American Casting Mach. Co. v. Pittsburgh Coal Washer Co.

237 F. 590, 150 C.C.A. 472, 1916 U.S. App. LEXIS 1984

• Court: Court of Appeals for the Third Circuit
• Decided: November 13, 1916
• Docket: No. 2119
• Status: Published

Opinion

BUFFINGTON, Circuit Judge.

In the court below the American •Casting Machine Company, the owner of patent No. 788,334, granted April 25, 1903, to James Scott for “apparatus for casting metal,” and of patent No. 806,700, granted December 5, 1905, to J. B. McKennan and A. H. Helander for “links for conveyors,” filed a bill against the Pittsburgh Coal Washer Company, charging infringement of certain claims of said patents. On'final hearing that court dismissed the bill, holding both patents lacked invention, and that the Scott patent was also invalid because, more than seven months before Scott applied for it, he had caused the same device to be patented in England. On entry of a decree dismissing the bill, the complainant appealed to this court.

[1] In the view we take of the Scott patent, it will not be necessary for us to decide whether the court below was right in holding it did' not involve invention, for, apart from that question, we are of opinion that court rightly held the English patent avoided the Scott patent.

[2] By section 3 of the act of Congress of 1897 (29 Statutes at Rarge, p. 692), and by the act of March 3, 1903 (32 Statutes at Rarge, p. 1227), section 4887 of the Revised Statutes was amended to read as follows:

“No person otherwise entitled thereto shall be debarred from receiving a patent for his invention or discovery, nor shall any patent be declared invalid, by reason of its having been first patented or caused to be patented by the inventor or his legal representatives or assigns in a foreign country, unless the application for said foreign patent was filed more than seven months prior to the 'filing of the application in this country, in which case no patent shall be granted in this country.”

Now, the patent here in suit,' No. 788,334, for an apparatus for casting metal, was applied for by James Scott August 31, 1899, and granted April 25, 1905. More than seven months prior to Scott’s application, to wit, on February 16, 1898, application was made for English patent No. 3,880, which patent was granted to James Willard Miller, who in his specification described himself as a manufacturer’s agent, and therein stated that the said improvement was “partly a communication from Edward A. Uehling, a metallurgical chemist and engineer, of Newark, Essex, New Jersey, U. S. A., and James Scott, of Pittsburgh, Allegheny county, Pennsylvania, United States of America.” Without entering into details, it suffices to say that the subject-matter of the Scott American patent is embodied in the Miller English patent, and, as the American patent was not applied for until more than seven months thereafter, the statute above recited forbade the grant of such patent, if Scott’s invention or discovery had been “patented or caused to be patented by the inventor or his legal representatives or assigns” in England. After hearing the proofs the. court below held that Scott had caused his invention to be patented in England more than seven months before he had applied for his American patent, and that under the statute quoted above the latter patent was void. In view of all the proofs, the relations of the parties concerned, and the inferences fairly deducible therefrom, we are of opinion the court below committed no error in decreeing Scott’s patent void on that ground.

From the proofs it appears that this case concerns the change in pig metal casting from the old sand bed method in universal use to the modern casting in conveyor metal molds. The old process and the underlying features of the new method are contrasted in patent No. 548,146, applied for November 28, 1892, and granted October 15, 1895, to Edward A. Uehling, of Birmingham, Alaw for an apparatus for and method of casting and conveying metals. In such-patent it is said:

“In tbe casting and handling of pig iron as now generally practiced the iron is run into open sand molds called ‘pigs.’ In this operation the iron runs direct from the furnace'into a long sand runner, from which side runners are led off, called ‘sows,’ which feed the “pigs.’ The sows are cut off from the main runner as the ‘pig beds’ fill up, but the pigs must be detached from the sows and the latter broken into proper, lengths for handling after the iron has set. This breaking off is done either while the iron is still red hot in the beds, making it an exceedingly hard task, or the iron is left to cool, in which case heavy bars and sledge hammers are required to break the pigs off the sows and then break the latter into proper lengths. After this breaking, water is sprayed over the iron, and .when it has sufficiently cooled is gathered, loaded on trams, and taken to the yard, where it is piled. The scrap is then gathered from the beds, and the sand is wet down and molded up for another cast. These operations must be'repeated from four to six times a day to take care of the product of a modern blast furnace, and they depend almost entirely upon the brute force and physical endurance of the operators. The product is rough and irregular, and the operation is very wasteful, producing large quantities of scrap, which must be remelted, and carries much sand with the iron, which reduces the value of the iron. Moreover, this method of running the iron from the furnace into the sand is under very poor control. It sometimes runs so slowly that the iron chills in the long runner before it reaches the lower pig beds. At other times the running of the iron is with such a rush that the cores, which form the partitions between the pig molds, are washed away and the beds sheeted. In either case the iron must be taken up from the sand beds and remelted to make it marketable, besides the expense of having to break it up and remove it from the beds. The method above stated has also the disadvantage that the iron, as it runs from ;the furnace, is frequently of varying quality, and it is of common occurrence that several grades of iron are run from the furnace at the same cast. In this it not infrequently happens that a portion of the pig is deficient in those elements which are necessary to constitute good cast iron—as, for example, silicon and graphite carbon—while another portion has an excess of these elements. In either the iron has less value that it would have if the elements were properly mixed. In addition to all this, much difficulty is often experienced in keeping the slag from running with and contaminating the iron, as well as preventing some of the iron from being wasted with the slag. To avoid the disadvantages and difficulties above stated, and to reduce the cost of the production and improve the quality of the product, is the object of my invention, and which embraces a novel construction of plant, in which the metal is run from the furnace into a .large reservoir, so mounted that it can be brought in communication with a. series of movable molds, and its contents can be poured into the latter in a continuous and perfectly controlled stream, forming pigs of uniform size, which solidify on their way to the dumping end, where they are automatically delivered into a car or other suitable conveyance.”

From the testimony of Scott, who was superintendent of the Isabella furnaces of the Carnegie Steel Company, it appears that he began in 1895 experimenting on the same general lines, but without knowledge of Uehling’s work. Before, however, he had evolved any method or practical device, Scott’s attention was called to Uehling’s patent, then just issued. His account of the matter is, viz.:

“I remember, before we were about to start the machine, I said to H. N. Gurry, who has since deceased, ‘We ought to get Bakewell & Byrnes to furnish us with all the drawings or all the inventions that have ever been used for the handling of molten metal.’ H. N. Curry was- sitting across the table from me. He was looking at the Patent Office Gazette, and I had looked at it, looked it over, and here was the Uehling machine showing the conveyor, a man sitting under it, with a hose, and a ladle at the other end. I said to Curry, ‘Lord, look at that. You better make some arrangements about seeing Uehling.’ And they did; they made arrangements with Uehling; and Uehling came up here and opened an office, and had a draftsman, and had Miller, ‘Shoebox’ Miller, that is who he had with him, and after Uehling was given the half of the machine and the Carnegie Steel Company the other half, I was there to work it out for the money my company had put in and for my own reputation.” ,

The half of the Uehling patent having been acquired by the complainant, a subsidiary company of Scott’s employer, and the other half being held by Uehling and one Miller, it appears Scott was directed to improve on what Uehling had done, and to give Uehling and Miller full access to all he was doing in endeavoring to so improve. As we understand the proofs, Scott was to have no part in any patented -improvements thus made in the line of his employment. In that regard, his testimony is:

“I was thus to work it out for the money my company had put in and for my own reputation. The patents gave me no consideration. I was told that Uehling and Miller had access to anything that I did. There is the whole thing.”

As a result of further experimentation, certain departures were made from Uehling’s device and were embodied in the commercial machine made and sold in large quantities by the complainant. Briefly stated, these changes consisted in three things: First, a well or dam was provided, which received the stream of metal poured from the assembling vessel into the device, a change which stopped the dangerous splashing incident to Uehling’s device; second, the molten metal was made to run into .the molds longitudinally, instead of transversely, and barriers were placed at the far end of the mold, changes which prevented overflow and clogging of the conveyor mechanism. These changes are embodied in the claims here in issue, and the question whether they involved invention over Uehling we do not, as we said above, here discuss or describe. These changes were embodied in an American patent application made jointly by Uehling, Scott, and Miller in Serial No. 661,002, filed December 7, 1897. In this application Scott united with Uehling and Miller in alleging “that they verily believe themselves to be the original, first, and joint inventors of the improvement in apparatus for casting metal described and claimed in the foregoing specification,” and that “our invention is in the nature of an improvement upon the apparatus for casting metal described and claimed in letters patent No. 548,146, granted to Edward A. Uehling on October 15, 1895.” This joint application for a joint invention was prosecuted for nearly three years, and this by the same firm of attorneys who were originally named by the three applicants as their attorneys, without any repudiation of their action by Scott. The last entry in this application is dated November 6, 1900, and is:

“Amendment filed October 20, 1900, bas been entered. This puts the case for allowance, but it is withheld from issue on account of probable interference of another pending application.” -

While this joint application of the three patentees was pending, to wit, on February 16, 1898, Miller, one of the applicants, was sent to England to exploit the conveyor there. He is now dead, and Uehling was not called as a witness, sb the only witness as to Miller’s errand, and his authority, and the joint action and interest of .the three, is Scott, who says:

“Q. I understand from you that Mr. Uehling established an office in Pittsburgh and had a draftsman and made drawings in connection with these casting machines. Is that correct? A. Yes. * * * Q. Mr. Miller worked with Mr. Uehling? A. Oh, yes. He was supposed to be the salesman. He was the fellow that went to Europe and tried to introduce it in Europe. * * * q. Well, now, did you ever talk with Mr. Uehling and Mr. Miller about Mr. Miller going to Europe to introduce the invention? A. I suppose it just naturally came up. We would have to do something about it, naturally. I suppose they may have had a talk with me about going to Europe. I knew Miller did go to Europe to introduce the patents, but I don’t remember that he was going to take out any patents. I am not sure about that. I don’t know whether he did or not. I never spoke to Miller but once afterwards, after he came back from Europe. Q. I am speaking about before he went to Europe. You and Miller and Uehling had talked together about his going to Europe, and about the introducing of the invention over there in Europe, had you? A. I may have.. I wouldn’t deny that, but I can’t remember. We were friendly enough while the thing was being put through, and no doubt exchanged ideas. * * * Q. When you knew that Mr. Miller was going to .Europe, you knew that he was going there for the purpose of introducing this casting machine into the European market? A. That is what I understood; yes.”

It will also be noted that at the time of Miller’s visit to Europe, early in 1898, the improvements on Uehling’s device'had been perfected and put into practical, successful, commercial use. The improvements then having proved successful, the three men having pending a joint application for an American patent, and Miller going abroad to exploit the invention, it is clear to us that sufficient facts and circumstances existed from which it could, be fairly inferred that Miller’s act in securing patent protection in England for the device came within the scope of their joint enterprise, and the patenting thereof by him was an act caused to be done by Uehling and Scott, and therefore such a prior patenting as the statute contemplated. In view of the lapse of years, of the fact that Miller is dead, that Uehling was not called to deny or disavow Miller’s 'act, and of Scott really going no further than saying he had, after these years, no recollection of having specifically authorized the patenting, we are warranted in regarding the patenting by Miller as one authorized by Scott. And such, indeed, would seem'to have been the attitude of Scott himself until this present controversy arose, for in an ex parte patent controversy to which we will hereafter allude, in which there was no one but Scott’s counsel to suggest the status, it was assumed the English patent was taken out by Miller in behalf of himself, Scott, and Uehling. Thus, in a Patent Office opinion delivered in that case in 1900, it was said;

“The question here presented is one of law, arising from the fact that this sole applicant Scott jointly with one Uehling caused the invention of the appealed claims to be patented in Great Britain more than seven months prior to the date of his application in this country. The British patent thus jointly obtained is numbered 3,880 and the application therefor was dated February 16, 1898. The patent was sealed August 2, 1898. The pending application was not filed until October 27, 1900.”

In view of all the foregoing facts and circumstances, we are of opinion the court below was justified in finding and holding that Scott caused the device of the patent in suit to be patented in England in 1898. Such being the case, and he not having applied for the American patent here in suit until 1900, the case falls within the literalism of the statute, from which there is no escape, unless by a construction which modifies its clear language. This construction the complainant urges by reason of the fact that, some three years after Scott joined in tire joint application with Uehling and Miller above referred to, Scott in 1900 applied for the patent here in suit, alleging he was the sole inventor. It is now contended by the complainant Scott’s sole patent application should have thé benefit of the prior joint application, and hence the seven months limit should not apply. The Patent Office, in granting the present patent, yielded to that contention, holding;

“In order to make the foreign patent a bar against, this application, It is necessary to hold that the causing of an invention to be patented in a foreign country by two joint applicants is a causing of that patent by one of the two joint applicants. That being held, and there having been filed in this country an application prior to the foreign patent by the same two persons, it ought to be held that either of these applicants, as respects a sole invention by. him of what is disclosed in that prior domestic application, and for the purpose of deliverance from the bar of the statute, caused the prior domestic application to be filed in this country. The same ruling against him which brought him within the bar of the foreign patent should be made in favor of him to put him without that bar. That being so, this applicant is entitled, for this purpose, to the date of filing of the joint application as the date of filing an application in this country for the invention of the later foreign patent, and, the date of the joint application being prior to the date of the foreign patent, that patent is not a bar to the allowance of this application.”

We cannot accede to this reasoning. Congress, in passing this statute, was dealing with the broad subject of the relative terms of foreign and domestic patents, and its purpose was to so synchronize the patent system of this and foreign countries that American patents should not monopolize in this country a device which had been freed from patent monopoly abroad. The statute was dealing with inventions and their monopoly, and not with the details of the forms by which individual applicants could secure their individual rights. In this case the device of the patent in suit secured patent monopoly in England in 1898. That patent expired in the year 1912, and after that date the invention was open to public use in Great Britain. More than seven months later Scott applied for the patent in suit, and it was granted in 1905. It will thus be seen that, under the ruling of the department, the whole purpose of the statute is defeated, for in this country the public is subjected to patent monopoly for years after the English public is free to use the invention. And on reflection it .will appear that the fact that Scott had joined in an earlier joint application for a patent for the device should not alter the case. Had that application been pursued and granted, that patent would have duly protected the device. But this joint application was abandoned by Scott, and his subsequent sole application for a patent was not a division under the original application, but was a hostile and independent application, standing on its own ground. So far as time is concerned, the sole application had to stand on its own independent status, and its sole and only date of application was 1899. Such being the case, it was confronted by the fact that two years before the device in question had been caused by the applicant to be patented in England. Under such facts, we are clear the Patent Office was forbidden by the statute in question from issuing the patent in suit. The court below committed no error in dismissing the bill so far as Mr. Scott was concerned.

[3] It remains to consider the patent to Mc-Kennan and Plelander. Without entering into the details of this device, we may say that its substantial feature, so far as pig-casting device went, lay in dividing the load, so that, instead of being supported eccentrically on one end of an axle, it rested on both ends. This, of course, reduced friction and wear, and was a more economical and efficient device than the eccentric carrying theretofore in use. But, conceding this, we do not see that the adoption of a well-understood method of supporting a load at two ends of an axle, where it was theretofore carried eccentrically, involved anything more than the engineering skill, effort, and progress incident to progressive efficiency in a great art, such as blast furnace practice. Without further enlarging on the matter, we limit ourselves to stating our conclusion that we find no error in the court’s conclusion that the claims in question in the McKennan and Helander patent did not involve invention.

The decree below is therefore affirmed.