SHIPMAN, Circuit Judge.
This suit in equity was founded upon the alleged infringement of reissued letters patent No. 10,083, applied for November 20, 3881, and granted April 11, 3882, to- the Union Paper-Bag Machine Company, as assignee of the inventor, Mark L. Deering, for improvements in the manufacture of paper bags. The original patent, No. 227,350, was applied for May 10, 1879, and was granted to Deering on May 11, 1880. The application was thrown into interference with an application of Leinbach and Wolle for the same invention, who subsequently executed and filed in the patent ofiic'e an acknowledgment of Deering’s priority upon which his patent issued. A contract was at the same time made between these three persons for the sale of the patent to a corporation which Lein-bach and Wolle said was about to be organized under the name of the New York Paper-Bag Machine & Manufacturing Company. The validity of the Union Company’s title to the patent was assailed by a corporation organized in December, 1884, under the name of the New York Paper-Bag Machine & Manufacturing Company, in a suit in equity against the assignee in the Eastern district of Pennsylvania, which was decided in favor of the Union Company, and its title is not challenged in this suit. Tire Hollingsworth & Whitney Company is an exclusive licensee to make, use, and sell paper bags under said patent for certain territory, which includes the Southern district of New York.
The original patent contained a single claim for a process. The reissued patent contained two claims, as follows:
“(1) The herein-described process or method of forming paper bags by making in a sheet of paper or blank the folds, B and C, then pasting together the two sides, Ag As, forming a bellows-sidetl body or tnbe of the bag, then spreading open one end of said body or tube, then forming the inwardly-projecting triangular folds, H, H, side laps, tí, G, and laps, I, J, which latter are secured in place by pasting or otherwise, substantially as described. (2) A bag consisting of a bellows-sided tube having a satchel bottom and inward triangular folds, which form part of its two sides when distended.”
The first claim does not materially differ from the claim of the original patent. The cause was tried before Judge Wallace, who decided that the second claim was an unwarrantable enlargement of the original patent; that the first claim was valid, and had been infringed; and that the usual decree for an injunction and an accounting should issue upon filing a proper disclaimer of the second claim. 39 Fed. 389. This disclaimer was filed. The defendants then brought a petition for leave to file a bill of review for the purpose of introducing newly-discovered evidence, and an order was granted that they have leave to file such a bill, and introduce their [242]*242new evidence, and that the injunction be suspended until tbe hearing upon tbe bill of review. A volume of new testimony was thereupon taken, wbicb presented a new case on tbe part of tbe defendants. Upon tbe bearing before Judge Coxe, be vacated tbe former decree, and dismissed tbe complainants’ bill without costs, upon tbe ground that, upon tbe undisputed state of tbe art as shown in tbe new testimony, tbe Deering improvement was not a patentable invention. 58 Fed. 566. From this decree tbe present appeal was taken.
By tbe process or method described in tbe Deering patent, a “rectangular sheet of paper becomes, by successive foldings and tbe pasting of adjoining edges, a paper box having a flat bottom of rectangular form and open top.” It “can be folded into a flat piece of paper, and thus a large number can be included in a bundle, occupying but a small space, in a convenient form for transportation, and ready for immediate use.” Tbe grocer takes one from the bundle, and bolding it by its open mouth, “gives it a flip through tbe air,” when, distended by tbe air, it becomes a box, wbicb stands upright and unsupported upon a comparatively firm bottom. ' Tbe patent did not describe any automatic mechanism for tbe manufacture of tbe bags, and none existed, but machinery has been invented with great ingenuity, by which Deering bags have been produced in vast quantities, with great cheapness, and have become a universally known article. Tbe patented method consists of tbe following successive operations: The paper is folded in the manner necessary to form a flat bellows tube, and tbe edges which form tbe longitudinal seam of tbe tube are pasted together. One end of tbe flat tube is then opened, and tbe portion which is to be used in making tbe bottom is marked by a crease, is turned up at right angles to tbe body of tbe bag, and is distended. , Tbe inwardly-turned triangular folds and side flaps of tbe bottom, which are the distinctive features of tbe Deer-ing bags, are next formed. Tírese folds are formed of portions of tbe material of tbe bellows folds, and tbe side laps are formed also of portions of tbe like material, and of parts of tbe flat sides of tbe bellows-folded tube. Tbe two triangular laps of tbe bottom are then folded over and pasted, and thereby tbe folds of tbe bottom of the bag are secured. This process does not demand a support or former within tbe bag body during tbe course of manipulation.
Turning now to tbe state of tbe art at the date of the Deering invention, in 1877, the bellows-folded tube and square-bottomed bag bad been shown in tbe machine patent to Luther C. Crowell, No. 123,812, dated February 20, 1872, and the satchel-bottomed bag bad been shown in tbe machine patent to William Webster, No. 146,372, dated January 13, 1874. But tbe Wittkorn bag was tbe important addition to tbe knowledge in regard to the history of this manufacture wbicb tbe new proofs furnished. It was shown that Henry Wittkorn, a paper-bag manufacturer in Philadelphia, from April, 1873, to 1887, manufactured by band, and sold during tbe year commencing April 1,1874, paper bags which were made in tbe following •way: A rectangular paper tube was folded around or was slipped over a rectangular wooden block. Sometimes tbe tube bad been formed into a bellows tube before it was placed upon tbe block, and [243]*243sometimes the bellows formation was made after the bag was completed. One end of the tube — being the end which, was to form the bottom of the bag — projected above the edge of the block “a distance equal to the breadth of the sides of the tube. The front flap was then folded down on the end of the block, completely covering it, and the side flaps were at the same time doubled over into triangular flaps of double thickness. These flaps were pressed in between the front and rear flaps, the rear flaps being at the same time folded down upon the end of the block, and pasted to the front flap, thus completing the bag.” They were afterwards collapsed by turning the bottom against the front, and at the same time collapsing the tube into bellows folds, so that the bags became' flat pieces of paper, which were easily packed in bundles. These two collapsing operations created inward triangular folds between the bottom and the bellows-formed side.s. The manufacture and sale of bags made in this way was publiciy carried on as a business by Wittkorn and his workmen. These bags were distended by “a flip through the air,” when they became square-bottomed rectangular boxes. Their existence as an article of manufacture is not denied. Samples of them are in evidence. Among others, a sample of a particular style of hominy bags, which were used by one Kelly, a grocer, is well known in the case as “Wittkorn’s Exhibit No.
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SHIPMAN, Circuit Judge.
This suit in equity was founded upon the alleged infringement of reissued letters patent No. 10,083, applied for November 20, 3881, and granted April 11, 3882, to- the Union Paper-Bag Machine Company, as assignee of the inventor, Mark L. Deering, for improvements in the manufacture of paper bags. The original patent, No. 227,350, was applied for May 10, 1879, and was granted to Deering on May 11, 1880. The application was thrown into interference with an application of Leinbach and Wolle for the same invention, who subsequently executed and filed in the patent ofiic'e an acknowledgment of Deering’s priority upon which his patent issued. A contract was at the same time made between these three persons for the sale of the patent to a corporation which Lein-bach and Wolle said was about to be organized under the name of the New York Paper-Bag Machine & Manufacturing Company. The validity of the Union Company’s title to the patent was assailed by a corporation organized in December, 1884, under the name of the New York Paper-Bag Machine & Manufacturing Company, in a suit in equity against the assignee in the Eastern district of Pennsylvania, which was decided in favor of the Union Company, and its title is not challenged in this suit. Tire Hollingsworth & Whitney Company is an exclusive licensee to make, use, and sell paper bags under said patent for certain territory, which includes the Southern district of New York.
The original patent contained a single claim for a process. The reissued patent contained two claims, as follows:
“(1) The herein-described process or method of forming paper bags by making in a sheet of paper or blank the folds, B and C, then pasting together the two sides, Ag As, forming a bellows-sidetl body or tnbe of the bag, then spreading open one end of said body or tube, then forming the inwardly-projecting triangular folds, H, H, side laps, tí, G, and laps, I, J, which latter are secured in place by pasting or otherwise, substantially as described. (2) A bag consisting of a bellows-sided tube having a satchel bottom and inward triangular folds, which form part of its two sides when distended.”
The first claim does not materially differ from the claim of the original patent. The cause was tried before Judge Wallace, who decided that the second claim was an unwarrantable enlargement of the original patent; that the first claim was valid, and had been infringed; and that the usual decree for an injunction and an accounting should issue upon filing a proper disclaimer of the second claim. 39 Fed. 389. This disclaimer was filed. The defendants then brought a petition for leave to file a bill of review for the purpose of introducing newly-discovered evidence, and an order was granted that they have leave to file such a bill, and introduce their [242]*242new evidence, and that the injunction be suspended until tbe hearing upon tbe bill of review. A volume of new testimony was thereupon taken, wbicb presented a new case on tbe part of tbe defendants. Upon tbe bearing before Judge Coxe, be vacated tbe former decree, and dismissed tbe complainants’ bill without costs, upon tbe ground that, upon tbe undisputed state of tbe art as shown in tbe new testimony, tbe Deering improvement was not a patentable invention. 58 Fed. 566. From this decree tbe present appeal was taken.
By tbe process or method described in tbe Deering patent, a “rectangular sheet of paper becomes, by successive foldings and tbe pasting of adjoining edges, a paper box having a flat bottom of rectangular form and open top.” It “can be folded into a flat piece of paper, and thus a large number can be included in a bundle, occupying but a small space, in a convenient form for transportation, and ready for immediate use.” Tbe grocer takes one from the bundle, and bolding it by its open mouth, “gives it a flip through tbe air,” when, distended by tbe air, it becomes a box, wbicb stands upright and unsupported upon a comparatively firm bottom. ' Tbe patent did not describe any automatic mechanism for tbe manufacture of tbe bags, and none existed, but machinery has been invented with great ingenuity, by which Deering bags have been produced in vast quantities, with great cheapness, and have become a universally known article. Tbe patented method consists of tbe following successive operations: The paper is folded in the manner necessary to form a flat bellows tube, and tbe edges which form tbe longitudinal seam of tbe tube are pasted together. One end of tbe flat tube is then opened, and tbe portion which is to be used in making tbe bottom is marked by a crease, is turned up at right angles to tbe body of tbe bag, and is distended. , Tbe inwardly-turned triangular folds and side flaps of tbe bottom, which are the distinctive features of tbe Deer-ing bags, are next formed. Tírese folds are formed of portions of tbe material of tbe bellows folds, and tbe side laps are formed also of portions of tbe like material, and of parts of tbe flat sides of tbe bellows-folded tube. Tbe two triangular laps of tbe bottom are then folded over and pasted, and thereby tbe folds of tbe bottom of the bag are secured. This process does not demand a support or former within tbe bag body during tbe course of manipulation.
Turning now to tbe state of tbe art at the date of the Deering invention, in 1877, the bellows-folded tube and square-bottomed bag bad been shown in tbe machine patent to Luther C. Crowell, No. 123,812, dated February 20, 1872, and the satchel-bottomed bag bad been shown in tbe machine patent to William Webster, No. 146,372, dated January 13, 1874. But tbe Wittkorn bag was tbe important addition to tbe knowledge in regard to the history of this manufacture wbicb tbe new proofs furnished. It was shown that Henry Wittkorn, a paper-bag manufacturer in Philadelphia, from April, 1873, to 1887, manufactured by band, and sold during tbe year commencing April 1,1874, paper bags which were made in tbe following •way: A rectangular paper tube was folded around or was slipped over a rectangular wooden block. Sometimes tbe tube bad been formed into a bellows tube before it was placed upon tbe block, and [243]*243sometimes the bellows formation was made after the bag was completed. One end of the tube — being the end which, was to form the bottom of the bag — projected above the edge of the block “a distance equal to the breadth of the sides of the tube. The front flap was then folded down on the end of the block, completely covering it, and the side flaps were at the same time doubled over into triangular flaps of double thickness. These flaps were pressed in between the front and rear flaps, the rear flaps being at the same time folded down upon the end of the block, and pasted to the front flap, thus completing the bag.” They were afterwards collapsed by turning the bottom against the front, and at the same time collapsing the tube into bellows folds, so that the bags became' flat pieces of paper, which were easily packed in bundles. These two collapsing operations created inward triangular folds between the bottom and the bellows-formed side.s. The manufacture and sale of bags made in this way was publiciy carried on as a business by Wittkorn and his workmen. These bags were distended by “a flip through the air,” when they became square-bottomed rectangular boxes. Their existence as an article of manufacture is not denied. Samples of them are in evidence. Among others, a sample of a particular style of hominy bags, which were used by one Kelly, a grocer, is well known in the case as “Wittkorn’s Exhibit No. 5.” In this description of the Wittkorn manufacture, mention of his bag with a pasteboard bottom is omitted, as of less importance than the bag represented by Exhibit No. 5.
Testimony from Wittkorn and Jasper A. Smith, one of his partners during the year ending April 1, 1874, was introduced for the purpose of showing that before 3.877 Wittkorn used other methods of manufacture, one, at least, of which closely resembled the Deering process. Testimony from a number of witnesses was also offered to show the anticipation of Deering by one John T. Besserer, who died in 1879. No sample bag known to have been made by either of these methods prior to the date of the patented invention was introduced in evidence. The methods spoken of by Smith, and the alleged anticipation by Besserer, are not established with sufficient strength; and Wittkorn’s testimony, taken in connection with the surrounding circumstances and probabilities, does not satisfy the mind of the existence of a perfected invention at the time of which he speaks. So far as questions of fact are concerned, we prefer to rest upon facts the existence of which must be admitted.
The prominent question which presents itself at the outset is whether the improved method of manufacture coutained the necessary requisite of invention. The improvement did not consist in the use of a bellows-folded tube, nor in the substitution of a satchel bottom for the square bottom of the Wittkorn bag, nor in the fact that Deering did not apparently use a block or former, but made his bags when the tube was collapsed. The Wittkorn bag had a firm bottom, composed of six folds. His system of folding was liberal in its use of paper; and a system which should introduce greater economy of material, if consistent with sufficient strength for ordinary practical purposes, would be an improvement. This improvement Deer-[244]*244ing presented by Ms conjointly-made triangular folds and side laps, which, used a part of the material of the bellows folds, economized the paper, and made the bottom less bulky than when these triangular folds were turned in by the turning over of the bottom and the flattening of the tube. We- concur with Mr. Edward S. Benwick, the complainants’ expert, who says, in view of the preceding machine-made bags and of the Wittkorn bag, that the distinguishing feature of the Deering process is “that the inwardly triangular folds and the side laps adjacent thereto are completely formed by a conjoined operation, simultaneously, or thereabouts, before the last two laps of the satchel bottom of the bag are made.” Was it, then, invention, the Wittkorn system being obvious to the public, and the successive steps by which it produced a bag ready for the market being known, to change the order in which, and the manner of folding by which, the triangular folds were made? Wittkorn’s were made after the bottom was closed and pasted, by flattening the bellows sides and turning the bottom. Deering formed his folds and side laps by a conjoint operation before the last two laps were folded. After the Wittkorn method of manufacture had been in public use, it could not need inventive genius in a skilled bag maker to change the sequence of operations so as to bend inward the material of the bellows fold as soon as the tube was distended, and thus economize material. We are clearly of opinion that, in view of the knowledge which the Wittkorn bag had added to the art of paper-bag manufacture, the Deering process was a mechanical, and not an inventive, modification of pre-existing methods.
The record and the briefs of counsel plentifully presented other questions of law, which we think do not, in view of the character of the improvement, demand a decision. The point was made by the complainants that sufficient proof was not made under the bill of review that the Wittkorn and Besserer defenses were in fact newly discovered, and could not have been ascertained earlier by the exercise of due diligence. We concur with Judge Coxe that it sufficiently appears that the evidence was not only discovered after the hearing before Judge Wallace, but that it could not, by the exercise of ordinary diligence, have been discovered sooner. The decree of the circuit court dismissing the bill without costs is affirmed, with costs of this court.