KRAJEWSKI et al. v. PHARR et al., 105 F. 514

SHELBY, Circuit Judge, after stating the case as above, delivered the opinion of the court. There has been in use for a great many years what is known as the “three-roll mill” for compressing the juice from sugar cane. It consists of three rolls, mounted and framed, rotated by gear wheels. The rolls were made sometimes with and sometimes without grooves. The purpose of the grooves was to firmly hold, the cane as it was drawn between the rolls. Cane of full length was passed between the upper and front lower rolls, and the crushed mass was then made to pass between the top and rear lower rolls.

The juice pressed out was caught in a pan, and the bagasse removed by a belt. The mill was sometimes so constructed .as to plape the rolls upright in the frame, and then, when the rolls contained grooves or chaiinels,. their function was not only to firmly hold the cane, but also to receive and carry the expressed juice to the pan or collecting trough below. In the use of these mills, unaided by any machine or process to prepare the cane, there was great loss, on account of the failure of the, mill to express all of the juice. This is shown by the evidence, and seems to have been 'a matter of common knowledge.

To secure better results, it was evident that the cane must have preliminary treatment. The record shows that several attempts preceded Krajewski’s to make a machine to prepare the cane for the mill. The British patent, No. 2,586, of 1882, is a device for splitting and partially crushing the cane. Faure’s patent, No. 250,720, Ferron’s patent, No. 279,235, Chapin’s patent, No. 321,007, Newell’s patent, No. 186,-100, and the Hungerford patent, No. 346,817, are all devices intended to prepare the cane for the mill. Each of them may briefly be described as a cane shredder.

They are devices for tearing or shredding the cane. The result was usually produced by toothed rolls; geared to rotate at different speeds. The result of the work of the shredders is to break or tear or split the stalk longitudinally, and so reduce the work of the three-roll mill. None of these machines was constructed to cut or break the cane in short lengths transversely. The shredders did not cut the cane in short lengths, so as to secure a uniform feed of it to the mill. The Krajewski machine is not a shredder, but a machine for breaking or cutting, cane.

It is not made to tear, shred, or split the cane, but to cut or break it transversely in short pieces, so that the three-roll mill may be fed with it in a uniform manner. It does not tear the cane longitudinally. or lacerate the fibre, so as to produce a mass of shredded stalk, irregular in volume. The result produces pieces transversely cut or broken. The fact that the Krajewski machine produced re-' suits so different from the shredders indicates a difference in its, parts and mechanism.

The Krajewski machine contains two rolls having teeth which are zigzag and intermeshing, and when inter-meshed equidistant from each other, and of such sharpness that they can transversely cut or break cane into short pieces. The rolls áre maintained in position and proper relation by gear wheels, so that' the teeth of the two rolls do net come in contact side to side, but pockets or spaces are left between them. Each roll with its teeth is different from the shredders. The two, being used together, are wholly unlike the shredders in the result produced.

The Krajewski machine is much used in connection with the three-roll mill. When so used the function of the mill is to press the cane which is already cut and broken by the machine. The evidence shows that the use of the machine greatly increases, and probably doubles, the output or capacity of the three-roll mill. The machines have been on the market since 1886. They have been sold and are in use in Texas, Louisiana, Cuba, Mexico, Hawaiian Islands, and British West Indies.

It has been introduced into nearly all sugar-growing countries, notwithstanding the fact that the cost of establishing a plant, including the three-roll mill, is from $8,000 to $13,000, according to the size of the rolls and the conditions under which the plant is erected.

The Krajewski patent contains the following claim: “The combination of rollers provided externally with more or less sharp teeth having a zigzag trend' in the direction of the length of the rollers, said teeth intermeshing but not coming in contact with each other, and when inter-meshed being equidistant from each other, said rollers being geared together in order to maintain their relative positions toward each other, substantially as specified.” ) A brief comment on some of these words and phrases is required. The patent does not require the rolls to be formed in sections.

The specification provides that the rollers are “preferably composed of a number of collars keyed to or otherwise fastened on the shafts.” Features described as preferable do not constitute a limitation of the claim. “When the inventor says, ‘I recommend the following method,’ he does not thereby constitute such method a portion of his patent. His patent may be infringed, although the party does not follow his recommendation, but accomplishes the same end by another method.” Sewall v. Jones, 91 U. S. 171, 186, 23 L. Ed. 275.

It will be observed that the teeth of the two rolls are to intermesh, but not come in contact with each other. This language does not mean that the teeth of one roll may not come in contact with the other roll. The phrase “more or less” has been commented on as being vague and uncertain. The rollers are provided with teeth “more or less sharp.” If the word “sharp” had been used alone, it would have been subject to the same criticism. The phrase “more or less sharp” is indefinite, and necessarily so, because of the limits and imperfection of language.

Taking the words in connection with the context and the specification (the only . fair way to consider them), they mean sufficiently’ sharp for the purpose sought (the cutting of the cane). The phrase is in current use to describe or qualify. Mr. Justice Field, in Glue Co. v. Upton, 97 U. S. 3, 6, 24 L. Ed. 985, uses the phrase: “But to render the

article new, in the sense of the patent law, it must be more or less efficacious, or possess new properties by a combination with other ingredients.” No word, perhaps, exists, that the learned justice could have selected, that would show with certainty how efficacious the

article must be. And no word .can be selected to show exactly how sharp the teeth must be. It seems to us sufficient to say “more or less sharp,” and that this means sufficiently sharp for the purpose shown by the specifications. The question of infringement, which will be considered later,, has, in some of the arguments presented, been made to turn on the meaning of the word “equidistant” as used in the patent. The teeth when “intermeshed being equidistant from each other,” — what is meant by these words? We must, of course, look to the connection in which a word is used, to get its intended meaning.

The drawings and specification show that the teeth of one roll fall between the teeth of the other, and in the depressions between them. The purpose of this adjustment is, in part, to leave spaces on opposite sides of the teeth, adapted to receive the pieces of cane cut or broken off by the teeth. Was it material that these spaces should be of the same size on each side of the teeth? If slightly different in' size, they could still receive the’, cane. This fact indicates that the meaning was that the teeth of one roll were to fall approximately rather than exactly midway between the teeth of the other.

The word “equidistant” must, we think, include any position that is sufficiently midway to attain the purpose of the invention. The meaning of letters patent, like other grants or written instruments, must he ascertained by the language employed, as applied to the subject-matter. Robinson v. Sutter (C. C.) 8 Fed. 828; Adams v. Iron Co. (C. C.) 26 Fed. 324; Sayre v. Scott, 5 C. C. A. 366, 55 Fed. 971. It is claimed by the defendants that the Krajewski machine contains no patentable novelty; that the combination is merely the aggregation of well-known devices. A machine must he constructed of known things.

Unless the aggregation is clearly obvious, such as would be suggested to any one skilled in the art, it cannot be an answer to the claim of novelty in a machine consisting of many parts to segregate its parts, and say that each of them is well known and has been long in use. Invention would not often be equal to .the test of originality and novelty if the parts of the machine invented are subjected separately to that test. The parts of a machine when segregated may be ancient and well known, and yet the completed device in the aggregate altogether novel. Originality sometimes consists in new combinations.

If it be conceded that the machine is only a combination of old and known devices, the patent is not invalid, unless the combination was an obvious one for obtaining the advantages proposed, — one that would occur to any one skilled in the art. The idea of producing a combination or machine that would cut the cane in short lengths did not occur to any one of the many mechanics who designed and made the various shredders. They were intended to prepare the cane for the mill, but the machines made were shredders, and not cutters and breakers of the cane.

To the mechanics making the shredders the combination of devices adopted by Krajewski was not obvious. When made, it appears to be very plain. It accomplishes the end sought in the art. It increases greatly the product of the three-roll mill. In Loom Co. v. Higgins, 105 U. S. 580, 591, 26 L. Ed. 1177, an improvement in looms for weaving pile fabrics was held patentable which consisted of such a new combination of known devices as to give to a loom the capacity of weaving 50 yards of carpet a day, when before it could only weave 40. In that case the supreme court said, speaking through Mr.

Justice Eradley: “It is furtlier argued, however, that, supposing the devices to he sufficiently described, they do not show any invention, and that the combination set forth in the fifth claim is a mere aggregation of old devices, already well known, and therefore it is not patentable. This argument would be sound if the combination claimed by Webster was an obvious one for attaining the advantages proposed, — one which would occur to any mechanic skilled in the art.

But it is plain from the evidence, and from the very fact that it was not sooner adopted and used, that it did not, for years, occur in this light to even the most skillful persons.

It may have been under their very eyes, they may almost be said to have stumbled over it, but they certainly failed to see it, to estimate its value, and to bring it into notice. * * * At this point we are constrained to say that we cannot yield our assent to the argument that the combination of the different parts or elements for attaining the 'object ill-view- was'so obvious as to merit no title to invention.' Now that it ' has succeeded, it may seem very plain to any one that he could have done it as well. -This is often the case with inventions of the greatest merit.

It may -be laid down as a general rule, though perhaps not an invariable one, that if d new combination and arrangement of known elements produce a new and beneficial result, never attained before, it is evidence of invention. -' It was certainly a new and useful result to make a loom produce fifty yards a: day, when it never before had produced more than forty; and we think that ,the- combination of elements by which this was effected, even if those elements were separately known before was invention sufficient to form the basis of a patent.” The aim of all these inventors and mechanics who invented and made the various machines for preparing the cane was to make one that would so prepare the cane that the three-roll mill could press out of the cane approximately all of its juice.

For many years machines were produced that would only tear the cane longitudinally or strip it or shred it. This lessened to some extent the labor of the mill, and was of some benefit. But it was subject to many objections, as shown by the evidence. The idea of producing a machine that would -cut or break, and not tear or shred, seems to have occurred first to Krajewski, or at least he was the first to produce such a device.

In view of the fact that the shredded cane in full length, or the split and torn cane, would clog the mill, producing unequal pressure from want of uniformity, it is strange that Krajewski’s idea did not occur to the prior inventors. The evident fact that a uniform feed of cane in short lengths would permit the rolls of the mill to run nearer each other, allowing greater and more uniform pressure, would, it seems, have suggested the necessity of a different device or combination. The shredders failed to properly prepare the cane for the mill. The Krajewski machine succeeds. In Re Barbed-Wire Patent, 143 U.

S. 275, 282, 283, 12 Sup. Ct. 443, 450, 36 L. Ed. 154, Mr. Justice Brown said: ‘.‘Under such circumstances courts bave not been reluctant to sustain a patent to the man who has taken the final step wliicb bas turned, a failure into a success. In tbe law of patents it is tbe last step that wins. It may be strange that, considering tbe important results obtained by Kelly in his . patent, it did not occur to him to susbtitute a coiled wire in place of tbe diamond shape prong, but evidently it did not; and to the man to whom it did ought not to be denied tbe quality of inventor.

There are many instances in tibe reported decisions of this court where a monopoly has been sustained in favor of the last of a series of inventors, all of whom were groping to attain ••a certain result, which only the last one of the number seemed able to grasp.” Other authorities may be cited tending to sustain our conclusion that the Krajewski patent is valid. Schroeder v. Brammer (C. C.) 98 Fed. 880, 888; Dudley E. Jones Co. v. Munger Improved Cotton Mach. Mfg. Co., 1 C. C. A. 158, 49 Fed. 61; Consolidated Safety-Valve Co. v. Crosby Steam Gauge & Valve Co., 113 U. S. 157, 5 Sup. Ct. 513, 28 L.

Ed. 939; Smith v. Vulcanite Co., 93 U. S. 486, 495, 23 L. Ed. 952; Magowan v. Packing Co., 141 U. S. 332-343, 12 Sup. Ct. 71, 35 L. Ed. 781; Potts & Co. v. Creager, 155 U. S. 597, 15 Sup. Ct. 194. 39 L. Ed. 275. ! _ The question of infringement remains to be considered. The machines alleged to infringe the patent were made by the Birmingham Foundry & Machine Company.

Moffett, the pattern maker and draftsman of the company, admits on cross-examination that he. made the drawings of the machines from advertisements of theKrajewski machines, and from an inspection of two of the Krajewski machines which he examined on a Louisiana plantation. The evidence, including the drawings of the two machines, shows that"! they are substantially the same. They are each provided externally with zigzag teeth. The edges of the teeth are comparatively shaip. The' spaces between the teeth are concave in cross section.

The teeth! intermesh, the rolls being arranged in such relation to each other-that the teeth of the one project into the spaces between the teeth of the other, and this relation is maintained by gear wheels fixed to journals of the rolls. In neither machine is there contact between the teeth of the two rolls. Xeither machine is operated by contact of the teeth of one roll with those of the other.

The evidence shows that in the defendants’ machine the teeth of one roll come in contact with the circular space between the teetli of the other roll. ‘ In tiny Krajewski machine it is specified that there is no contact of the teeth of one roll with the teeth of the other, but it is not specified that the teeth of one roll do not touch the concave space between the teeth of the other. The statement of the purpose to cut the cane would indicate such contact. This is a matter, however, dependent on the adjustment of the rolls.

The evidence shows that in the defendants’ machines the teeth of the rolls, as they int.ermesh, are not equidistant from each other. The teeth of one roll intermesh not in the center of the concave space between the teeth of the other roll, so as to be equidistant, bat they touch the roll at one side from the center of the depression between the teeth. Does this make any substantial difference in the machines?

The purpose and dimension^ of the Krajewski machine indicate that it would not be possible to construct it so that the teeth would intermesh so as to he, with mathematical precision, equidistant from each other. The rolls of-the machines, as manufactured, are from 5 to 6 feet long- and 24 to 26 inches in diameter. If adjusted with mathematical nicety, (lie severe strain and work would make such adjustment temporary. The unavoidable backlash would make it impossible to use the machines and keep the teeth of one roll pointing to or touching the exact center of the depression between the teeth of the other roll.

If it could be so cast, it would not so remain. The word “equidistant,” as used in the patent, does not require adjustment with mathematical precision. The word must he considered in connection with the context. The idea was that the teeth were not to touch each other, hut to come within the copcave space or depression between the rolls. The fact that the two machines differ slightly as to the distance from each other of the intermeshing teeth cannot, we think, be very material.

It seems to us that the machine manufactured by tbe Birmingham Foundry & Machine Company, and used by the defendants, is practically the same machine as Krajewski’s, and that it produces the same results. In Potts & Co. v. Creager, 115 U. S. 597, 609, 15 Sup. Ct. 194, 39 L. Ed. 275, in holding that one machine infringed the patent of another, Mr. Justice Brown, delivering the opinion of the court, said: • “Defendants’ machine, in its construction and operation, is substantially the same as plaintiffs’.

Instead, however, of casting the shredding roller with a solid face, forming longitudinal grooves therein, and fixing the steel bars in the grooves, defendants cast the cylinder in the form of a skeleton or spider; the knives being respectively fastened to the several arms projecting from the hub, one knife to each arm, and forming the periphery by filling in metal plates between the knives.

The cylinder, when its numerous parts are bolted together, is a perfect roll with a solid face, having cutting bars projecting from the slots or grooves thus formed, and adjustibly secured therein by means of bolts passing through them. The operation is the same as that of the Potts machine, and it accomplishes practically the same result by practically the same means.” Other authorities may be cited as sustaining the conclusion of the court that the patent has been infringed. Roller-Mill Co. v. Coombs (C. C.) 39 Fed. 25, 33; Schroeder v. Brammer (C. C.) 98 Fed. 880, 881; Beach v. Box-Machine Co. (C.

C.) 63 Fed. 597; Manufacturing Co. v. Beach, 18 C. C. A. 165, 71 Fed. 420; Westinghouse v. Power-Brake Co., 170 U. S. 537, 18 Sup. Ct. 707, 42 L. Ed. 1136. The decree of the circuit court is reversed, and the cause remanded for further proceedings in conformity with the opinion of this court.