(231 Fed. 733) KARL KIEFER MACH. CO. et al. v. UNIONWERKE, A. G. (Circuit Court of Appeals, Second Circuit. February 15, 1916.) 1. PATENTS 328-VALIDITY AND INFRINGEMENT-FILTER PULP-PACKING MACHINE. The Kiefer reissue patent, No. 12,455 (original No. 797,122), for a filter pulp-packing machine for pressing filter cake for beer filters, held valid, but not infringed. 2. PATENTS 328-VALIDITY AND INFRINGEMENT-BEER FILTER. The Kiefer patent, No. 993,780, for a filter for straining beer, etc., claim 1, is valid, but, in view of the prior art, must be strictly construed, and, as so construed, held not infringed. 3. PATENTS 328-INVENTION-BEER FILTER. The Kiefer patents, Nos. 1,015,326 and 1,023,254, each for a filter, used in the brewery art, held void for lack of invention. Appeals from the District Court of the United States for the Southern District of New York. Suit in equity by the Karl Kiefer Machine Company and Karl Kiefer against Unionwerke, A. G., and against Nathan H. Heyman. Decrees for defendants, and complainants appeal. Affirmed. For opinion below, see 218 Fed. 847. These causes come here upon appeal from decrees dismissing bills for alleged infringement of certain patents; the one suit is against manufacturer, the other against user. Four patents are involved: Reissue patent No. 12,455, issued February 20, 1906, to Karl Kiefer, for a filter pulp-packing machine. Patent No. 993,780, issued May 30, 1911, to Karl Kiefer for a filter. Patent No. 1,015,326, issued January 23, 1913, to Karl Kiefer, for a filter. Patent No. 1,023,254, issued April 16, 1912, to Karl Kiefer, for a filter. The suit against Heyman includes a separate cause of action for repeal, under section 4918, Rev. St. U. S., of a patent, No. 1,029,915, issued June 18, 1912, to Heyman as assignee of Bernno Danziger. The filters are those used in the brewery art. Both suits were tried together in open court before Judge Sanborn, whose opinion will be found in 218 Fed. 847. He very fully discussed the patents, the prior art, and the structure of defendants; his opinion may be consulted for a presentation of the questions which have been argued here. Henry D. Williams, of New York City, for appellants. Before LACOMBE, WARD, and ROGERS, Circuit Judges. PER CURIAM. Upon the hearing we were inclined to the opinion that the District Judge had unduly limited the two claims of the first patent relied on, Nos. 9 and 10, that they should be taken at their face value, and that, thus construed, they covered, defendants' device. But more careful study of the patent has induced the conclusion that they must be construed as he construed them, or they would not embrace the invention set forth in the specification, and for which Kiefer's patent was granted. For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes 146 C.C.A.-2 In his discussion of the third patent above enumerated, No. 1,015,326, the District Judge erroneously assumed that Figure 3 of the drawings was not inserted until after renewal, July 13, 1911; it was inserted long prior thereto, September 20, 1907. Without that figure apparently certain channels in the compressing plates could not be made out, and the court sustained the contention of defendant that the patent was void for lack of description, and because new matter was put into the renewal claims without any supplementary affidavit. This, however, was not the only ground on which he dismissed the bill as to this patent. Every one of the claims in issue (14, 15, 16, 17, 19, 20, 21, 22, 23, 24, 25) specifies as an element of the claim that the pulp forming the filter layer shall be compressed extraneously of the filter structure. It was quite natural for the patentee to insert these words in each of the claims, because in the final analysis the novelty of his device lies in the circumstance that the filter layers are made (by compression) wholly outside of the filter, and not inside of the filter or in connection with any part (such as a plate) which belongs to the filter as an operative organized structure. We do not think this method of making filter layers is patentable, either as a machine or as a product. With this brief comment, we are satisfied to affirm the decrees on the opinion of the District Judge. Decrees affirmed, with costs. (231 Fed. 734) PERLMAN v. STANDARD WELDING CO. (Circuit Court of Appeals, Second Circuit. February 15, 1916. On Motion to Amend Mandate, March 7, 1916.) No. 203. PATENTS 328-VALIDITY AND INFRINGEMENT-WHEEL. The Perlman patent, No. 1,052,270, for a wheel for automobiles, the special feature of which is a demountable rim, held not anticipated, valid, and infringed. Appeal from the District Court of the United States for the Southern District of New York. Suit in equity by Louis H. Perlman against the Standard Welding Company. Decree for complainant, and defendant appeals. Affirmed. For opinion below, see 231 Fed. 453. This cause comes here upon appeal from a decree in favor of complainant. The suit is in equity for infringement of United States letters patent No. 1,052,270, granted to Louis H. Perlman, February 4, 1913, on application filed June 28, 1906, succeeding application filed May 21, 1906, for improvement in automobile wheels. Claims 8, 11, 12, and 13 were held valid and infringed. Judge Hunt's opinion will be found in 231 Fed. 453. For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes J. B. Fay and Jno. F. Oberlin, both of Cleveland, Ohio, and Charles Neave, of New York City, for appellant. Daniel J. Mooney, of New York City (E. M. Kitchin and Melville Church, of Washington, D. C., of counsel), for appellee. Before LACOMBE, COXE, and ROGERS, Circuit Judges. LACOMBE, Circuit Judge. The particular field in which the improvement of Perlman finds its place is that concerned with what is known as the "demountable rim." The pneumatic tire is affixed to a metal rim, which can be slid on and off the metal rim which encircles the felly of the wheel; in the event of a blow-out the tire with its rim is removed and new tire with rim substituted in a brief space of time, leaving the longer operation of detaching the tire from its rim (and its replacement by a new one) to be performed, not on the road, but in the garage, when the run is over. The objects of invention are stated to be "ready application of the demountable rim to and removal thereof from the fixed rim and felly, the demountable rim being constructed to facilitate the application and removal of a shoe (tire)." The patent and all the questions involved are elaborately and carefully discussed in the opinion of the District Judge (231 Fed. 453), there were many decisions in the Patent Office, and the patent was issued only after a decision of Court of Appeals of the District of Columbia. In re Perlman, 39 App. D. C. 447. These opinions may be consulted for a detailed statement of the questions involved. * * * The crucial question here is the date when Perlman reduced to practice the invention which he describes in his patent. The trial court found that the evidence showed beyond a reasonable doubt that the invention was conceived in 1903 and actually put to use on a car in 1904. Judge Hunt heard the witnesses, for the cause was tried in open court. He had opportunity to weigh their testimony with such appreciation of their individual personal equations as presence at an examination alone can afford. He witnessed with his own eyes the two important tests applied to the physical, exhibits-to Exhibits 4, 5, 6 (the plaintiff's wheel) and to Exhibit 65, one of the tools which plaintiff testified he used in its manufacture. Having heard the testimony of an expert that Exhibit 65 was too soft to cut steel, he saw a practical mechanic put it in a lathe and cut steel with it. Having heard the testimony of another expert that Exhibit 4 was a new wheel, because upon removal of a hub plate the wood showed bright, he saw another practical man, using a chemical preparation of his own, remove not only the surface coat of paint, but also, one by one, three more successive coats beneath; the combined strata indicating an age of several years, and disclosing finally the prime coat which had sunk into the wood. On the wood the judge also saw the traces of a trademark of the maker of the wheel which had been adopted early in 1903. Under these circumstances, if we were in doubt as to the identity of the tool and the age of the wheel, we should hesitate to disturb the findings of the District Court; but from an examination of the testimony, as it is presented here in cold type, we are as convinced as Judge Hunt was that the tool is the one with which plaintiff cut the tapered tips of his bolts, and that the wheel (Exhibits 4, 5, 6) is the identical one he used on his cars in 1904. The establishment of this date accomplishes more than the removal of Vinet's French patent from the prior art; it disposes of arguments based on the history of Perlman's successive applications in the Patent Office. He and his counsel mistakenly supposed that he was a pioneer in invention of a demountable rim per se. In seeking to obtain a patent for that extremely broad invention, close attention was not at first given to the statement of the details of structure, which embodied the real invention for which the patent finally issued. Therefore, from time to time during his long struggle with the Patent Office, additions were made to specifications and drawings. If there were nothing except these additions and Vinet, there might be force in the argument that Perlman conveyed these suggestions from Vinet, not having theretofore conceived them himself. But when we have the identical wheel made and used in 1904 before us, and see in its structure the embodiment of what the patent, as issued, describes, all doubts as to what Perlman's original invention was, are resolved. We do not think it necessary to enter upon any further discussion of the case. Judge Hunt's opinion is very full and sufficiently covers all defenses; we fully concur in his reasoning and conclusions. Decree affirmed, with costs. On Motion to Amend Mandate. PER CURIAM. No reason is seen for changing the ordinary language of the mandate. We are not disposed to depart from the practice stated in Edison Electric Light Co. v. United States Electric Lighting Co., 59 Fed. 501, 8 C. C. A. 200. (231 Fed. 736) DE MAYO COALING CO. v. MICHENER STOWAGE CO. No. 145. 1. PATENTS 35-EVIDENCE OF INVENTION-COMMERCIAL SUCCESS. Commercial success of a patented article is not persuasive evidence of invention as to a claim which covers only a part of the patented device, and in the absence of evidence that such part is what secured general acceptance or even contributed to such success. [Ed. Note. For other cases, see Patents, Cent. Dig. § 39; Dec. Dig. 35.] 2. PATENTS 328-VALIDITY AND INFRINGEMENT APPARATUS FOR COALING SHIPS. The De Mayo patent, No. 797,364, for an apparatus for coaling ships, claim 7, the special feature of which consists of guy devices for maintaining the relative positions of the ship and barge while coaling, if conceded invention, held not infringed. Appeal from the District Court of the United States for the Southern District of New York. For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes Suit in equity by the De Mayo Coaling Company against the Michener Stowage Company. Decree for complainant, and defendant appeals. Reversed. For opinion below, see 227 Fed. 895. This cause comes here upon appeal from a decree sustaining the validity of claim 7 of United States patent 797,364, granted August 15, 1905, to Louis A. De Mayo, for improvements in apparatus for coaling vessels, and holding that defendant has infringed said claim. The opinion of Judge Augustus N. Hand will be found in (D. C.) 227 Fed. 895. Charles S. Champion and Hillary C. Messimer, both of New York City, for appellant. George B. Holbert, of New York City (Nathan Cohen, of New York City, of counsel), for appellee. Before LACOMBE, COXE, and WARD, Circuit Judges. LACOMBE, Circuit Judge. [1] The District Judge evidently was largely influenced by the circumstance that patentee's apparatus was generally accepted and has had a great commercial success. Such a circumstance is frequently persuasive evidence of patentable novelty. In this concrete case, however, the weight of such evidence is much reduced because the single claim in controversy does not cover the whole of patentee's device, but only a part of it, and it cannot be ascertained from the evidence that that particular part is what secured general acceptance. The case is very like the one we had before us in Doig v. Morgan Machine Company, 122 Fed. 460, 59 C. C. A. 616. In that case claims 5 and 6 were concerned with the adjustment of certain railways. We said: * "If it be conceded that all prior box-nailing machines were failures; that the machine of the patent was the first practical and commercially successful one; that it was accepted by the art, and has since monopolized the field-nevertheless such evidence is not helpful to a solution of the question presented on these two claims. There is nothing to show that this minor improvement in one part of the machine contributed at all to any such farreaching results. Speaking of the prior state of the art concerning the adjustment of the way-plates, complainant's expert is careful to 'emphasize the fact that this feeder way-plate construction is combined with other elements insuring the proper delivery of the nails thereto, and the proper cutting out or cutting off of the nails into the chutes of the nail boxes. In other words, a nailpan must be provided which will bring the nails in series to the way-plates of the feeder, suspended by their heads in proper position to be delivered to the nailways of the feeder, for, if the nailways of the feeder be not continuously and properly supplied with nails in proper position to be conducted thereto, the machine will not operate properly. In other words, we are dealing here with an entire organism, to wit, a feeding device for inevitably bringing the nails in proper supply to the chutes, so that the feeding mechanism and the nailing mechanism will operate in harmony.' These two claims, however, do not include the nail supply box, nor the devices for securing passage from that box to the nailways, nor the devices for cutting them out at the end of the nailways and delivering them to the chutes, nor the nail chutes, nor the nailing mechanism. Of the 620 lines of the specification, barely 25 deal with the construction and operation of the nailways; and for aught that the record discloses the meritorious features of complainant's box-nailing machine may lie wholly within the other parts of the completed structure." |