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doing prior to the time of the invention, with correspondingly uncertain and unsatisfactory results, and nothing more definite or nearer to the patent could be looked for, from it, there than eleswhere. Adams is discredited also by his statements to James Fleavey, who was sent to him by the complainants, upon learning that he was formerly connected with the Brady Metal Company. To Heavey he said, as the latter testifies, that he knew of no low mix of tin, and that the company never put in as high as 20 per cent. of lead, nor, indeed, more than 16 or 17 pounds to the pot (180 pounds), which is not half that. He also said that he had forgotten about it since he was out of the business. This was reported back to the complainants, who took steps to have him attend as a witness. But upon Heavey's going to him a second time, he said he was not an errand boy for the Ajax people, intimating that, if they wanted him, they ought to communicate with him directly. This they did by letter suggesting a specific date for his testimony, but got no answer. And on a third visit by Heavey he was even less cordial, and more offish, making a half promise to testify, but not keeping it. Heavey is charged with bias, having worked for the Brady Brass Company and been discharged after a few weeks' service. And it is no doubt true that, when Hopkins went to Adams, he told him substantially the same as he says now, that they got over 35 or 40 per cent. of lead in their mixtures. But, outside of this, his statements, as Hopkins says, were vague and rambling, and the impression left was that Adams wanted money, and was not to be relied upon. Without crediting that, however, all things considered, his testimony is not left in such a shape as to be unhesitatingly accepted.
Nor is this all that there is to be said upon this subject. When Brady and Reubens were on the witness stand, they were asked who there was who would confirm their statements with regard to the practice at the works, and the percentages of tin and lead which were made use of, and they both declared, without naming any one, that they would be known to some of the workmen. But in flat contradiction of this those of the workmen who would be likely to be informed, if any, upon being called by the complainants, professed that they knew nothing of any such practice as had been testified to. Mr. Wilmerding, for instance, went to work in the defendants' foundry in June, 1901, in order to familiarize himself with the various products of the company, so as to qualify as a salesman; and became acquainted, through foundry slips, with the component parts of the different mixtures, one of which slips he produced, together with a memorandum book in which the various formulas made use of at the time by the Brady Brass Company were entered, and, so far as his acquaintance went, the company, as he says, never made or sold a metal having more than 20 per cent. lead and less than per cent. tin and the balance copper. Defendants say that he was only four weeks in the foundry, and but four or five months with the company all told. But, considering the object he had in view in going into the foundry, it is hardly credible that he would not have become informed of a bearing mixture of such superior quality.
John Stehr was also employed by the Brady Metal Company for five or six years, up to 1898; his duties being to receive the metals as they came from the dealers, and weigh the mixtures of copper, tin, and lead for supplying the furnaces, under the directions of the superintendent, there being but two such weighers, himself and another. There were definite proportions to these mixtures, as he says, some of which he gives, one, of the so-called Magnus metal, being composed of 15 pounds of lead, 15 pounds of tin, and 100 pounds of copper; and he says that he has no knowledge of any in which there was more than 20 per cent. lead, and less than 17 per cent, tin, the proportions of the patent. There was also a shell mixture composed of 60 to 70 pounds of copper and 35 to 40 pounds of shells, from which, as a rule, the castings were bad, the lead sweating out and more copper having to be added, besides which there were other compositions of scrap and brasses, which it would take too long to go into. The position which this man was in, and the necessary familiarity which he had to have because of it, make it altogether improbable that there could have been any mixture, low in tin and high in lead, without his knowledge, and his denial that there was is convincing. There certainly could be no steady run in daily practice of the character claimed, which would escape his notice while he was there, and this continued for two years after April, 1896, when it is said to have started.
Hermann Bunje also worked for the Brady Metal Company from 1892 to 1899, tending to the fires, and putting the metal into the pots to be melted down. The general specifications, as he says, called for 100 lbs. of copper, 15 of tin, and 15 of lead, which represented the common practice. There was also another mixture of yy of copper, 13 of lead, and 10 of tin; but never anything of over 20 pounds of lead, with less than v pounds of tin, in a 100-pound mixture. There were besides this other make-ups, of turnings and old bearings or brasses, with the latter of which 15 or 20 pounds of shells—a bundle to a pot—were used, and sometimes sheet copper and shells. But this was in the old shop (which they left in the fall of 1896), and did not turn out well and was not continued steadily, the sheet and copper shells doing the best. James Heavey, an experienced molder, already spoken of, now working for the complainants, was also employed in the fall of 1899 by the Brady Brass Company, and he confirms the others that they did not while he was there use more than 15 per cent. of lead in their copper-tin-lead alloys, and did make use of the other mixtures which have been given. But he only worked there about four weeks, and his means of knowledge were correspondingly limited; the value of his testimony being thus in its corroboration of the others.
Summing up, therefore, the conclusions reached upon this branch of the case, both on account of the unsatisfactory character of the evidence produced by the defendants, as well as because of this direct contradiction of it, the alleged prior knowledge and use which is set up cannot be sustained. The temptation to resort to a defense of this kind in patent cases is always great, and parties are held in consequence to the most convincing and stringent proof. Deering v. Winona Harvester Works, 155 U. S. 286, 15 Sup. Ct. 118, 39 L. Ed. 153. This extends not only to the fact of such use which in the present instance has no doubt been met, but to the character of it as well, which must have been sufficiently positive and pronounced to leave some abiding effect which cannot be said of it here. No old bearings, as it is to be noted, showing the proportions of the mixture, have been put in evidence, and, while the failure to produce physical exhibits such as these, which is sometimes insisted upon, may have been satisfactorily explained, the case lacks the confirmation which this would give. But, more than this, although bearings low in tin and high in lead are said to have been extensively sold, not a single customer is found to testify to their use, it being altogether incredible that, considering the decidedly superior wearing qualities which such bearings would possess, they should not have been thoroughly advertised and known. A single isolated instance realizing the invention has been proved. But that is all, and, under the circumstances, is not enough. Not only was it brought about by the merest chance, but it produced no permanent result, no mixture corresponding with the percentages obtained being adopted, nor the prevailing foundry practice changed. The contrary, of course, is asserted, but without avail. And the validity of the patent is not to be affected by anything of so little established account.
Let a decree be drawn in favor of the complainants, sustaining the patent, and directing an account, with costs.
CONROY 1. PENN ELECTRICAL & MFG. CO.
(Circuit Court, W. D. Pennsylvania, District Court. February 5, 1907.)
1. PATENTS-SUBJECT OF PATENTS-FUNOTION OF MACHINE.
The Conroy patent, No. 723,139, for a method of ornamenting glass, which consists in chipping and scalloping the edges of plate glass for small mirrors by the use of a machine, is void as merely being for the function of the machine in the manufacture of an old product; the same work having previously been done by hand and by practically the same
mechanical process. 2. SAJE-PUBLIC USE-MACHINE FOR SHAPING EDGES OF GLASS.
The Conroy patent, No. 733,949, for a machine for shaping or chipping the edges of glass articles, discloses invention, and is not invalid for 1 public use because the machine was in fact used for more than two years prior to the application; it being shown that, while the machine was fairly successful, and its product was sold, the purpose of its use was experimental, and it was during such time being perfected by the inventor and was kept under lock and key and as far as possible from the knowledge even of the factory workmen who were not engaged in its operation. Also, held infringed.
In Equity. On final hearing.
BUFFINGTON, Circuit Judge. This bill charges infringement of both claims of method patent No. 723,139 for ornamenting glass, granted to John M. Conroy March 17, 1903. This patent was applied for October 22, 1902. It also charges infringement of claims 1, 4, 5, 6, and 7 of patent No. 735,949, for ornamenting glass, granted John M. Conroy August 11, 1903. It was applied for December 31, 1902. The application for the earlier patent originally included both method and machine claims. On suggestion of the office, the machine claims were withdrawn and made the subject of a later application on which the second patent issued. Validity of the former is challenged on the ground that it is an attempt to patent the mere function of a machine. If such be the case, the patent, under well-recognized principles (Risden v. Medart, 158 U. S. 81, 15 Sup. Ct. 745, 39 L. Ēd. 899), must be held void.
The patents refer to the chipping and scalloping the edges of plate glass for small mirrors. Previous to these patents this was done by hand. A piece of plate glass of the desired size, diamond scored on the upper side about an eighth of an inch from the edge, was firmly held by an operator with one hand to overlap the edge of a table. In the other hand the operator held a chipping tool. This consisted of a handle provided with a bifurcated prong somewhat wider than the glass plate. The longer arm of the prong was on the lower side of the plate. A sharp, quick downward stroke of the tool forced the inner end of the lower prong against the lower side of the plate, and the upper prong against the upper edge of the plate. This chipped or cut out scallops back to the scored line. The tool was then moved along the plate, and the operation rapidly repeated. It resulted in a uniform succession of scallops along the plate. The advance in hand chipping now dispenses with scoring. The invention in this case consisted in supplanting hand chipping by machine chipping. The process was: The edge of a plate of glass, supported on a firm rest or table, was presented at an inclined angle to engage a row of projecting pins equally spaced diagonally across the outer surface of a revolving band wheel. The impact of the successive pins made a corresponding successive series of chipped uniform scallops along the edge of the plate. The origin of the device is thus described by complainant's witness Horst: He was asked:
"Do you see the Rieseck drum here before you? A. Yes, sir. It is marked *Defendant's Exhibit, Rieseck Drum.' Q. You have said that this first machine was built in February, 1899. Do you recall the circumstances under which this matter of the chipping machine first came to your attention ? A. As I remember it, I was teaching a boy to chip glass by hand, when Mr. Conroy, he stopped to see what we were doing, when I asked him if he couldn't make a machine to chin glass by. He studied awhile on it, examined the hand tool, and then said he thought it could be done with a drum-pulley. I asked him how, and he said he would let me know later. In about an hour I was called to the office by Mr. Conroy, and he there explained to me that he was going to Peter Rieseck and see if he could get an iron pulley that would answer the purpose. He explained that he would have holes drilled in it, and then we could try it. In a day or two the pulley, and a pair of pillow-blocks came to the factory. Then he had our carpenter at that time, Mr. David Chambers, build a frame. After the frame was built I mounted the drum. Mr. Conroy went to the Labelle Steel Works and got two rods of steel. I think they were five-sixteenths steel rods. I then cut the pins into lengths of about two inches, filed them, and fit them in the holes.”
The plan devised by Mr. Conroy was at once embodied in a machine. Of this Mr. Conroy says:
"Q. Were you able to successfully chip glass while the drum purchased February 23, 1899, was in use? A. We succeeded in chipping some-making some good work-but numerous difficulties arose that we had to meet at different times. One of these was in the drum itself. The metal in it was too light. The pins couldn't be held in position exactly. I didn't know what was the matter with it for awhile. Some pieces would come out all right, and others would not; but I found finally that the metal was too light in that drum, and that was one cause of trouble. But these difficulties that I am speaking of were mechanical difficulties. They didn't alter tlie invention at all. The invention as it is to-day is as it presented itself to me at the start. These mechanical difficulties had to be overcome in its use.”
From this it will be seen that the method and the machine were simultaneously evolved, and that what was devised was a machine by which a well-recognized article, theretofore hand made, could now be machine made. The process substituted a machine made for a hand made article, made it cheaper, quicker, and somewhat more uniform. The method then is simply the novel function of the machine, and not the novelty of its product; nor, indeed, do we find any difference in the mechanical process employed in the hand and machine operation other than that incidental to change from hand to machine work. Indeed, complainant's expert, in discussing the question whether there is a blow in machine operation and simply a tortional pressure in the hand process, virtually concedes there is no functional difference, saying: "It is not, however, in my judgment, a matter of any material consequence.” In Rubber Company v. Goodyear, 76 U. S. 796 (19 L. Ed. 566), it was held:
"A machine may be new, and the product or manufacture proceeding from it may be old, in that case the former would be patentable, and the latter not. The machine may be substantially old, and the product new. In that event, the latter, and not the former, would be patentable. Both may be new, or both may be old. In the former case, both would be patentable. In the latter, neither. The same remark applies to processes and their results. Patentability may exist as to either, neither, or both, according to the fact of novelty, or the opposite. The patentability or the issuing a patent as to one in no wise affects the rights of the inventor or discoverer in respect to the other. They are wholly disconnected and independent facts. Such is the sound and necessary construction of the statute.”
Now applying this general principle to the case in hand, it is very clear that, in view of the prior existence of chipped glass, and that the advance Conroy made was to devise a machine to make it, it is clear that, while such machine is patentable, the function of that machine, namely, making machine chipped glass, is not. To do so would thwart the object of the patent law, which is to promote, not retard, inventions. To use a homely illustration: Beef was chipped by hand. But no one would contend that when the first machine for chipping beef was made the inventor thereof could secure a patent for the process embodied in the machine. To do this would be to bar the way to every inventor who might devise some other machine for producing the common article of chipped beef. Such a construction of the patent laws would make them retard progress.