STREATOR CATHEDRAL GLASS CO. et al. v. WIRE-GLASS CO. et al., 97 F. 950

BROWN, Circuit Justice (after stating the facts as above). 1.

The object of this invention, as outlined in the specification, was to provide a practical method of introducing wire-netting into glass used for translucent roofing, such as skylights, court yards, conservatories, etc., as well as for vaults, pavements, and floor lights, or any similar places where strength is required, or where the sash is in such position that, if the glass should break, it would be liable to injure persons beneath it. “For instance,” as stated in the specification, “if the glass is used in skylights in railway depots or train sheds, the wire embedded in the glass would prevent particles of glass from falling if it should crack, and at the same time the glass protects the wire netting from the action of gases, which corrode the wire.” Defendants attack the novelty of this invention, and introduce in support of their defense several patents, none of which require special mention except the English patent of April 19, 1887, to John Armstrong.

The apparatus described by Armstrong consists of a long table, such as is commonly used for rolling glass, with a large roller, B, and a small roller, in front of which the wire-gauze is delivered from a spindle standing above the rollers. One end of the wire-ganze is rigidly attached to one end of the table, and as the carriage travels along the table the gauze is delivered in front of the small roller, which travels along the table, and presses the wire-work against the incandescent glass, and partly enters it, the hot glass coming through the meshes to the upper side.

The glass with the wire partly inserted is thus drawn under the large roller by the motion of the carriage along the table, thereby pressing the glass out to its requisite thickness. The testimony upon the subject of this patent is somewhat unsatisfactory.

Though Shuman went to Europe in 1894, and visited the large plate-glass factories in England, Belgium, France, and Germany for the purpose of obtaining all the information he could regarding the state of the art of making wire-glass, he found none for sale anywhere, although every one of the glass works men>‘:ioned by Mm liad made expei'iments towards making wire-glass for some years back.

They were entirely unsuccessful in a commercial sense, however, and “I had no difficulty in disposing of my European wire-glass patents there.” He does not appear, however, to have made inquiries for Armstrong, the patentee, though his address is given upon the face of his patent in a well-known street in London.

Such expert testimony as there is upon the subject Indicates that the Armstrong invention is not a practical one, and the fact that no wire-glass made by this machine was found upon the market, and that the patent was allowed by the patentee to expire in 1891 (when only four years old), through nonpayment of a renewal fee, required by British law, are cogent evidence that the patent was found to be inoperative or valueless. Beyond this, there is a manifest difference in the mechanism of the two devices.

In the Armstrong patent', one end of the sheet of wire-netting is fastened to the end of the table, the other end being wound around a spool suspended perpendicularly above the table. The progress of the roller from one end of the table to the other unwinds the spool, and delivers the netting in front of a smaller and secondary roller, against which the molten glass is banked up, wi thou t any effort to smooth the glass before the wire is delivered. It can scarcely be a matter of surprise that the wire-netting so delivered becomes so hot that it is unable to withstand the tension.

Shuman, who experimented with it, states in this connection that he failed to produce a merchantable wire-glass of any kind with tMs machine. In operating the machine in the manner described in the specification: "Wu found that the wire was made very hot by its contact with the molten glass, and could not stand the pull of the machine. It distorted, drew out into a thread, and in most cases broke.

In the few cases where the wire was embedded in the glass it would be either on one side of the sheet or the other, and from the fact of being pulled in its white hot and weak condition the major portion of the sheet of the glass rolled had no wire in it at all. We rolled about thirty sheets, but failed to produce wire-glass.” Another witness- — an expert- — testifies to practically the same effect, and gave it as Ms opinion that the machine was utterly impracticable. There was no testimony to contradict this.

In the Shuman device a roller is employed, to smooth the molten glass before it receives the wire, which is delivered from a chute immediately behind the first roller. The machine thus contains three rollers, the office of the first being to lay the glass of an even thickness; that of the second, which is preferably corrugated, to press the wire beneath the surface of the glass at greater or less depths according to the corrugations; and that of the third to close up the openings made by the ribbed roller and wire, and to leave the glass with a smooth upper surface.

As the wire is dropped by the chute it is subject to no tension, and may be heated to a high temperature before delivery without the danger of the breaking or twisting encountered in the practical operation of the Armstrong patent.

In a copy of the Armstrong patent, certified by the commissioner of patents March 24, 1897, and introduced by the defendants, there is a memorandum upon-the drawings to tin; effect that the roller may have ribs to cut the glass through, or the table may be ribbed; but in a corrected copy, introduced by plaintiffs, and certified by the commissioner of patents January 17,1898, and also by the English comptroller general of patents, no such memorandum appears.

But, even if it did, it must he taken in connection with the specification, which states that “the large roller may he ribbed with large divisions to cut the glass nearly through if found necessary to make the sheets of smaller size by its action against the table; or the table may have ribs instead, for the same purpose.” This was obviously something entirely different from the corrugations upon Shuman’s second roller, which were designed not to cut the glass into divisions, hut to press the wire-gauze to a greater or less depth beneath the surface.

While the Shuman patent may be an infringement upon that of Armstrong, we think the introduction of the third roller for the purpose of smoothing the glass to a uniform thickness before the wire is delivered, and the improvement in embedding the wire-netting in the molten glass by a corrugated roller, are sucli an advance upon the Armstrong device as to entitle Shuman to his patent. We acquiesce the more readily in this conclusion from the fact that his device met with an immediate success, and appears to have supplanted entirely the previously known methods of manufacturing wire-glass.

This fact, though by no means decisive of novelty, may properly he considered. The Shuman patent was evidently the first practicable method of making wire-glass, and appears to have attracted a good deal of attention in this and other countries, and various medals were awarded to the inventor. Indeed, Byon himself, the patentee of defendants’ machine, visited complainants’ manufactory in the spring of 1894, and endeavored to secure the right to use the Shuman machine. Patent No. 521,570, granted December 25, 1894, to Francis M.

Byon, under which defendants are manufacturing, exhibits the same features of a roller for smoothing the glass, a corrugated roller for the introduction of the wire-netting into the molten glass, and a similar and almost identical method of unwinding the netting from a spool, and allowing it to fall immediately in front of the corrugated roller. The guiding and feeding device for delivering the wire is practically the same. The structural difference on which appellants appear to lay most stress is that between the ribbed roll of complainants’ patent and wbat appellants call the “axle of disks” of their machine.

The differences are, in brief, that defendants’ axle of disks is not a solid ribbed roll, in which the ribs are integral with the roll, but consists of rotating disks strung on a stationary axle; and, second, that these disks are thinner than the ribs shown in complainants’ drawings, and the spaces between said disks are wider than the spaces between the ribs as shown by complainants’ drawings.

But in point of fact both devices act with a rolling pressure upon the glass, and the wire-netting to be embedded therein, with the result of embedding the netting, and in doing so of forming longitudinal ribs and furrows in the glass. While this patent, too, is probably an infringement upon Armstrong’s, it manifestly contains the improvements which Shuman adopted for the more perfect working out of the Armstrong idea, and, we think, must be held an infringement.

It is manifest on the face of the patent that the specification was prepared by one perfectly familiar with the Shuman invention, and that there is a studied effort throughout the patent to differentiate the alleged invention thereof from his. 2. But little need be said regarding the process patent, the claims of which are, as stated above, for a process consisting — First, of rolling the glass into a sheet; second, mounting thereon the wire or wire-gauze by means of the corrugated roller; and, finally, rolling the glass, and thus closing the openings made by the wire.

Plaintiffs’ experts describe the process as consisting essentially in preparing a smooth, homogeneous plate of glass upon a suitable hard and level surface. Upon this sheet of glass, while still in a hot and plastic condition, is placed wire gauze or netting, or simply wire. This wire or wire-netting is then pressed down into the glass, while it is still hot and plastic, by some suitable means. Finally, the openings left by the wire as it goes down into the glass are closed up, and their sides are welded together, and the surface of the plate is smoothed over by some means adapted to the purpose.

This process may obviously be carried out by the mechanism described in the first patent, but other machines may he devised for the same purpose. As it involves not merely the function of a mechanical device, but certain elemental action, we think it the proper subject of a process patent. It is, in fact, a series of acts performed with molten glass and wire-gauze, by which they are transformed into a separate manufacture, within the definition of a process patent in Cochrane v. Deener, 94 U. S. 780, 24 L. Ed. 514.

Prior to the Armstrong patent, the only method, practiced for manufacturing wire-glass is disclosed in certain English patents, notably that granted to Lake in 1886, by which a layer of molten glass of half the 1 hickness which the finished plate is to have is spread upon a table. Upon this layer is placed a network of iron wires, or the like, previously polished, the thickness of which wires varies according to circumstances. This network is then covered with a fresh layer of glass, over which the roller is passed.

The finished product is thus formed of two distinct layers of molten glass with a network of wire between them. The difficulty seems to be tbat these two layers may weld or they may not, and in either case the glass which covers the wire-gauze on one side is not of the same original or continuous mass which covers it on the oilier. Other English patents to Newton, 1855, to Hyatt, 1871, and to Sievert, 1891, disclose certain modifications of this process; but all contain the underlying feature of two layers of molten glass with a sheet of wire-gauze sandwiched between them.

They obviously differ from the process described by Shuman, and do not seem to have been put in practice, or to have met with success. The Armstrong patent is the only one seriously insisted upon as an anticipation of the Shuman process. If this be an anticipation, it is sufficient to defeat the Shuman patent. If not an anticipation, the others are not.

It differs from the Shuman patent, as does the mechanical patent, chiefly in the fact of the omission of the first element of the two claims of the Shuman patent, namely, the preliminary preparation of the sheet of molten glass by the introduction of the third roller. In the Armstrong patent a mass of molten glass is dumped in a heap in front of the small roller, and, as the main roller is advanced, the small roller, having a mass of molten glass in front of it and beneath the taut wire-cloth, forces upward a bank of the glass against the wire-cloth and bulges the glass through the meshes of the cloth.

All that the Armstrong patent says of the action of this small roller is that it presses the wire-work against the incandescent glass, and partly enters it, the hot glass coming through the meshes to the upper side. As this small roller does not form a sheet of glass, it cannot, even if corrugated, determine the depth to which the wire-net will be embedded in the plate. It cannot force the wire-clotii to a definite depth measured from the table, because as it advances it is gradually lowered, and its own distance from the table is constantly varying.

In fact, it lacks the essential feature of the Shuman patent, of a preliminary roller smoothing out the molten glass so as to form a plate of uniform thickness in which the wire-netting is firmly embedded by the corrugated roller. It is difficult to see how, under the Armstrong process, the wire-netting can be thoroughly embedded in the molten glass to a depth beyond its own thickness. Certainly not to the extent to which it is forced in by the corrugated roller of the Shuman patent. That this patent is infringed by the defendants is not seriously questioned.

Indeed, the description in the Kyon patent is a practical description of the Shuman process: “As the sheet is formed, and passes under the first roller, the sheet of wire-netting which is attached to the spool, and which has previously been drawn to the table surface, is allowed to unwind from the spool, and. as the sheet of glass passes under the axle of disks, the disks force the wire-netting down into the soft glass about half way the thickness of the sheet.

As the sheet passes under these disks, there are small creases and ridges on its surface, and it now passes under the second roller, Bi, which smooths it, and presses out all of the ridges caused by the action of the disks in the glass.” Upon tke whole we are of opinion that both of these patents should be sustained, and the decree of the court below is therefore affirmed.