AMERICAN DELINTER CO. v. AMERICAN MACHINERY & CONSTRUCTION CO., 128 F. 709

SHELBY, Circuit Judge. The bill beginning this suit was filed by the complainant (appellant here), an Arkansas corporation, against the defendant (appellee here), a Mississippi corporation.

The complainant is the owner of patent No. 503,103, of date August 8, 1893, for a new and useful improvement in methods of and apparatus for deluding cotton seed, and known as the “Thomas Delinter.” It alleged that the defendant had infringed the patent of the complainant by making, using, and leasing, and offering to lease, a machine known as the “Baxter Deliuter,” ^patented October 16, 1900, as shown by letters patent No. 659,840. The complainant prayed for damages for the alleged infringement and' for a perpetual injunction.

The defendant answered that the Thomas patent was dot valid, and that it had been anticipated in whole or in part by 18 other patents named, and admitted the making and leasing of the Baxter delinter, but denied that in doing so it had infringed the rights of the complainant, and denied that the Baxter delinter was substantially the same as the Thomas dellnter in purpose, construction, or operation. The Circuit Court dismissed the bill, denying the complainant any relief, and an appeal was taken to this court.

It is assigned, .with proper specifications, that the Circuit Court erred in the decree dismissing the bill. There are two questions to be decided:

(1) Is the Thomas delinter patent valid ? (2)«I fas the defendant infringed that patent ? i. It is matter of common knowledge that when cotton is passed through the gin, while the long lint is separated from the seed, there is left clinging, to the seed a short lint. This short lint has some value when separated from the seed, and its separation adds ff> the commercial value of the seed. It has been evident for many years that a machine that would rapidly and economically delint cotton seed would be of great value.

Before the invention of the Thomas delinter several debuting machines had been patented, but’an examination of them shows /that they differ in many material particulars from the Thomas machine, .and, so far as appears from the record, not one of them was successful ¡ in its operation. , We shall have occasion later to refer to them again. A Thomas delinter was. exhibited to the trial court and to this .court . at the hearing. Its several parts are shown in the drawings accompany-..iug the patent.

Any description we may be able to give will be greatly aided by the following figure taken from the brief of the appellant, which represents the machine with its several parts adjusted: The patent, claims, and the other evidence in the record show that the machine is constructed with a central horizontal shaft, supported by a frame at or near each end, with a drawing pulley on each end. On the shaft are placed a series of corrugated corundum wheels, 12 inches in diameter. Between the corundum wheels are space blocks. On the space blocks are stirrers, nearly flush with the corundum wheels.

These stirrers are to stir the cotton seed, and to push them towards the discharging end of the machine. The corundum wheels fastened on the shaft are surrounded by a perforated metal casing, the perforations being large enough for the lint, but not the seed, to pass through them, the inside of the perforated casing being- smooth. This metal casing is situated about one inch from the rim of the corundum wheels.

Outside of this perforated casing is another metal casing, which is open at the bottom, and connects at the top with a suction fan, which draws the lint through the perforations when it has been scoured from the .seed by the corundum wheels. The cylinder of corundum wheels being put in motion by the belts, the seed pass into the machine at the top of the end marked “inlet.” They pass through the machine lengthwise, the machine being held close to the corundum wheels by the smooth perforated casing.

The seed are delinted by the wheels, and pass out at the bottom of the other end of the machine, marked “outlet,” the lint as it is scoured off being separated from the seed by being sucked through the holes in the first casing. Connected with the inlet end of the machine there is a down spout, 6 or 8 feet high, and a screw-shaped block of wood next to the first corundum wheel. The feed erf seed being continuous, the space between the cylinder and the perforated casing is filled, and is kept full, although the delinted seed are discharged at the outlet.

The rotation of the corundum wheels and the stirrers on the space blocks causes the circular or annular roll of seed to revolve, but at less speed than the corundum wheels. The result is that the lint is removed from the seed, and the lint and seed separately discharged from the machine. The Thomas patent and the original drawings do not show the feed screw or the screw-shaped block at the inlet. The patent clearly shows, however, that the seed were to be fed to the machine at one end and to be discharged at the other.

The evidence shows that in the construction of the first machine a screw-shaped block of wood was placed under the feed spout and next to the first corundum wheel. Later the feed screw was used. It seems evident that some device — blades with slanting edges, a screw-shaped block, or a feed screw — is useful to start the seed in the right direction and push them through the machine. The patent pointedly provided that they should enter at one end and be discharged at the other.

The feed spout being kept full, gravity and the motion of the machine would cause the seed to go in the direction intended toward the outlet. The evidence shows, however, that the use of the feed screw or some equivalent device is of advantage in pushing the seed from the inlet to the outlet. In the construction of the machine Thomas would not be confined to- making an exact copy of his drawings and specifications. It would be almost impossible to insert in the drawings and description ever)*- detail.

If the drawings and description furnished are sufficient for a mechanic skilled in the art to construct the device patented, they are sufficient. ' We are of opinion that the failure to- show a feed screw or an equivalent device in the drawings or the patent does not invalidate the patent. Eighteen patents have been put in evidence as anticipations of the Thomas delinter. They include patents for grain scourers, for bolting flour, for shaft hangers, for cleaning cotton seed, and several for delinting cotton seed.

It is unnecessary to examine each of them separately to point out the differences between them and the Thomas machine. Generally, those of them that are intended to be delinters rely on the abrasion of the seed by two rough surfaces, whereas one main idea of the Thomas delinter is that the cotton seed shall be held by a .smooth surfaced casing close to the corrugated corundum wheels. The conception of avoiding all roughness or abrading quality on the part of the casing is not evidenced in any one of the patents or machines prior to Thomas’.

In his specifications it is said: “In constructing the perforations which form the lint outlet, care should bé taken to avoid projections, roughness, or anything calculated either to interfere with the movement heretofore referred to of the annular body of seed or with the escape of the lint.” The prior patents, on the contrary, usually rely on making both surfaces' that come in contact with the seed rough, or in some way fashioning them that both surfaces should serve in taking the lint from the seed.

The record, we think, shows that the delinting is successfully performed when the seed- are held by a nonabrading smooth surface close against the delinting cylinder, and it is not shown that machines relying on two abrading surfaces have been successful. The prior patents that in some respects slightly resemble'the Thomas delinter are wholly wanting- in the devices necessary to continuously and successfully do the work of delinting.

They are not susceptible of a continuous feed, or they do not separately discharge the seed and the lint, or they 'do not provide for the feed at one end and the passage of the seed through the machine lengthwise the machine and the discharge continuously of the delinted seed at the other. The grant of letters patent for the Thomas delinter is prima facie evidence that Thomas was the inventor of the device described in the letters and of its novelty. Cantrell v. Wallick, 117 U. S. 689, 694, 6 Sup. Ct. 970, 29 L. Ed. 1017.

The burden, therefore, was on the defendant tor sustain the defense that the invention had been anticipated and want of novelty. The evidence does not leave us in doubt that the Thomas delinter was operative. . .Dr. Thomas testifies that on the first machine made he and others delinted two car loads of seed.

About 40' of the machines were made, and the evidence shows that several of them were operated successfully. ■ The statute provides that “any person who has invented or discovered any new and useful art, machine, manufacture or composition of matter, or any new and useful improvement thereof, not known or used by others in this country, ⅜ * * may * * * obtain a patent therefor.” Rev. St. 4886 [U. S. Comp. St. 1901, p. 3382].

Without considering the claims asserted as new processes or methods, Hve are of opinion that the evidence shows that Thomas invented a new and useful machine, although it is a combination of known elements, and that the invention has novelty and utility. The fact that the machine is an aggregation of known devices does not show that-it is lacking in novelty. A.machine is of necessity made of known things. The originality is often in the new combination. I11 no prior delinter do we,find united all of the attributes of Thomas’, nor is it shown that añyprior delinter produced the desired results.

It cannot be said,.we think, that it is lacking in novelty, unless the combination he made was one so obvious that it would occur to any one skilled in the art. That the combination is not one evident and easily seen is shown by the fact that Delamare, Gennert, Crawford, and others struggled unsuccessfully to produce a practical working delintsng machine. The court is of opinion that the Thomas patent, No. 503,103. is a valid patent for a mechanical device for delinfing cotton seed, shown by the drawings, patent, and claims from 5 to 8, inclusive. 2. The remaining question is as to the infringement.

There is no conflict in the evidence that the defendant has made, used, leased, and offered to lease a machine called the Baxter deliuter, which is described in patent No. 659,840. Afodels of both machines have been before the trial court and are before this court. The question of the validity of the Baxter patent is not before us for decision.

It might be a valid patent as an .improvement of the Thomas delinter, and yet an infringement of the Thomas patent, in so far as it copies and appropriates the invention of Thomas. “Two patents may both be valid when the second is an improvement on the first, in which event, if the second includes the first, neither of the two patentees can law-full}’' use the invention'of the oilier without the other’s consent.” Cantrell v. Wallick, 117 U. S. 689, 694, 6 Sup. Ct. 970, 29 L. Ed. 1017.

We are aided in the examination of this question of infringement by the evidence of experts, but their opinions are not conclusive. Wre must form our own opinion, based on all the evidence. With the two patents and the drawings and models before us, aided by the other evidence in the record, we are required to. decide the question of infringement. Hardwick v. Masland (C. C.) 71 Fed. 887. Both machines are constructed with a central horizontal shaft, supported by frames.

In both machines on the shaft is formed a cylinder composed of a series of corundum wheels, mounted side by side, and containing circular grooves. In both stirrers are arranged between the corundum wheels to stir and lift the seed as the corundum cylinder revolves. Both machines have the perforated casing with the smooth interior surface, the perforations being of a size to permit the passage of the lint, but not the passage of the seed. In both machines there is an inlet for the seed at one end, and an outlet for the delinted.seed at the other end.

And both machines make the same provision for the continuous ingress of the seed, their passage through the machine lengthwise the machine, and the continuous egress of the delinted seed. Mr. Brown, the defendant’s expert, in giving evidence as to the operation of the Thomas machine, did not have access to a Thoriias machine. A sentence from his evidence shows how easily he changed a Baxter machine into a Thomas machine. lie said: "No machine like the Thomas patent being available, it was necessary to reconstruct one of the Baxter machines so as to approximate the structure of the Tilomas machine.

Accordingly, one of the Baxter machines was dismantled. and (he alternating stones and toothed rings were slipped off from the shaft of the rotating drum, and the feed screw removed, and then there was slipped onto the shaft in alteration stones and metal rings carrying teeth which were not beveled in accordance with the Baxter patent, and which were not spirally disposed,” These changes made the- Baxter machine "substantially” like the Thomas machine. ■ An examination of the models, the drawings, and patents, and the descriptions of the two machines by the experts, show that in their mechanism and in their practical operation they are substantially the same.

The only dif¥ei;encés worthy of note, and in these respects the Baxter machine may be an improvement 'on the Thomas delinter, are that the casing in the Baxter machine is made somewhat larger in diameter at one end than at the other, and that the perforations at one end of the casing are made somewhat smaller than at the other; that the stirrers are shaped and arranged somewhat differently in the Baxter machine, and probably tend to push the se.ed along the cylinder more than those provided for in the Thomas patent; that the location of the seed outlet is slightly changed, and a swing door used to regulate the outflow of the seed; and a feed screw is used at the end of the corundum cylinder under the feed spout, Thomas having used blades with beveled faces.

These changes may be substantial improvements, but the Baxter machine embraces the invention made by - Thomas. There is no substantial part of the Thomas machine that is not reproduced in the Baxter' delinter. If it be conceded that improvements are added, it is nevertheless an infringement. Cantrell v. Wallick, 117 U. S. 689, 6 Sup. Ct. 970, 29 L. Ed. 1017; Simmons v. Standard Oil Co. (C. C.) 62 Fed. 928; Robbins v. Dueber Mfg. Co. (C. C.) 71 Fed. 186; Pennington v. King (C. C.) 7 Fed. 462. Our conclusion is that the complainant has a valid patent, which the defendant has infringed.

The decree- of the Circuit Court dismissing the bill must therefore be reversed, and the cause remanded for further proceedings in conformity with this opinion; and it is so ordered.