The opinion of the court was delivered by: INCH
These two patent suits were duly tried together. In the first suit, plaintiffs, the owners of the patent in question, sued the inventor, who has apparently associated himself with the corporation defendant in the second suit.
The defense interposed by the defendant inventor is that there has been no infringement. The defenses of the corporation are that the patent is invalid and that there has been no infringement.
The trial was somewhat informal as shown by the record.
The patent in question is United States patent No. 1,506,869. It appears as Plaintiffs' Exhibit 2 and Defendant's Exhibit J. This patent was applied for by defendant Guido Tanzi on June 30, 1922, and was granted September 2, 1924.
Tanzi testified that he had spent twelve years working on his conception. He applied for a patent on his discovery, stating that he had "invented certain new and useful improvements in macaroni dies." That this device was a die "especially designed" and intended for producing "fusillo" macaroni (Lines 5-10, page 1, of patent). He also states that this form of macaroni had been previously produced by rolling or curling it upon a stick and then the stick upon a dough board.
An examination of the prior art patents offered by defendants does in fact indicate an absence of any similar die, the nearest, it seems to me, being that of Kleinschmidt, United States patent No. 698,119, April 22, 1902; but this Kleinschmidt patent is nothing more or less than a substitution by a machine for the method mentioned by Tanzi. There are five claims in the patent, but at the trial plaintiffs relied on but three. These are 1, 2, and 5, as follows:
"1. Means for producing spiral macaroni, which consists of a die having a compound opening, a pin arranged therein and means for guiding the product upon its discharge.
"2. Means for producing spiral macaroni, which consists of a die having a compound opening, said die being provided with a crescent shaped recess for guiding said macaroni."
"5. A die for producing spiral macaroni having a die plate, a plurality of inserts therein, each said insert being provided with an obliquely disposed perforation in the inner wall thereof and a pin in each said perforation, the outer and inner walls of said die plate being extended upward at an angle to direct material through said perforations."
So far as I can see, therefore, up to the time of this invention of Tanzi's, there was no die for producing this form of macaroni, and in this sense, therefore, Tanzi could be said to have been the first to produce his die and is entitled to whatever advantage this may bring.
Questions arising from claims of invention in forms of new dies have constantly met with difficulty. Butler v. Steckel, 137 U.S. 21, 11 S. Ct. 25, 34 L. Ed. 582.
The shaping of a die so as to produce a given product has been held to be in the field of mechanics rather than of invention. Anderson, etc., v. Hanky, etc. (C.C.A.) 40 F.2d 196-198.
However, there is more here than the mere cutting out of a product by a die and, while the shaping of the product is the ultimate goal sought, so far as the prior art is considered, certain other elements were necessary which the ordinary skilled mechanic apparently had failed to grasp ...