
    UNION PAPER-BAG MACH. CO. et al. v. WATERBURY et al.
    (Circuit Court, S. D. New York.
    December 6, 1893.)
    1. Patents — Invention—Paper Bags.
    When there has once been embodied the conception of a flat-bottomed paper bag, capable of being folded flat, and easily distended into an unsupported box, there is no invention in changing the shape or order of the folds, without producing any new or beneficial result.
    
      2. Same.
    Reissue patent No. 10,083, granted April ll, 1882, to Mark L. Deering for improvements in the manufacture of paper bags, is void for want of invention. ■ 39 Fed. 389, overruled.
    In Equity. This is a suit for infringement of reissued letters patent No. 10,083, granted April 11, 1882, to Mark L. Deering, for improvements in the manufacture of paper bags.
    The first claim of the patent in controversy was, at final hearing, held to be valid by this court, and a decree was entered in favor o'f the complainants for an injunction and an accounting. Subsequently the defendants obtained leave to file a bill of review based upon newly-discovered evidence. Issue was joined upon the bill thus filed, and the cause now comes on for hearing upon the new testimony thus taken. A full and accurate description of the supposed invention will be found in the former decision of the court. 39 Fed. 389. Decree vacated, and bill dismissed.
    G-eorge Harding and Francis T. Chambers, for complainants.
    Albert' H. Walker and Frederic H. Betts, for defendants.
   COXE, District Judge.

Three questions arise upon the new evidence. First. Is the Deering patent anticipated by the alleged Wittkorn use? Second. Is it anticipated by the alleged Besserer use? Third. Does the patent disclose invention in view of the bags, which, beyond all doubt, are proved to have been made by Wittkorn prior to 1877? The question of prior use, and particularly as it relates to the Wittkorn testimony, is a close one. Were it an ordinary question, depending upon a mere preponderance of proof, the decision would necessarily go to the defendants, for Wittkorn and the other witnesses are uncontradicted and unimpeached. But the fact that the witnesses were testifying as to events which transpired 15 years before, uncorroborated by any anticipating structure made at the time, may justify the conclusion that their statements are not established beyond a reasonable doubt. It is, however, unnecessary to discuss this defense as the cause must be determined upon the question of invention. The nature of the supposed invention as described by the patentee “relates to forming paper bags with such bottoms that said bags, when distended, shall have flat bottoms of rectangular form on which to stand erect and unsupported when filled.” Tbe manner oí constructing these bags, by folding and pasting the paper, is stated in the claim as follows:

“(1) Tlio herein-described process or method of forming paper bags by making in a sheet of paper or blank the folds B and G, then pasting together the two sides A1 A2, forming a bellows-sided body or tube of the bag, then spreading open one end of said body or tube, then forming the inwardly-projecting triangle folds H IT, side laps, G G, and laps I J, which latter are secured in place by pasting or otherwise, substantially as described.”

The patent is described by one of the officers of the complainant company, with the clean-cut terseness characteristic of a business man, as “a method patent for making a satchel-bottom on our bellows side-fold bags.” Alt hough the prior art was very inadequately developed at the former hearing the court was manifestly in doubt upon the subject of patentability. It now appears that bags, which in function and appearance so closely resemble the Deering bag that only an expert can tell the difference, had been made by methods so similar that they differed only as two persons would differ in folding a piece of paper to produce a given structure. The thing produced — the hag — was, for business purposes, practically the same. It is true, strictly speaking, that the Witikorn hags did not, have the satchel bottom, but satchel-bottomed bags were old and the envelope-shaped fold was so well known in this and every analagous art that it would seem the natural one to adopt. It is difficult to see how it required an exercise of the inventive faculties do put the satchel bottom into either of the two types of Wiftltorn, bag. One bag maker may select one form of fold, another hag maker another form, and so on, hut they are not inventors if all accomplish, 'substantially, the same well-known result, the differences being of form only. The one who first embodied the conception of a flat-bottomed hag capable of being folded flat and easily distended into an unsupported box was very likely entitled to rank as an inventor. But after this liad once been done it did not require invention to change the shape or order of the folds, unless some new or beneficial result was obtained. If a contrary contention he maintained where is the court to stop? Where shall the line be drawn? If invention resides in the mere sequence of steps, as many patents may he granted as new ways are suggested of folding the bag.

It is said that the Wittkorn hag was made on a former, hut the Deering hag can also he made in this way and there is nothing in the patent to exclude the idea that blocks or other mechanical appliances may he used. The defendants’ expert thinks the use of the former a distinct advantage; hut whether this he so or not it will hardly be disputed that the method of making a Deering bag today by the use of a former would infringe the patent and that the same method in 1876 would anticipate it. A construction narrow enough to make a method which employed a block a different process would also negative the theory of the defendants’ infringement. •If Deering had never lived the paper bag industry would have been as far advanced. The changes which he made, assuming them to be improvement s, are those that would naturally occur to the skilled hag maker. The two principal advantages — the flat folding and easy transformation into a square ■ box — were equally possessed by tbe Wittkorn bags.

It is true that tbe Deering bag is now a commercial success, millions being used annually, but this is due to tbe fact that they are made by machinery and are sold at an almost nominal price. Deer-ing bad nothing to do with tbis; the credit belongs to tbe inventors of tbe labor saving machines. Deering .simply folded paper into a convenient bag. So did Wittkorn. Deering’s bag would collapse for transportation and storage and open by a "flip through tbe air.” So would Wittkorn’s. If machinery bad been invented for tbe latter it is probable that Deering’s bag would no longer have been made by hand. If no machinery bad been invented at all it is probable that both would have bad a limited local success. Tbe Wittkorn bag, like No. 5, for instance, certainly possesses some merits over tbe Deéring bag which are obvious to the ordinary beholder, but for practical purposes tbe two are so nearly alike that it is like splitting hairs to attempt to distinguish ■ them. That something magical lurks in tbe folds of tbe Deering structure or in tbe order of their production, that it required tbe effort of an inspired genius to fold the well-known satchel bottom on tbe old Wittkorn bags is an argument which surely does not satisfy tbe judgment, it appeals rather to one who has “listened with credulity to tbe whispers of fancy.” Tbe attempt to avoid tbe overwhelming force of tbe Wittkorn exhibits has been able and ingenious, but the conclusion cannot be resisted that the differences between .the Wittkorn and Deering methods depend upon such a refinement of reasoning and are of a character so unsubstantial that invention cannot be predicated of them. •

The proposition that there is nothing to show that the Wittkorn evidence was newly discovered, cannot, I think, be maintained on the pleadings and proofs. Even were it a question of proof only the testimony has convinced me that the evidence was discovered after the final hearing not only, but that it could not by the exercise of ordinary diligence have been discovered sooner.

It follows that the former decree must be vacated and the complainants’ bill dismissed, but without costs.  