The opinion of the court was delivered by: BRYANT
This is a suit for infringement of the Bauer patent, No. 1,794,358, as to claims 1, 5, 14, 19, 20, 21 and 31.
The defense to all claims except claim 19, is invalidity for lack of invention, and to claim 19 the defense is noninfringement lack of invention. No claims of noninfringement, except as to claim 19, are advanced.
The machine disclosed in the Bauer patent is used in the manufacture of catamenial bandages, which are sold under the trade-name "Kotex." The evidence clearly shows that it has been a commercial success. It has tripled the production output over preceding machines, and at the same time greatly reduced the number of rejects. The Bauer machines have been in constant use since 1922. Manifestly, they have advanced the art of sanitary napkin manufacture.
The defendant in the manufacture of pads uses machines known as O'Neill machines. It has used two types. One, which we will refer to as the First O'Neill machine, was used until about 1932. This machine had the so-called "cross feed" mechanism. In an infringement suit brought by this plaintiff against Diana Manufacturing Company, 18 F.Supp. 54, a concern using the so-called First O'Neill machine, all of the present claims were at issue. In that case the Bauer claims were held valid and infringed by the O'Neill machine. I understand that no appeal was taken. The O'Neill machine was rebuilt. We will refer to this as the Second O'Neill machine. Plaintiff admits that the Second machine does not infringe any of the claims unless it be claim 19. The other claims are not at issue against the Second machine and as against the First their validity only. Let us consider these claims first.
The Bauer patent file wrapper shows that many patents were cited against the Bauer application. The result was the rejection of several of his claims and amendment of several others. While this application was in the Patent Office an interference was filed by one Williams. Apparently Williams abandoned his claim of priority because later, by motion, he sought to dissolve the interference on the ground that the counts in the interference, and additional claims proposed by Bauer, were anticipated by prior art references and also patents relating to similar arts. Upon the hearing all references, with possibly the exception of the Anderson and Leibing patents, were cited. The Law Examiner found "the claims appear to be patentable distinct from one another and patentable over prior art." My attention has not been called to any further litigation over this matter, so I assume the Examiner's decision was accepted. I do not understand that claim 19 was at issue in this interference. Later plaintiff, in an attempt to avoid any claim that the Bauer patent is so broadly phrased as to cover prior art devices of a dissimilar nature, filed a disclaimer which removes from the scope of all of the Bauer patent claims "any machine or method except such as is used for making surgical pads or sanitary napkins, wherein a pad of soft, fibrous filling material is enclosed in a wrapper of gauze or similar soft, flexible material." This disclaimer was approved and held valid in the Diana Case and the decision seems to be in accord with United Chromium, Inc., v. International Silver Co., 60 F.2d 913, 914 (C.C.A.2d).
In this court in a case brought by plaintiff against O'Neill, the manufacturer, a consent decree sustaining the Bauer claims was entered. This is referred to only for the purpose of showing acquiescence in the validity and scope of the Bauer patent.
Defendant contends that, had the Law Examiner had before him the Leibing patent, No. 1,469,420, to supplement the Johnson and Johnson machine, in commercial use prior to Bauer, he would have been compelled to have held the Bauer claims invalid.
The Leibing patent was considered in the Diana Case. The Johnson and Johnson commercial use machine seems to be an improvement to the machine disclosed in the Marcus patent, No. 1,038,493, which was considered by the Examiner, and in the Diana Case.
The Bauer claims "are definitely restricted to the feeding of a strip of gauze and a strip of wadding." (Law Exam.) The Leibing patent covers a machine for the making of excelsior pads, excelsior or moss wadding wrapped in paper. That designed machine could not handle gauze. Without the Bauer patent as a guide, the problems to overcome in reorganizing the Leibing machine for the purposes here considered would be so intricate and difficult that they would constitute invention.
From the records in this case it is difficult to obtain, with any degree of accuracy, a picture of the working mechanism of the Johnson and Johnson machine. The file wrapper shows this machine was given careful study by the Examiner. The present record does not contain facts sufficient to overcome the presumption of validity.
Claim 19 reads as follows:
"19. In a device of the class described, the combination of means for continuously feeding a strip of wrapping material, means for intermittently advancing a strip of filling material, a cutter operable to sever successive portions of the latter material from the end thereof, means actuated intermittently and independently of the movement of said wrapping and filling material for depositing the severed portions on said strip of wrapping material in spaced relation and means for folding said wrapping material over said filler portions."
The crux of this claim, as it affects the issues here, is the "means actuated intermittently and independently of the movement of said wrapping and filling material for depositing the severed portions on said strip of wrapping material in spaced relation." This means is not limited to the use of a cross-feed for the filler. In other words, the Bauer machine continuously feeds a strip of gauze. It has a cross-feed which intermittently advances the filling or padding, the same being cut as advanced.It has a depositing mechanism operating intermittently and independently of the other operations, but so synchronized that it is actuated according to a prearranged schedule in timed relation with the operation of other mechanisms of the machine. During every complete cycle of operation this mechanism will be positively actuated at a definite point of the cycle, regardless of what may have occurred to the pads or gauze. ...