C. & A. POTTS & CO. v. CREAGER et al., 97 F. 78

TAFT, Circuit Judge (after stating the facts). Judge Sage held that the prior uses and the patents introduced in the supplementary .proceedings, which were not before the supreme court, showed that the clay disintegrator, like that of the Potts machine, could not be a pioneer invention, because the disintegration of clay, as distinguished from crushing it and pulverizing it, was not a new result.

He found in the opinion of the supreme court ground for the inference that the conclusions of the supreme court as to the validity of the Potts patent were based on the assumption that it effected wholly a new result in the art of the treatment of clay for the manufacture of brick, and as the new evidence, in his view, showed that the disintegration was an old result, or, at least, had been accomplished in prior machines, patented and unpatented, the discovery of the roller of Potts, in his first machine, did not involve the exercise •of invention.

No new evidence was introduced upon the subject of infringement, and we may assume from the decision of the supreme court, as well as from the evidence before us, that the defendants’ machine is so like the plaintiff’s that the only question now presented to us is of the validity of the complainant’s patent. The supplemental record disclosed a great many more machines than were before the supreme court, for crushing, pulverization, and disintegration of clay in its preparation for the brick machine.

But we do not find from the evidence that the operation of any of these machines for the disintegration of clay was so successful as to lead to their general adoption by the trade, or to work a change in the older and more laborious methods in preparing clay for brick machines, graphically described by Mr. Justice Brown in his opinion. It is clearly ■established by the evidence that the Potts machine is a success. Nearly ah the witnesses who testified to the contrary are prejudiced by their general interest in the litigation, and, as infringers of complainant’s patents, are contradicted by their conduct.

The weight of such evidence, moreover, is much impaired by the trade circulars issued by the defendants, showing the success of machines which infringe and resemble, in every way, the Potts machine. The operation of the Potts machine described by Mr.

Justice Brown shows that it embraces the rapid revolution of the cylinder with longitudinal blades upon it, arranged with reference to the mass of clay to be disintegrated, so that the knives upon the surface of the cylinder shall ■strike with hard blows the mass of clay, and clip off or tear off from the mass presented to the cylinder bits of the clay, and carry them into a receptacle below. In the first patent the element which fed the clay to the cylinder was a vibrating plate.

In the second patent a slow-moving, smooth roll was substituted for the vibrating plate, and this smooth roll slowly moved and fed the clay to be struck by the knives upon the rapidly revolving cylinder. Now, it may be that the other machines called “disintegrators” accomplish the same result, but they accomplish it by the use of two cylinders, each aimed with cutting, crushing, or disintegrating projections, which inter-mesh, and which effect the disintegration in the same general method as crushing is effected by smooth rollers.

The speeds with which the two rollers are operated differ but little in the Moore, Bossi, and Watson machines, and, while they may have effected disintegration, they certainly did not do it in the same way and upon the same principle as that seen and employed in the Potts devices.

Conceding that disintegration of the clay, sufficiently complete to introduce it at once into the pugging mill or the brick machine without having recourse to the soak pit, was accomplished before the Potts invention, we are nevertheless of opinion that the operation of the Potts device is so different from that of the prior devices, and is so much mora efficient than they are shown to he, that it is still entitled to the reward of a limited monopoly. It is difficult at first to distinguish between the pulverizing and crushing operation and that of disintegrating.

In a wide sense, “disintegration” necessarily takes place in the operation of crushing and pulverizing. The supreme court uses the term, however, in the sense of tearing apart, piece by piece, or shredding. In no clay machine but the Potts do we find this kind of disintegration. It is true that the Moore, Bossi, and Watson machines are described as shredding the clay, but, on cross-examination, it was made quite apparent that the machines as operated would not tear the clay piece by piece, for the differential speed of the two rollers was not great enough for this.

Moreover, the product was afterwards subjected to the “soak pit,” an indication that the (day was not in the desired condition, for it was to make the soak pit unnecessary that the Potts machine was invented. We do not think that the disintegration of apples or of cocoanut kernels is so analogous to the disintegration of wet day that the ingenuity shown in the adoption of the device for disintegrating clay can be minimized by reference to these other arts.

We are justified in this conclusion by the fact that the supreme court did not find that the Butferworth pa! ent, for disintegrating apples, which was quite as near in operation and principle to the Potts device as either the Mills or the Archenbroon mill, was a reason for depriving Potts of the right to a patent. The Gregg patent, it is quite clear, was impracticable, and, though it professes to comminute the clay, it is shown by the evidence to have probably been a complete failure, and never to have gone into use at all.

The Dodson patent was an instance of the intermeshing of pro jeeiions on the surface of an abutment with corresponding projections on the surface of a cylinder. It is not shown to have produced disintegration of the clay, and is one of those wrecks and failures of inventive genius that are constantly found lining the path of the successful inventor, who takes the last step which wins.

We think Judge Sage erred in his conclusion that the supreme court’s decision rested wholly on the pioneer or primary character of the Potts machine in accomplishing an entirely new result, and, even if that were the ground of the decision, it does not at all follow that the supreme court would not have reached the same conclusion, because of the difference in the means or method employed, and greater efficiency thereby secured, in the Potts machine over any shown in the preceding art.

If, as contended by counsel for defendants, the Newell machine will disintegrate clay better with its inter-meshing surfaces on the face of two rollers than the Potts machine, the defendants have the right to use the Newell machine. In reaching our conclusions of fact in this case, we have not been unmindful of the abuses which the strict rules enforced in the allowing of the rehearings were adopted to prevent.

Where an elaborate opinion of the court of last resort upon the evidence is published, and the weaknesses of the losing side are clearly brought out, and the defeated party is thereafter given an opportunity to strengthen the defects of his case by evidence as to transactions long past and machinery long since cast into the scrap heap, there is great danger that the exigencies of the case may lead witnesses to round out evidence beyond that which exact truth would permit. Such evidence must be taken with great caution, and weighed in the light of this danger.

Objection is made by the defendants thát the sixth claim of the complainant’s patent is simply for a cylinder with longitudinal grooves and scraping bars, adjustably secured in a groove, and that the other elements shown in the patent cannot be read into it in order to make it a combination patent.

We understand the supreme court in its decision to have treated this as a combination claim, or, at least, to have held that it was for the element in the clay-disintegrating machine to be used in combination with the opposing and other elements necessary to secure disintegration of the clay by the methods specified in the patent. The supreme court intimates in its opinion that the substitution for the vibrating plate of a smooth roller did not involve invention, and therefore the second patent was not valid as an improvement over the first.

It supports, however, the validity of the first patent, and the sixth claim thereof, as for the element in a disintegrating machine of the cylinder, constructed according to the claim, in combination with a vibrating plate or the equivalent thereof, which shall feed the mass of clay to the armed cylinder, and hold it to be clipped off or disintegrated, piece by piece, by the rapid revolution of the cylinder.

It is impossible, therefore, to determine the validity of the claim in the light of the prior art, without considering the other parts of the old machines with which the alleged anticipatory cylinder co-operates in them. We have therefore felt justified, as the supreme court did, in looking at the combination in each of the old patents, to determine whether the revolving cylinder, with its peculiar functions, in the Potts patent, had been anticipated.

We hold, therefore, that the first Potts patent is valid and is infringed, but that the second Potts patent is invalid, because it shows no patentable improvement over the first. Other questions have been made by appellant, but, in view of our conclusion, it is not necessary for us to consider them. The decree of the circuit court is affirmed in so far as it dismisses the bill on the second Potts patent, and is reversed in so far as it dismisses the bill oa the first Potts patent, with directions to enter a decree finding the validity of the first Potts patent, and ordering a reference for damages.

The costs of appeal are taxed against the appellees.