance in which a knife or cutter for arresting the roll of paper, when oscillated, is employed, while the later one, No. 357,993, is broad enough in its scope to include a structure in which a mere stop, which has no cutting action at all, is employed to arrest the roll.
Each patent contains five claims, and in all of them, except the fourth and fifth of the first patent and the fifth of the second, the paper roll is included as an element of the combination.
the purpose of delivering this paper to users in convenient lengths, such a roll is not a proper part of the combination; second that, conceding it to be a part of the combination, there was no infringement.
The first defense raises the question whether, when a machine is designed to manufacture, distribute, or serve out to users a certain article, the article so dealt with can be said to be a part of the combination of which the machine itself is another part. If this be so, then it would seem to follow that the log which is sawn in the mill, the wheat which is ground by the rollers, the pin which is produced by the patented machine, the paper which is folded and delivered by the printing press, may be claimed as an element of a combination of which the mechanism doing the work is another element. The motion of the hand necessary to turn the roll and withdraw the paper is analogous to the motive power which operates the machinery in the other instances.
one fixture to one case of paper. The fixtures were also sold to hotels and other public buildings with the understanding that their paper would be subsequently purchased of the plaintiff company. It appears to have been its invariable rule to refuse to sell fixtures except to persons also ordering paper.
"When the patented machine rightfully passes to the hands of the purchaser from the patentee, or from any other person authorized to convey it, the machine is no longer within the limits of the monopoly. . . . By a valid sale and purchase, the patented machine becomes the private individual property of the purchaser, and is no longer protected by the laws of the United States, but by the laws of the state in which it is situated."
See also Bloomer v. Millenger, 1 Wall. 340; The Paper Bag Cases, 105 U. S. 766. In this latter case, one Morgan had purchased a machine for making paper bags of the patentee, and it was held that, having the absolute ownership of the machine, he had the right either to use it during the existence of the letters patent or to transfer such ownership and right to another. It was said that "the power to sell the machine and transfer the accompanying right of use is an incident of unrestricted ownership." Birdsell v. Shaliol, 112 U. S. 485; Woodworth v. Curtis, 2 Woodb. & Min. 524; Goodyear v. Beverly Rubber Co., 1 Cliff. 348.
with the intent that it shall be used with the other element, is an infringement. We are of opinion that it is not. There are doubtless many cases to the effect that the manufacture and sale of a single element of a combination, with intent that it shall be united to the other elements, and so complete the combination, is an infringement. Saxe v. Hammond, Holmes 456; Wallace v. Holmes, 9 Blatchford 65; Barnes v. Straus, 9 Blatchford 553; Schneider v. Pountney, 21 F. 399. But we think these cases have no application to one where the element made by the alleged infringer is an article of manufacture perishable in its nature, which it is the object of the mechanism to deliver, and which must be renewed periodically, whenever the device is put to use. Of course, if the product itself is the subject of a valid patent, it would be an infringement of that patent to purchase such product of another than the patentee; but if the product be unpatentable, it is giving to the patentee of the machine the benefit of a patent upon the product by requiring such product to be bought of him. To repeat an illustration already put: if a log were an element of a patentable mechanism for sawing such log, it would, upon the construction claimed by the plaintiff, require the purchaser of the sawing device to buy his logs of the patentee of the mechanism or subject himself to a charge of infringement. This exhibits not only the impossibility of this construction of the patent, but the difficulty of treating the paper as an element of the combination at all. In this view, the distinction between repair and reconstruction becomes of no value, since the renewal of the paper is, in a proper sense, neither the one nor the other.
"Whatever rights the defendants could acquire to the use of the old buckle, they acquired no right to combine it with a substantially new band to make a cotton bale tie. They so combined it when they combined it with a band made of the pieces of the old band in the way described. What the defendants did in piecing together the pieces of the old band was not a repair of the band or tie in any proper sense. The band was voluntarily severed by the consumer at the cotton mill, because the tie had performed its function of confining the bale of cotton in its transit from the plantation or the press to the mill. Its capacity for use as a tie was voluntarily destroyed."
time he bought it, without which his purchase would be useless to him, except for sixty or ninety days after a machine had been put in use. It has not been contended, nor can it be, that such can be a limitation of the assignee's right in the use of the invention. . . . If, then, the use of the machine depends upon the replacement of the knives, . . . frequently replacing them, according to the intention of the inventor, is not a reconstruction of the invention, but the use only of so much of it as is absolutely necessary to identify the machine with what it was in the beginning of its use, or before that part of it had been worn out The right of the assignee to replace the cutter knives is not because they are perishable materials, but because the inventor of the machine has so arranged them, as a part of his combination, that the machine could not be continued in use without a succession of knives at short intervals. Unless they were replaced, the invention would have been of little use to the inventor or to others."
The true distinction is stated by Mr. Justice Clifford in Aiken v. Manchester Print Works, 2 Cliff. 435, where the invention was of a knitting machine, with which the vendor was accustomed to send a package of the needles used in the machine, which needles were the subject of a separate patent. It was held that the purchase of the knitting machine, and the needles accompanying the same, did not confer upon the purchaser any right, after the needles were worn out and became useless, to manufacture other needles and use the same in the knitting machine so sold and purchased. The case of Wilson v. Simpson was distinguished from this in the fact that the cutters and knives in that case were not subject to a patent, and, of course, the respondent had a right to use them as materials to repair his machine; "but," says the court, "unfortunately for the defendants in this case, the needle is subject to a patent, and in making and using it they have infringed the right of the plaintiff." As we have already held that the paper roll in this case was not the subject of a valid patent, it follows that the defendants cannot be held as infringers for the manufacture and sale of such roll.
Considerable stress is laid by plaintiff upon the fact that Mr.
Wheeler, president of he defendant corporation, in February, 1885, and before the first patent was issued, bought one of the plaintiff's fixtures, known as the "Oval King" fixture, together with some of its paper, and dispatched them to England with instructions to his agents to file an application for a patent there, which patent was subsequently issued; that before a patent was issued, Hicks himself applied for protection in England, and, learning of the filing of the application there by Wheeler, filed a protest against the issuance of a patent to the latter, who thereupon, to thwart his obtaining a patent, made an affidavit that he did not obtain the knowledge of the invention from Hicks or any other person, but by seeing it in public use in the United States. Wheeler's own testimony in this case indicates that this affidavit contained a suppressio veri, if not a suggestio falsi. But, however reprehensible his conduct may have been in this connection, it does not affect the issue between the parties here. It does not show that the Hicks patent upon the roll is a valid patent, or that the conduct of the defendants in making and selling such roll is an infringement upon the combination patents.
MR. JUSTICE WHITE, not having been a member of the Court when this case was argued, took no part in its decision.

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D.C. Law Library - § 22–406. Mayhem or maliciously disfiguring.
↪ § 22–406. Mayhem or maliciously disfiguring.
Every person convicted of mayhem or of maliciously disfiguring another shall be imprisoned for not more than 10 years. In addition to any other penalty provided under this section, a person may be fined an amount not more than the amount set forth in § 22-3571.01.
This section is referenced in § 5-132.21, § 22-3152, and § 24-112.
For temporary (90 days) amendment of this section, see § 303(g) of the Criminal Fine Proportionality Emergency Act of 2013 (D.C. Act 20-45, April 1, 2013, 60 DCR 5400, 20 DCSTAT 1300).