Citations
- 29 F. Supp. 349
Full opinion text
WAY, District Judge.
The above numbered suits have by consent been heard and considered together. The suits were instituted in July, 1931, but allowed by the parties to remain dormant on the docket until the Court on its own motion ordered that they be' tried or dismissed. Plaintiff charges defendant with the infringement of five patents of which plaintiff is the sole owner, having acquired the patents and all rights therein through valid assignments. The patents are:
(1) Lower patent No. 1,373,748, relating to locomotive stokers. This patent was granted April 5, 1921, to an assignee of Nathan M. Lower, the inventor, and may be referred to as the “Big End Conveyor Screw/1 patent.
(2) Hunt patent No. 1,690,116. Application for this was filed by Andrew M. Hunt, January 27, 1925. The patent was granted November 6, 1928, to an assignee of said Hunt, and may be described as the "Double Thread Conveyor Screw” patent.
(3) Hunt, No. 1,724,593. Application for this patent was filed by Andrew M. Hunt, January 27, 1925, the patent was granted to an assignee of Hunt on the 13th day of August, 1929, and will be referred to as the "Notch Conveyor Screw/1 patent.
(4) Lower, No. 1,455,058. Application for which was filed by said Nathan M. Lower on August 8, 1918. The patent was granted May 15, 1923, to an assignee of Lower. It relates to mechanism for the distribution of fuel coal in the locomotive fire box and for convenience will be referred to as the “One Piece Distributor” patent.
(5) Lower and Chalker, No. 1,642,076. Application for that patent was filed by Lower and Chalker March 13, 1922. The patent was granted September 13, 1927. All rights therein were subsequently acquired by plaintiff. This patent will be called the “Three Piece Distributor” patent.
To' summarize, Patents Lower No. 1,-373,748, and Hunt Nos. 1,690,116 and 1,-724,593, relate to the means of conveying coal from the locomotive tender or fuel bin to the fire box, and patents, Lower No. 1,455,058 and Lower and Chalker No. 1,642,076, relate to the means of distributing the coal in the fire box of the locomotive.
The three conveyor screw patents relating to the means of conveying coal from the tender to the fire box as granted, except claim 14 of Hunt No. 1,724,593, combine the horizontal conveyor screw with numerous other parts not covered by said patents. With reference to the distributor patents, in patent No. 1,455,058, claims 1, 4 and 7 are of a patent per se, while claims 2, 3, 5, 6, 8 and 9 are combination claims. In No. 1,642,076 No. 11 is a combination claim.
The coal is conveyed by each type of conveyor screw in suit horizontally and forwardly from the locomotive tender or fuel bin where it settles by gravity into such trough through a metal trough or conduit to a transfer hopper into which the coal is discharged by the horizontal conveyor screw. From this hopper the coal is raised by two elevator screws which as they extend upwardly from the transfer hopper, generally diverge in V-shape. (See picture below.) At its upper end the elevator screw drops the coal onto a plate in a tube from which point the coal is blown forwardly by steam jets, which jets, in conjunction with other distributing means, distribute the coal both forwardly and laterally in the fire box of the locomotive.
I. Lower Patent No. 1,373,748
The “Big End Conveyor Screw”
Only two claims are based on this patent, to-wit:
“1. In a, locomotive stoker, in combination, a fuel-transferring screw having its final turn of greater radius than the remainder of its turns, and fuel elevating screw means receiving from the transferring screw.
“2. In a locomotive stoker, in combination, a conduit for transferring fuel from the tender of the locomotive, a receiving chamber on the locomotive into which the conduit discharges, a screw conveyor in the conduit, the delivery end of the screw being of greater carrying capacity than the remaining portion thereof, and fuel elevating screw means leading from the receiving chamber.”
The single novel feature claimed and disclosed in each entire combination is the enlarged final flight in the horizontal conveyor screw. Picture below.
This enlarged final flight, it is claimed by plaintiff, causes greater pressure on the coal as it is forced into the hopper at the terminal end of the horizontal conveyor screw and thereby affords freer and more continuous movement of the coal as it is carried out of the hopper and upwardly by the elevator screws. These alleged advantages are thus described in Lower’s application for the patent:
“The screw (10) carries the fuel forwardly in the trough as a somewhat loose' mass. As the material reaches the more contracted portion of the trough where it joins the box 6, it is taken up by the larger turn (11) of the screw and forced into the box with increased pressure. This pressure assists the elevating screw by effectively reducing the frictional resistance of the fuel thereon and checking a tendency of the column of ascending material to merely rotate in the elevating conduit. This increased capacity of the last turn 11 of the transferring screw also prevents a retardation of the fuel at the delivery end of the conduit which, should it occur, would cause the material to pile up at the forward end of the trough and overflow its walls.” (p. 1, lines 82-99 incl.)
The stoker known as the Duplex, has been a commercial success. There are about 7,000 Duplex stokers still in use although the Duplex type stoker has been largely superseded since 1930 by the type B Stoker, the horizontal conveyor screw in which is cov-' ered by other patents already referred to. However, the commercial success which the Duplex stoker has achieved is only in a measure due to the improvement made in the horizontal conveyor screw.
Prior Art Patents: Against the “Big End Conveyor Screw” covered by patent No. 1,373,748, a number of prior patents are cited.
Gard No. 255,385, granted March 21, 1882, was considered while the application, for Lower No. 1,373,748 was pending. The Gard patent relates specifically to the brick making art. The Gard conveyor screw shows an enlarged final flight at its delivery end. Lower distinguished his conveyor screw from that of Gard on the ground that the Gard conveyor screw was devised and . constructed for use in a non-analogous art. Undoubtedly the two arts as practiced are very dissimilar. But the similarity between the final flights in the Gard and Lower screws is striking, and, in each case, at least one purpose of the enlarged final flight as expressed by the patentee in his application, is to exert greater pressure on the material conveyed as it is deposited in the receiving hopper or other receptacle.
That the enlarged final flight was the only novel feature claimed by Lower is illustrated by the following statement in his application:
“It is common practice for the fuel to be transferred from the tender to the locomotive by means of a screw conveyor working in a trough and conduit located below the tender floor and delivering to a chambered body carried by the locomotive, from which it is elevated by one or more similar screws. It is important to the efficient working of the elevating screws that the fuel be under pressure as it is taken up and carried forward by them, thereby reducing the frictional action upon it of the vane of the elevating screw. It is, nevertheless, desirable that there be a free movement of the fuel in the horizontal or transferring conduit.” (p. 1, lines 15-29)
There is very sound reason, I think, to regard a conveyor screw with an enlarged final flight, not narrowly as a screw to convey clay in one instance for brick-making, or coal for fuel purposes in another, but in a larger and more inclusive sense, as a material conveying screw whether it is employed to convey clay, coal, or other materials not used in either of said arts. Regarded "in the broader sense there can be little doubt that Lower’s conveyor screw, patent No. 1,373,748, was anticipated by the prior art as disclosed by Gard in patent No. 255,385 granted in 1882.
Deacon No. 116,165. Deacon’s device is for feeding furnaces with fuel and was patented June 20, 1871. It shows an enlarged final flight on the horizontal screw G in Fig. 2 of the patent. In the Deacon patent (Fig. 2) the coal is fed into a trough (F) where the conveyor screw (G) is, which in turn advances and at the same time crushes the coal. The coal is" fed forward onto a platform where it is brushed into the firebox by paddles b. With reference to the description of the Deacon screw, I quote from the patent p. 1, column 2:
“ * * * turn a deeply cut screw or worm, G, nearly equal in diameter at the fan box end to the internal diameter of the cylinder, but tapering uniformly to a smaller diameter ;it the hopper end, that portion of the screw directly beneath the hopper being merely a shaft with a very shallow thread.”
It will be noted that Deacon’s description, just quoted, refers to the locomotive tender as the “hopper”. The patent goes on to show the purposes of the screw as follows:
(1) “Enables constant motion of fuel from hopper ‘(tender)’ along cylinder and' rendering quantity of fuel carried on during a given number of revolutions constant for different qualities of fuel.”
(2) “To crush the coal.”
The plaintiff maintains that this device shows no appreciation whatever of Lower’s problem; that the enlarged flight was not created to put pressure against a body of coal being fed to an elevator screw, but to move fuel into rotating paddles which knock the coal into the fire box. But it is apparent, I think, that the purpose of Deacon’s (progressively) enlarged flights was to put pressure on the fuel as it approached and reached the paddles which distributed the coal in the fire box. The real distinction between the two devices is not in the type of flights in the conveyor screw but in the means used to distribute the fuel in the fire box after it has passed beyond the horizontal conveyor screw. Both the principle and utility of the enlarged final flight or flights were disclosed by the Deacon patent.
Martin No. 1,267,681. This is a patent of a mechanical stoker for furnaces such as used in locomotive boilers. The stoker was patented May 28, 1918. Looking at Fig. 1 of the patent it appears that the stoker consists of a horizontal conveyor screw (35) which empties the coal into a hopper (36) and then into a conduit (12). The vertical conveyor screw (13) takes the coal upwardly and into a casing (5) which houses revolving disks which in turn knock the coal into the firebox.
This patented stoker differs from the one involved in patent No. 1,373,748, in that the horizontal conveyor screw (35) does not have the enlarged final flight or flights. This difference, the plaintiff maintains, would cause congestion of the coal in the hopper (36) which it claims is entirely avoided by patent Lower 1,373,748. It is also claimed that the flights (35) of the horizontal screw would be filled and packed. Another distinction is the method of distributing the coal by disks when it has been delivered by the elevator screw.
The patent does not anticipate Lower No. 1,373,748. However, it does illustrate the fact that conveying fuel from a locomotive tender by means of a horizontal screw forwardly to a hopper and thence upwardly by means of a vertical screw or screws, to a device which distributes it in the fire box, is an old art. The same observation may be made with respect to Williams patent, No. 1,142,293, a brief description of which immediately follows.
Williams No. 1,142,293. This patent was for improvement in an automatic stoker. It was issued on June 8th, 1915. The main object of the patent apparently was to provide a guard to withstand the terrific heat of the fire box and to promote proper distribution. However, the invention consisted of a grate, fuel conveying means and a guard. An explanation of the operation of the stoker is very aptly stated in the testimony (P. 218) as follows (referring to Fig. 1 of the Williams patent) :
“This patent 1,142,293 shows a type of screw wherein the horizontal conveyor screw I is operating in the conduit G urging the coal forward by the camming action of the vanes of the screw, and delivering to a vertical conduit. Working in this vertical conduit is another ladder screw J which receives the coal from the horizontal conduit and forces it up to a level above the firebed where it is distributed over the firebed by the steam jet K.”
The plaintiff contends that there is nothing there that functions in the manner of chamber 6- of the Lower patent 1,373,748: that it offers no means to avoid the congestion and packing of coal which occurs between those two screws. Some of these devices are still in use, but they are no longer made. They are similar to the early type stokers made by plaintiff, manufacture of which was discontinued due to the fact it is claimed that congestion was too great and was causing engine trouble. It does not anticipate No. 1,373,-748.
Hunt Patent No. 1,690,116
The “Double Thread Conveyor Screw”.
As indicated in the preliminary statement, this patent relates to the conveyor screw in a mechanical stoker, particularly as used in locomotives. It contains five claims reading as follows:
“1. In a locomotive stoker, a forwardly extending conduit which terminates in an elbow, a conveyor screw in said conduit and an upwardly extending unobstructed conduit adapted to receive coal from said first named conduit and deliver the same to the fire box, the conveyor screw being formed at its delivering end with a plurality of threads delivering the material in a generally axial direction at their ends so as to cooperate with said elbow to give a substantially continuous upward pressure on the material and cause a continuous advance of coal through said upwardly extending conduit.
“2. In a locomotive stoker, a forwardly extending conduit which terminates in an elbow, a conveyor screw in said conduit and an upwardly extending unobstructed conduit adapted to receive coal from said first named conduit and deliver the same to the fire box, the conveyor screw being formed at its delivering end for approximately an axial distance of three-quarters of a turn of the screw thread with a plurality of threads delivering the material in a generally axial direction at their ends so as to cause a continuous advance of coal through said upwardly extending conduit.
“3. In a locomotive stoker, a forwardly extending conduit which terminates in an elbow, a conveyor screw in said conduit and an upwardly extending unobstructed conduit adapted to receive coal from said first named conduit and deliver the same to the fire box, said conveyor screw being formed with a greater number of threads at its delivery end than the other portions delivering the materials in a generally axial direction at their ends so as to cooperate with said elbow to give a substantially continuous upward pressure on the material and cause a continuous advance of coal through said upwardly extending conduit.
“4. In a locomotive stoker, a forwardly extending conduit which terminates in an elbow, a conveyor screw in said conduit and an upwardly extending unobstructed conduit adapted to receive coal from said first named conduit and deliver the same to the fire box, said conveyor screw being formed with a double thread at its delivering end and a single thread at other portions so as'to deliver the material in a generally axial direction at the end of the double threads and cooperate with said elbow to give substantially continuous upward pressure on the material and cause a continuous advance of coal through said upwardly extending conduit.
“5. In a locomotive stoker, a forwardly extending conduit which terminates in an elbow, a conveyor screw in said conduit and an upwardly extending unobstructed conduit adapted to receive coal from said first named conduit and deliver the same to the fire box, said screw being formed 'with a double thread at its delivering end for an axial distance of approximately three-quarters of a turn of the thread and with a single thread at other portions, said double thread acting to deliver material in a generally axial direction at said elbow.”
The sole new feature found or claimed in any of the five combinations set forth in the above quoted claims, is the extra or double thread shown in the attached illustration of the horizontal conveyor screw. See illustration on following page.
All of the other parts or members of a stoker embraced in each combination described in the different claims, namely, a forwardly extending conduit, an elbow, an upwardly extending conduit, and a fire box, are old in the art and no improvement or novel feature in any of those parts is disclosed or claimed. Each functions just as it did before this patent. This fact is well illustrated by the following language of Hunt in his application for the patent (p. 1, lines 5 to 26 inclusive) explaining the nature of the alleged invention:
“In .conveyors of this type and particularly those wherein the coal is moved beyond the end of the screw conveyor upwardly through an unobstructed conduit to a point above the fire and is there distributed over the fire by steam jets, if the conveyor screw at its forward end has only a single thread or flight, the delivery of the coal from the mouth of the conduit is intermittent rather than continuous. The coal moves upward during a portion of each revolution of the screw and remains stationary during the remainder of the revolution. Continuous delivery of coal to the fire box is desirable and the main object of the present invention is to provide means for effecting this result. For this purpose, I provide the conveyor screw at its forward or delivery end with a plurality of threads so positioned as to produce a continuous delivery of coal through the upwardly extending conduit.” (Emphasis supplied)
(and same page, lines 63 to 75 inclusive)
“ * * * While I have shown the screw conveyor as having a single thread with the additional thread 30 at its forward end only, it will be appreciated that the thread 30 may be continued through a greater portion of the screw. I find, however, that it is preferable to employ the additional thread at the forward end only and of a length of approximately % of a turn of the thread. It is also obvious that, if desired, an additional number of threads may be employed at the forward end. Care should be taken, however, not to reduce the area of the passage so as to interfere with the movement of the coal.”
Prior Art Patents Cited against No. 1,690,116
Numerous patents are cited by defendant in an effort to show that the double thread screw was a part of the art at the time the Hunt patent was granted. Some of these patents will be discussed briefly, although in the view that the court takes with respect to the validity of patents No. 1,373,748, 1,690,116 and claims 1 to 13, both inclusive, of Hunt patent No. 1,724,593, such discussion appears unnecessary for the purposes of this decision.
Wiesbrock, No. 439,738. This patent was issued November 4th, 1890. It does not, I think, disclose the improvement to a conveyor screw that is disclosed by Hunt in patent 1,690,116. It does not show a double flight at the delivery end as does the Hunt patent in suit. It does, however, as do a number of the other patents cited, tend to emphasize the age of the art and the means, of conveying coal from a hopper or locomotive tender to a furnace by means of screw conveyors, conduits, hopper and distributors, that is to say, that all of the members of a stoker were embodied in the art before the three conveyor patents in suit were ever granted.
Neville, No. 804,160. This patent was granted November 7, 1905, and was cited by the Patent Office against Hunt. In an amendment Hunt stated that the problem was “to discover the cause of discontinuity and movement of the continuous column of coal and to overcome it.” Plaintiff says that Neville merely shows a device for “feeding pulverized coal to a furnace in which a conveyor screw 18 is provided at its forward portion 19 with a quadruple thread”, and that the “powdered coal drips downwardly through a pipe 6 which blows the coal to the right and into the furnace by compressed air.” In explaining his device Neville, in his application said:
“It is desirable that the fuel be fed to the delivery pipe 16 as uniformly as possible and in order to' break up the quantities of fuel that will be fed rearwardly by the various turns of the forward end of the feeding screw I provide the rear end of the latter with a, quadruple set of feed plates, as shown at 19. By this means the fuel is delivered to the pipe 16 with greater regularity than it would be delivered if the double screw were continued throughout its entire length.” (p. 1, lines 87 to 97 inclusive).
Both the Hunt patent in suit and the Neville patent (No.- 804,160) disclose a plurality of threads at the delivery end of the conveyor screw, for the avowed purpose, as stated by each applicant, of securing uniform or continuous delivery, to the succeeding receiving member. The fact that final delivery to the fire box in plaintiff’s stoker is' made by elevating screws and steam jets and in the Neville stoker by means of a pipe hardly seems sufficient to distinguish on controlling grounds the two alleged improvements to the horizontal conveyor screw. In each case the improvement was to the horizontal conveyor screw by making it with a plural-, ity of threads. The type or character of the member which receives coal from the conveyor screw does not appear controlling. The sole novelty or improvement disclosed is a plurality of threads. The two conveyor screws perform the same' function, in the same way, with substantially the same results. It would seem therefore that any alleged superiority of the Hunt conveyor screw over the conveyor screw disclosed in the Neville patent may be attributed to mechanical skill in constructing the screw rather than to difference either in mechanical principle or novelty. Once the idea of employing a plurality of threads for the purpose of securing a more continuous stream of coal was disclosed it became a matter of mechanical judgment whether one or more than one extra thread at the terminal end was more desirable, and as to what was the more desirable type of member to receive delivery from the horizontal conveyor screw.
Wegener, No. 725,901. This patent does not disclose double or any plurality of threads at the terminal or delivery end of the horizontal conveyor screw.
Lower, No. 1,377,259. This patent does not disclose any plurality of threads on the conveyor screw and is as contended by plaintiff distinguishable from Hunt No. 1,690,116.
Fahnestock, No. 1,436,870. This patent on conveying apparatus for mechanical stokers was granted on November 28, 1922, the patent discloses a conveyor screw having double but tapering threads at its terminal or delivery end. (See drawing Fig. 1 on following page for illustration).
With regard to his device Fahnestock in his application said:
“The object of my present invention is to provide a conveying apparatus by which a more effective delivery of fuel from the screw conveyor to the elevator may be ensured, and to reduce the amount of work imposed upon the screw conveyor in practical service.” (p. 1, lines 24-30)
At the trial, an expert called by plaintiff testified with respect to the double flight feature of plaintiff’s conveyor screw as follows-(Turner, Trans, p. 67):
“The provision of the double flight at the forward end of the screw cooperates with the single flight or thread to impart a continuous steady pressure to the column of coal in the elbow and the conduit so that instead of the coal rising intermittently it was advanced continuously without any noticeable pulsations. This continuous pressure on the coal is bound to overcome packing or congestion of coal in the elbow and the vertical conduit and make it possible. for this type stoker to feed any character or nature of coal.”
It will thus be seen, I think, that both patentees, in adding the extra thread, had the same object in view, namely, uniform delivery, although Fahnestock’s screw tapered towards the delivery end while Hunt’s remained of uniform diameter.
III. Hunt Patent No. 1,724,593
The “Notch Conveyor Screw” Patent.
This patent contains fourteen claims. Numbers 1 to 13, both inclusive, combine the horizontal conveyor screw with other members of a locomotive stoker. Number 14 is confined to the horizontal conveyor screw and is not in combination with any other of the numerous members or elements of a complete stoker. I think that claims Nos. 1 and 8 fairly illustrate the true character of the first 13 claims. They read as follows:
“1. In a stoker, a coal bin having an opening in its bottom, and a conveyor screw adapted to receive coal through said opening, the conveyor screw being formed, adjacent said opening, with projections extending along the screw thread, successive projections being axially spaced from one another a distance equal to a multiple of at least twice the pitch of^aid screw.”
“8. In a stoker, the combination of a fuel receptacle or trough, a conveyor screw disposed in said receptacle and extending longitudinally thereof, said 'screw being rotatable to advance the fuel along the receptacle, the normal thread of the screw being formed at regular intervals with outwardly projecting segments conforming to the thread and providing extensions thereof for engaging with and 'feeding fuel lying outside the normal thread, the regular spaces between the projecting segments exceeding in length .the pitch of the normal thread of the screw so that larger lumps of fuel may be received between and fed by said projecting segments than can be received and fed by adjacent normal threads of the screw.”
Claim 14 which is a claim of a patent per se on the conveyor screw alone, reads:
“14. A conveyor screw adapted to be rotatably disposed in a fuel receptacle for advancing fuel therein, comprising a screw having a normal thread formed at regular intervals with outwardly projecting segments conforming to the thread and providing segmental fuel feeding flanges whose outer faces are in curves concentric with the outer face of the normal screw thread, said flanges being connected with the normal thread by substantially radial faces whereby sharp corners are formed.”
In his application Hunt said:
“In stokers of the type where coal drops by gravity from a coal bin into a screw conveyer where it is engaged by the conveyer screw and moved forward, the conveyer screw may not operate effectively on a lump of coal that has a linear dimension greater than the pitch of the screw, because the screw can not get hold of it to move it. The main object of my invention is to improve the construction of the conveyer screw at the points where it receives coal from the bin so that it will effectively engage unusually large, as well as smaller, lumps of coal and move the same.” (Emphasis supplied by the Court), (p. 1, lines 6-19 inclusive).
The sole improvement or alleged novelty disclosed in the entire patent consists of a number of notches," or, as counsel for plaintiff designates them in the brief, “projections”, “provided with sharp radial edges 31 adapted to engage and crush large pieces coal.” In plaintiff’s brief it is said:
“We contend that the novelty of patent 1,724,593 resides in the conveyer screw 16 constructed with the projections 30 and 32 forming the supplementary screw flight over the normal flight; and in the combination of such screw with the trough.”
In claims 1 to 7, both inclusive, it is attempted to combine with the “Notch Conveyor Screw” a “coal bin having an opening in its bottom”, while in claims 8 to 13, both inclusive, the “Notch Conveyor Screw” is in combination with "a fuel receptacle or trough”.
Without setting forth a prolonged review of the evidence, the Court finds that the only material change or alleged novelty disclosed to a stoker or any member thereof mentioned in the claims consists of the notches in the horizontal conveyor screw. The other members of a stoker mentioned in the claims (the bin or tender and the trough or horizontal conduit) already old in the art, remain without any material change whatever. The evidence shows unmistakably that if those «¿«improved members function better than they did before the construction of the “Notch Screw”, such improvement is due solely to a better screw and in no way to a better bin or trough.
Coming to claim 14 which as already said, is a claim to a patent per se on the conveyor screw alone. I think the evidence discloses patentable novelty in the “Notch Conveyor Screw” if that feature was not already anticipated when the Hunt application was filed. The testimony supports the contention of plaintiff that a screw of this type in the usual trough or conduit, more effectively engages and conveys the larger lumps of coal. The further fact that defendant in manufacturing stoker parts for the railroads has seen fit to place the segments (30 and 32 in figure 1 of the patent) on its screw thus simulating plaintiff’s “Notch Conveyor Screw” and that the railroads purchase them from defendant strengthens this view. It further appears from the testimony that the “Notch Conveyor Screw” is used in the type B stoker manufactured by plaintiff and that about 4,000 of that type of stoker, are now in service.
Prior Art — Godillot Patent No. 362,953. This is the only patent cited against the “Notch Conveyor Screw” of Hunt. This patent was obtained by Godillot, May 31, 1887. In his application, Godillot said:
“My invention relates to that class of mechanical feeders or ‘automatic stokers’ wherein a screw or helix continuously revolving in a parti-cylindrical casing under a hopper, serves to feed the fuel into the furnace.
“In this class of feeders the screw or helix has heretofore been constructed uniform throughout its length that is to say, the spaces between the turns of the screw thread have been of uniform capacity from one end of the screw to the other. I find that in the operation of such feeders, especially when the fuel fed is spent tanbark, chips, or similar refuse, the fuel packs in the channel or trough between the threads of the rotating screw, which is caused in the main by the pressure of the superincumbent mass in the hopper; but the fact that the feed is almost entirely at the outer end of the screw also aids greatly in packing the mass densely in the spiral trough, thus causing an enormous amount of friction between the moving fuel and the stationary mass above and the said fuel and the thread or spiral blade of the screw itself.” (Emphasis supplied) (p. 1, lines 15-38 inch)
The Godillot conveyor screw was intended primarily according to the patentee, to overcome obstructions in feeding a fuel known as “Bagasse” containing fibre or thread like filaments. As pointed out by plaintiff the Godillot patent does not show a conveyor screw having a complete normal thread but shows that portions of the normal thread are entirely cut away. The Godillot screw also has a changing (decreasing) pitch or diameter towards the terminal end to overcome choking and there is no specification of a supplementing thread built on the normal thread. Other material differences are apparent, including the fact that the Godillot device was designed especially to feed fuel radically different from coal. I am of opinion and so find that the Godillot patent does not anticipate the Hunt invention described in claim 14 of the patent 1,724,593.
IV. Lower Patent No. 1,455,058
The “One Piece Distributor”.
As the coal is dropped or deposited by the upright conveyor screw on the plate or bottom of the tube, steam jets strike the coal driving it along the plate into the fire box. The steam jets without further mechanical aid are not sufficient to insure an even distribution of the coal throughout the fire box, because the jets blow the coal through the tube forwardly only.
The Lower device in patent 1,455,058 was designed to overcome this and to secure a more even distribution throughout the fire box. Further description of the device is quoted from the application (p. 1, lines 71-78, inclusive) as follows:
“The body of the tube 12 terminates near the inner surface of the back (rear) wall (of the fire box) 10, and is provided with upper and lower forwardly projecting plates 18, 19. The (lower) plate 19 is preferably provided with an upstanding transverse lip 20, and immediately back of this lip with laterally opening recesses 21, 22.” (Words in parenthesis added by way of explanation, emphasis supplied.)
The sole novelty claimed for this device and disclosed by the patent resides in the abutment construction on the bottom distributor plate which is illustrated in the enlargement of “Fig. 2” of Lower’s drawing in a copy of defendant’s Exhibit E.
DEFENDANT’S EXHIBIT E
In this illustration 20 represents but does not very clearly show, the “upstanding lip” and 21 and 22 the “laterally opening recesses” immediately back of said “lip”, that is, to say, as constructed and placed, the “recesses” in the plate are nearer to the steam jets than is the “lip”.
The patent contains 9 claims. Claim 1, 4 and 7, may be fairly construed to embrace the bottom plate including the abutment construction as one part or member only. They read as follows:
“1. In a mechanical stoker, in combination, a plate over which fuel may be impelled and having a laterally opening channel near its forward end and an abutment crossing its forward end for stopping the advance of a portion of the fuel and causing it to fall into the channel.”
“4. A fuel delivering device for stokers comprising a plate over the surface of which fuel may be impelled, and an abutment crossing the path of such stratum of fuel and being located beyond the end of the plate.”
“7. In a mechanical stoker, in combination, a plate over which fuel may be impelled, and having a laterally opening channel adjacent its delivery end and an abutment at the forward margin of the channel, such abutment being approximately normal to the path of the impelled fuel and projecting above the level of the plate.” (Emphasis supplied).
As granted, the Court is of opinion that claims 1, 4 and 7 of said patent 1,455,058 are valid and so finds.
In claims 2, 3, 5, 6, 8 and 9 the abutment construction is claimed, in combination, not .only with the bottom plate, but variously with one or more of the following : “means for delivering a fuel impelling blast over the surface of the plate”, “means for delivering an impelling blast through the tube”, “a locomotive having a fire box”, “a fluid discharging nipple”, “means for discharging an impelling blast of fluid under pressure through the tube”, “a substantially horizontal tube”, “a blast nozzle discharging through the tube”, and “a nipple for discharging fluid under pressure over the surface of the plate.”
The single novelty of Lower patent No. 1,455,058 is aptly described in the brief of counsel for plaintiff as follows: (Pp. 25-26):
“Novelty. We contend that the novelty of patent 1,455,058 resides in the abutment construction of the distributor whereby a large proportion of the coal striking the abutment bounces generally backward and drops downward.
“1. Novel Results are Obtained from the Abutment Construction.
“The abutment at the front end of the distributor serves to distribute the coal more uniformly over the fire grate, for not only is fuel freely blown over the middle and forward part of the grate, but a proper proportion is reserved for the rear and rear corners of the grate by the operation of the abutment. (Patent 1,455,058, page 1, lines 99-109, page 2 lines 10-12; Turner, R. 286, lines 12-17)”.
Citing as authority' for the statement the Lower patent page 1, lines 99-109, p. 2 lines 10-12 and the testimony of plaintiff’s expert witness Mr. Turner, as follows:
“* * * jn Lower, the coal falls on to a-blast which directs the coal or a portion of the coal against an abutment wall which actually stops or arrests the movement of a certain portion of the coal causing that to fall into the channels and drop to the back corners.”
The patent does not disclose any novelty in or improvement to any of the numerous other parts or members set forth in claims 2, 3, 5, 6, 8, and 9, in combination with the abutment construction on the bottom plate. All those other parts or members, certainly so far as this controversy is concerned, are old in the art and remain unimproved and function as they did theretofore.
Against the device of Lower in suit, defendant has cited numerous prior patents in an attempt to show anticipation. Defendant further contends that even if the Lower patent is held valid, it has not been infringed by defendant, and in support of the latter contention, charges that plaintiff is not practicing the art as set forth in Lower’s said patent but instead, manufactures and sells commercially a plate which differs very materially from the device disclosed by Lower in No. 1,455,058.
As the more important patents cited by defendant to show anticipation, were reviewed and considered by the Patent Office in passing on Lower’s application for patent 1,455,058, it is desirable to review some of the proceedings in the Patent Office.
The original lower application was filed August 8, 1918,- but the patent was not granted until May 15, 1923. In the interim there were numerous rejections by the Patent Office and amendments submitted by Lower. While the application was pending the principal prior art patents here pleaded were considered by the Patent Office and the Primary Examiner held that the device shown by Lower’s final amended application was anticipated by the prior art.
From the adverse decision of the Primary Examiner, Lower appealed to the Board of Examiners in Chief. In the brief filed on behalf of Lower in support of his appeal (File Wrapper p. 53) it was said:
“The structure upon which the appealed claim is based is shown in Figs. 1 and 2 of the drawings, the vital part being the upstanding abutment 20 which projects a short distance above the bottom of the distributor tube 12, — this bottom -being shown in plan in Fig. 2. (An enlargement of Fig. 2 is shown in the copy of Exhibit E on page 31 of this opinion [29 F.Supp. 362])
“The action of the claimed device is stated in the amendment to line 21 et seq, page 3 of the specification, entered July 28th, 1920, and reading:
“ ‘When the lip 20 is present it constitutes an abutment as distinguished from a deflector directly crossing the path of the lower stratum of fuel as it advances over the feed plate or bottom of the tube 12. Particles of fuel striking this abutment are stopped and drop into the channels 21, 22, from which they roll laterally upon the grate.’ ”
The Board of Examiners in Chief reversed the Primary Examiner’s adverse decision (File Wrapper p. 58-59) saying:
“This is an appeal from the action of the primary examiner finally rejecting the following claim:
“A fuel delivering device for stokers comprising a plate over the surface of which fuel may be impelled, and an abutment crossing the path of such stratum of fuel and being located beyond the end of the plate.
“The references relied upon are:
Gee, 1,103,406, July 14, 1914,
Rait, 1,149,685, Aug. 10, 1915,
Lower, 1,207,422, Dec. 5, 1916.
“None of the references appears to disclose an abutment crossing the path of the stratum of fuel beyond the end of the plate whereby that portion of the fuel stream which engages the abutment is for the most part arrested and allowed to drop by gravity through the lateral recesses 21, 22 to a region of the grate lying adjacent the fuel intake. Of the art cited, the partitions 10, 10c, Fig. 11 of Lower approximate most nearly appellant’s abutment but the transverse portion of these partitions do not lie across the path of the fuel but rather act as lateral guides to the side streams of fuel which have been turned into a course at right angles to the original flow by the curved portions óf the partitions. It follows that the fuel in these side channels is not arrested and permitted to drop oy gravity on the portion of the grate lying beneath the fuel intake but by reason of its momentum is carried a substantial distance from the intake. By appellant’s arrangement he obtains a more equal distribution of the fuel on the grate.”
In other words, if I construe the Board’s decision correctly, it held that the Lower patent in suit as finally amended and submitted, disclosed abutments not deflectors, in the language of the Board, “crossing the path of the stratum of fuel beyond the end of the plate whereby that portion of the fuel stream which engages the abutment is for the most part arrested and allowed to drop by gravity through the lateral means 21, 22 to a region of the grate lying adjacent to the fuel intake.”
That Lower actively urged and intended for the Board so to interpret his amended claims is clearly apparent from the brief he filed in support thereof in which it was said:
“The writer begs to say that he does not get the Examiner’s point of view in refusing to recognize a distinction between an abutment and a deflector.” (File History p. 23)
“The word ‘abutment’ seems to have a well defined meaning, and the explanation in the amendment to the specification, that it was to be distinguished-from a deflector, ought not to be necessary, but may as well stand.
“According to the Century Dictionary an abutment, when employed in connection with gases, liquids, or other material to which motion has been imparted, signifies that a wall or like structure is interposed across the path of such moving material and stops its motion. A deflector, according to the same authority, changes the direction of the material which impinges against it, leaving it, however, free to continue its movement under the momentum which it has acquired.
“In this instance there is a wall directly crossing the path of the lower stratum of fuel which is impelled through the tube by the steam blast. Coal striking this wall is completely arrested and drops not by reason of the momentum imparted to it by the blast but under the influence of gravity. It is recognized that the inner end of this wall is given a curved form and so acts upon the fuel which strikes it as a deflector, but this curvature merges into a part of the wall which is normal to the path of the fuel.” (File history p. 27, 28)
“The fact that adjacent the median line of the tube the upstanding wall is curved so as to act as a deflector, does not deprive the remainder of the wall of its function as an abutment, and an applicant is entitled to claims for an abutment, even .though there may also be present a deflector.” (File History, p. 30)
“The Examiner is requested to waive final rejection in order to permit the reforming of claim 7. The applicant cannot accept the interpretation of the references given them by the Examiner, which involves the words, ‘abutment’ and ‘deflector’ as being synonymous. Applicant has used the word ‘abutment’ in accordance with its dictionary definition and means to imply that he has' a wall which positively arrests the advancing fuel and permits it to drop under the action of gravity.” (File history p. 39). (Emphasis supplied.)
“In the claimed construction the fuel is thrown against a wall extending directly across the line of travel, and is consequently stopped not merely given a different direction of movement. When so stopped it would remain stationary but for the action of gravity.” (File history p. 55).
Defendant contends, in substance, that the distributor actually manufactured and sold commerically by plaintiff, departs radically from that specified and illustrated in the patent as finally granted, and that it is not confined within the restrictions and narrow limitations placed upon the patent in the amendments finally submitted by Lower and approved by the Patent Office at his instance and that defendant has the right to manufacture and sell its type of distributor plate so long as its plate embodies the deflector type of transverse obstruction as distinguished from the abfltment construction called for in Lower No. 1,455,058. With respect to that contention, defendant’s expert testified as follows:
“A. Because those channels (referring to a specimen of plaintiff’s plate) are more in the shape of deflectors than they are abutments. They are curved outwardly more than they do laterally. Whereas the abutment shown on the patent drawing are substantially perpendicular to the axis of the fuel.
“Q. You mean the abutments would extend across the path of the fuel so as to stop the fuel?
“A. That is right.
“Q. And what would be the effect of particles of coal being blown against the guiding faces of this plate before us?
“A. They would be deflected forward, naturally, the distance according to the jet that propelled the fuel.
“Q. How do the guiding faces of this burnt distributor plate compare with the guiding faces of the distributor plates that were manufactured by the Berkley Company?
“A. They are substantially the same.” (R. 217)
This witness was then exhibiting to the Court a burnt distributor plate manufactured by plaintiff, taken from a railroad scrap yard.
See copy of defendant’s Exhibit E above to which is attached a photograph of the burnt distributor plate, exhibited by the witness.
The red pencil lines in each instance were added by the Court to represent extensions of the inner surface of the walls of the tube to the transverse obstruction, whatever we may finally decide to call that part, which is interposed in the path of the blown coal. Plaintiff calls this transverse obstruction “abutments” and defendant calls it “deflectors”.
The differences between the shapes of Lower’s device in suit as shown in Lower’s amended application, see his illustration Fig. 2 in patent; defendant’s plate in suit; the plate actually manufactured by plaintiff; and the prior art, Lower’s earlier patent No. 1,207,422 and Hanna’s patent No. 979,849, are all clearly and accurately shown in defendant’s Exhibit E, a copy of which is above attached.
These illustrations in the exhibit stíow without serious doubt, I think, that plaintiff in manufacturing and selling its plates, has departed very materially from the limitations and restrictions which Lower finally submitted and accepted in order to obtain patent 1,455,058. In other words, Lower voluntarily confined his device to an abutment construction only, in order to avoid the prior art as disclosed in his older patent No. 1,207,422 and other patents. But in the device which plaintiff actually manufactures, the deflector idea clearly predominates, it seems to me, over the abutment idea, so that plaintiff’s commercial plate in both mechanical principle and alleged "novelty, adopts the prior art rather than the device described and disclosed by the later Lower patent now in suit, particularly as that device, at the instance of Lower, was interpreted by the Patent Office.
The Court therefore finds that the distributor manufactured by defendant does not infringe patent No. 1,455,058. ■ •
Having thus narrowed his claims in the Patent Office and restricted them to a specified type of obstruction in the bottom distributor plate in order to secure the patent neither Lower nor his assignee ought now to give the claims broad interpretations so as in effect to embody the type of construction which the narrower claims were intended to avoid. Doughnut Mach. Corp. v. Joe Lowe Corp. et al., 4 Cir., 67 F.2d 135, at page 138, as follows:
“If complainant’s contention that it is entitled to protection on account of the novelty of the cutting device is sustained, the effect will be to construe the patent as if it contained the claims which were rejected and withdrawn. This may not be done. Royer v. Coupe, 146 U.S. 524, 532, 13 S.Ct. 166, 36 L.Ed. 1073. As said by Mr. Justice Day in Computing Scale Co. v. Automatic Scale Co., 204 U.S. 609, 617, 27 S.Ct. 307, 310, 51 L.Ed. 645: ‘It is perfectly well, settled in this court by frequent decisions that where an inventor, seeking a broad claim which is rejected, in which rejection he acquiesces; substitutes therefor a narrower claim, he cannot be heard to insist that the construction of the claim allowed shall cover that which has been previously rejected.’ See, also, Smith v. Magic City Club, 282 U.S. 784, 789, 51 S.Ct. 291, 75 L.Ed. 707; Morgan Envelope Co. v. Albany Paper Co., 152 U. S. 425, 429, 14 S.Ct. 627, 38 L.Ed. 500; Corbin Cabinet Lock Co. v. Eagle Lock Co., 150 U.S. 38, 40, 14 S.Ct. 28, 37 L.Ed. 989; Shepard v. Carrigan, 116 U.S. 593, 597, 6 S.Ct. 493, 29 L.Ed. 723.”
Weber Electric Co. v. E. H. Freeman Electric Co., 256 U.S. 668 at page 677, 41 S.Ct. 600, at page 603, 65 L.Ed. 1162:
"Thus the patentee, in order to avoid infringing Kenney’s construction, voluntarily restricted himself to a ‘specific structure operative when the sleeve was ‘simply’ inserted in the cap, without suggesting any rotary movement whatever, but, on the contrary, by his reference to Kenney as locking and unlocking by ‘simply rotating one member upon another’, clearly implying that no such rotary movement was necessary in the adjustment of his socket. Having thus narrowed his claim against rotary movement in order to obtain a patent the patentee may not by construction, or by resort to the doctrine of equivalents, give to the claim the larger scope which it might have had without the amendments, which amount to a disclaimer of rotation as an operative feature of his device. Shepard v. Carrigan, 116 U.S. 593, 598, 6 S.Ct. 493, 29 L.Ed. 723; Hubbell v. U. S., 179 U.S. 77, 80, 21 S.Ct. 24, 45 L.Ed. 95.”
Also Black & Decker Co. et al. v. Baltimore Truck Service Corp. et al., D.C., 26 F.2d 686; Crozier-Straub Inc. v. Maryland Concrete Corporation, D.C., 39 F.2d 126, 130; Automatic Switch Co. v. Monitor Mfg. Co., C.C., 180 F. 983, 959; Handel Co. v. Jefferson Glass Co., D.C., 265 F. 286, at page 292, affirmed, 4 Cir., 277 F. 1015
V. Lower and Chalker No. 1,642,076
The “Three Piece Distributor”.
With reference to the device embodied in this patent the patentees in their application said:
“One of the objects of this invention is to provide a construction in which the parts of the distributor which are in danger of being burned off are removable, thus reducing the cost of replacement. A further object of the invention is to provide means for cooling the exposed parts, and thus lengthening their term of service, and a still further object is to provide an improved form of baffle or abutment for arresting a portion of the impelled fuel and delivering it to the back end -of the fire box. (p. *1, lines 17-28 inclusive).
“A stem 23 projects forwardly from the body of the plate 19 of which it constitutes an integral part and at the forward end of this stem there is carried a cross bar 24, the length of which is substantially equal to the width of the plate 19. The inner face of this bar is preferably flat and projects somewhat above the plane of the upper surface of the plate 19 forming an abutment for arresting the lower stratum of coal impelled through the tube.
“The stem 23 and abutment 24 are cored to form a continuous passage there through, as indicated at 25, 26, the passage 26 extending longitudinally through the abutment and being open at the ends thereof. (p. 1, lines 94-109 inch)
“* * * The lower stratum of the fuel follows the bottom of the tube and encountering the upstanding abutment 24 is arrested and dropped upon the rearward end of the grate. Lumps of coal in the lower stratum which strike the abutment 24 below their centers of gravity bound over the abutment and fall upon the grate a little in front of it.” (p. 2, lines 66-74 inclusive) .
This patent is directed to a distributor made in three parts, and is a distributor tube provided with an open bottom adapted to receive a removable bottom plate, with the top of the tube adapted to receive a removable top plate. The tube, as in the device Lower No. 1,455,058, already discussed, is connected to the top of an eleva.tor conduit, from which the tube projects forwardly to the firebox. See illustrations.
The present device is manifestly the same type of fuel distributor disclosed in Lower No. 1,455,058, the only mechanical difference being that this device is made in three parts instead of one. There are no functional or operative differences between the two, but they are alike in all essentials and function alike in all material respects although apparently there has been some attempt to vary shape and finish. The bottom plate in this device and the device disclosed in No. 1,455,058 are identical. The plaintiff stresses the fact that in this device there is novelty and facility in the means for detachably connecting the tube (proper) with the top and bottom plates. That the means for connecting and disconnecting the three parts, namely, lugs, sockets and holes, are old and well known mechanical expedients is too clear, I think, for serious difference of opinion.-
SHEET IV
As already said, the sole novelty disclosed in this type of distributor is in the abutment construction which is expressly described and embodied in claims 1 to 7 and 10 and 11 of the present patent. Claims 8 and 9 include “a removable deflector”, and 12 “a fuel deflector member on the upper side of a distributor tube” but so far as I am able to perceive each of those claims fails to disclose any real novelty that was not anticipated by prior patents referred to by the Patent office when No. 1,455,058 was under consideration. Claim 12 includes a “fuel deflector member for use on the upper side of a distributor tube”, but novelty is not apparent 'as the top plate in this device and that in No. 1,455,058* are alike in all essentials— Claim 13 includes “a fuel deflecting abutment.” If it is intended by this claim to-embody true abutments it is anticipated by No. 1,455,058; if true deflectors are intended then ,by the prior art patents already referred to.
Merely dividing the distributor and tube into' three members and employing lugs, holes, and sockets to detachably join them into one member, which if constructed according to the patent, still performs the same function in the same manner and with the same results as in No. 1,455,058 when that distributor is constructed according to that patent, is not invention. Bernz v. Schaefer et al., D.C., 205 F. 49, affirmed, 3 Cir., 211 F. 973; Laclede Christy Clay Products Co. v. City of St. Louis, 8 Cir., 280 F. 83, and Howard v. Detroit Stove Works, 150 U.S. 164, at page 170, 14 S.Ct. 68, at page 70, 37 L.Ed. 1039, where it is said:
“* * * As to the' second patent, it is void because the bolting or riveting together- of sections of a stove was well known at the time of the invention, and the use of lugs with holes perforated through them was anticipated in other stoves and furnaces manufactured many years prior to the date of the patent. As to the third patent, it is void because the claims in it were clearly anticipated, and because it involves no invention to cast in one piece an article which has formerly been cast in two pieces, and put together; nor to make the shape of the grate correspond with that of the fire pot.”
The plaintiff’s practice of departing from the device described and disclosed in patent No. 1,455,058 with particular respect to the transverse obstruction in the bottom distributor plate has already been discussed. The evidence 'shows clearly that the same practice has been followed by plaintiff in constructing the “Three Piece Distributor”, that is to say, while 9 of the 13 claims (1 to 7 and 10 and 11), in varying language, call for a transverse abutment in the plate "for arresting the lower stratum of coal impelled through the tube”, in actual practice, plaintiff constructs the plate with deflectors which serve to alter the course of the lower stratum of coal rather than to arrest it, which device as actually constructed and sold by plaintiff, was anticipated by prior art patents Lower No. 1,207,422 -and Hanna No. 979,849.
The Court finds therefore (1) that the only novelty disclosed by Lower and Chalker No. 1,642,076 was anticipated by Lower No. 1,455,058 reviewed above; (2) that the device actually manufactured and sold by plaintiff commercially, with respect to the transverse obstruction departs from the patent materially, and as actually constructed is anticipated by prior art patents which have been discussed herein, and (3) that defendant has not infringed patent No. 1,642,076.
Other Prior Art Patents Cited Against Lower and Chalker No. 1,642,076.
Street No. 1,195,531. This patent was obtained August 22, 1916, and relates to fuel distributors. The objects are to provide an improved detachable distributor end and to provide an improved form of connection having interlocking projections, between the parts whereby the flaring distributor end may be retained in its position by gravity and inclined at any desired angle, and be readily detached and renewed when necessary. A very good description of the Street patent was given in the testimony by a witness for defendant:
“This patent, discloses a distributor tube reference 19, which is equipped with a separable distributor plate which is held in place by a lug, 32, going through a hole in the top of the tube and resting by gravity on shoulders, 34. It is in the form of a cantilever and is held in place by gravity on the interlocking devices.”
These various parts are connected by one or more notches or openings (32) and corresponding hook-shaped projections (37) formed on the distributor end.
Whitmore No. 1,288,334. This patent has reference to grain spouts. The object was to provide a certain desired manner of securing removable or renewable bottoms of a section in a position where it will be firmly and permanently held until necessary to remove it. Another object was to have a removable spout section.
The defendant cites this as prior art as it reveals the removable bottom with interlocking devices for holding it in position and urges that the Whitmore device could be made of heavier material so as to handle coal instead of grain. The plaintiff claims that Whitmore does not reveal the present patent in that his was a grain spout which is very remote to any use as a distributor of coal. However, as said above, the interlocking lug arrangement in the “Three Piece Distributor” does not disclose any patentable novelty that was not anticipated. It appears from the disclosures made in the Street and other patents that any first class mechanic could easily have made simple well known mechanical alterations to meet the requirements of detachably connecting the three parts. See Howard v. Detroit Stove Works, 150 U.S. 164, at page 170, 14 S.Ct. 68, 37 L.Ed. 1039, quoted above.
Of the Plaintiff’s Combination Claims.
From the foregoing findings of fact, it will be seen that each of the claims in patents Lower No. 1,373,748, and Hunt No. 1,690,116; claims 1 to 13 both inclusive, of Hunt No. 1,724,593; claims 2, 3, 5, 6, 8 and 9 of Lower 1,455,058, and claim 11 of Lower and Chalker No. 1,642,076, combined with the particular part or member of a stoker that was improved, one or more old parts or members that remained unchanged and unimproved; that is to say, in each of those claims, only one member of the combination was improved by the patented device. In three instances the patentee simply made a better horizontal conveyor screw, and a better bottom distributor plate in the two other instances. To state the matter another way, 'the conduits, horizontal and elevating; the elevatmg screws, the locomotive, the coal te