Strong-Scott Mfg. Co. v. Weller

• Decision Date: 10 June 1940
• Docket Number: No. 11632.,11632.
• Citation: 112 F.2d 389
• Parties: STRONG-SCOTT MFG. CO. et al. v. WELLER et al.
• Court: U.S. Court of Appeals — Eighth Circuit

112 F.2d 389 (1940)

STRONG-SCOTT MFG. CO. et al. v. WELLER et al.

No. 11632.

Circuit Court of Appeals, Eighth Circuit.

June 10, 1940.

Charles W. Gerard, of Kansas City, Mo., and Donald H. Sweet, of Chicago, Ill. (Charles C. Reif, of Minneapolis, Minn., and Freeman, Sweet & Albrecht, of Chicago, Ill., on the brief), for appellants.

Frank A. Whiteley, of Minneapolis, Minn., for appellees.

Before GARDNER, SANBORN, and WOODROUGH, Circuit Judges.

SANBORN, Circuit Judge.

This appeal is from a decree enjoining appellants from infringing Letters Patent No. 1,944,932, for an "elevator bucket", granted January 30, 1934, to Blaine B. Gemeny and Burt I. Weller, and from applying the name "Calumet" to elevator buckets, ordering an accounting, and dismissing a counterclaim of appellant Screw Conveyor Corporation.

This suit was brought by Burt I. Weller, now the sole owner of the patent, against the Strong-Scott Manufacturing Company. The Weller Metal Products Company, of Illinois, the sole licensee under the patent, was joined as plaintiff, and the Screw Conveyor Corporation, of Illinois, which had made and sold the accused elevator buckets to the Strong-Scott Manufacturing Company, intervened on the side of that company. For convenience, the appellants will be referred to as "defendants".

The defendants challenged the validity of the patent. The Screw Conveyor Corporation asserted that it had an implied license from the plaintiffs to make and sell the patented buckets; and that the word "Calumet", which was applied to buckets made and sold by plaintiffs and also to those made and sold by the Screw Conveyor Corporation, was the trade-mark of that corporation; and in its counterclaim it asked for an injunction against the use by plaintiffs of the word "Calumet".

The issues which the court below was called upon to decide were:

1. Was the patent invalid. (a) for failure sufficiently to describe and claim the invention; (b) for want of patentable invention; (c) because Burt I. Weller was not a joint inventor?

2. Were the claims of the patent infringed?

3. Was the word "Calumet" as applied to elevator buckets a trade-mark owned by the Screw Conveyor Corporation?

A brief explanation of the alleged invention and of the background of the controversy will be helpful.

Elevator buckets, also known as elevator cups, are metal receptacles made to be fastened to an endless belt in proximity to each other so as to form an endless belt conveyor for use in elevating or carrying grain from the bottom to the top of a grain elevator. The entire mechanism used for elevating the grain is called a "leg". The bottom of the leg, where the grain is picked up by the elevating mechanism, is called the "boot". The top of the leg is called the "head". The belt with the buckets or cups attached to it passes over two pulleys: A boot pulley at the bottom of the leg, and a head pulley at the top, to which the power to move the belt is ordinarily applied. The buckets as they move through the grain in the boot pick up the grain and carry it up over the head pulley and discharge the grain so that it flows from the point of discharge to its ultimate destination. The entire mechanism is enclosed in a casing to prevent spillage, dust and chaff from escaping. It is obvious that the shape and size of the buckets and their spacing upon the belt and the speed at which the belt is operated will affect the capacity of the leg, and that capacity is the important consideration in elevating grain.

The art of constructing elevator buckets is old. In 1864 a patent for an "improvement in the manufacture of elevator-buckets" was granted to Nimbs. From that time until the early part of 1919, some thirteen other patents for improvements in the art were granted. From 1919 until the alleged invention disclosed by the patent in suit, there was little or no advance in the art. At the time the patent in suit was applied for, there were a number of different types of elevator buckets in general use: The Rialto, the Buffalo, the Minneapolis V, the Empire, the Salem, and the D. P. or O. K. None of these buckets approached perfection. Some were difficult to fasten securely to the belt; some would not fill to capacity; some would spill part of the grain before it had passed over the head pulley, causing what is known as "backlegging", which means that the grain would return to the boot and would have to be re-elevated; some of the buckets could not be spaced in close proximity on the belt; some discharged the grain in a mass; others did not discharge cleanly. Most of them had to be run at an exact speed in order to operate efficiently. There was a considerable variation in the capacity of elevator legs, the belts of which carried different types of buckets. Apparently the most efficient were the D. P. or O. K., the Salem, and the Buffalo. It was recognized that there was room for improvement in the art. What the grain elevator trade wanted was a type of bucket capable of secure attachment to the belt, and of such shape and size that the buckets could be closely spaced upon the belt, would fill quickly and to capacity, would not "backleg", would discharge their loads evenly and cleanly, were capable of being operated at a wide range of speeds, would, so far as possible, produce an even flow of grain as they discharged, and would increase materially the elevating capacity of the leg.

In 1931, Blaine B. Gemeny, who was skilled in the art and familiar with the need for a more efficient elevator bucket, made a study and analysis of every bucket on the market. He developed a type which he thought would be a distinct advance over the prior art. He made a model elevator leg equipped with buckets of his design. These buckets had curved bottoms. He wished to interest someone in developing the bucket he had originated. He went to Burt I. Weller, who was also skilled in the art, and showed him the model. Weller was interested, but suggested that, instead of using a curve for the bottom of the bucket, a segment of a logarithmic spiral be used. Weller had used such spirals in making elevator equipment and had once assisted in increasing the speed of a race track by changing its curves into segments of logarithmic spirals. Weller's idea was adopted. The Gemeny-Weller bucket was named "Calumet" in October, 1931. An application for a patent was filed July 22, 1932. The Patent Office was skeptical as to there being any invention in what Gemeny and Weller disclosed in their application, but they finally secured the allowance of two claims, which read as follows:

"1. In an elevator mechanism, in combination, an endless carrier, a pulley over which the upper end of the conveyor is trained, a plurality of buckets secured in close proximity to each other on said carrier, said buckets having bottoms defining a segment of a logarithmic spiral, a casing head in said elevator in spaced relation from said pulley, said casing head being curved to present an inside surface in close proximity with the ascending buckets which surface gradually slopes away from the buckets as they travel around the pulley, said buckets discharging material in increments by centrifugal force into the casing head as they pass around said pulley, whereby said material slides around the casing head to discharge in a constant even flow.

"2. An elevator bucket for an endless chain elevator adapted to eject material therefrom after the chain reaches the upper limit of its vertical travel, comprising a container with an inwardly curved back wall adapted to be secured to the endless chain and conform with the periphery of the pulleys around which the chain is trained, a bottom wall curved outwardly to conform to the curvature of a segment of a logarithmic spiral, and side walls extending above the full load plane of the bucket to form side flaps, the upper edges of which conform to the curvature of a section of a hyperbolic spiral."

In 1932, Burt I. Weller and the Weller Metal Products Company were engaged in the sheet metal business in Hammond, Indiana. They had been doing sheet metal work for the George W. Moore Co., which specialized in selling elevator buckets and screw conveyors. The Moore Company was absorbed by another concern, and two of its executive officers, Maas and Kozak, had lost their positions. They were then on friendly terms with Weller. They decided to form a corporation to carry on the business formerly engaged in by the Moore Company, and in October, 1932, they organized the Screw Conveyor Corporation and leased from Weller a part of his plant in Hammond, Indiana, for the period of ten years, with an option to purchase. This arrangement was apparently mutually satisfactory, since it enabled the Screw Conveyor Corporation to procure from Weller and his company the sheet metal work necessary for the conduct of its business, and furnished Weller with a customer. Weller and his company were making and marketing the Calumet bucket (covered by the patent in suit), and the Screw Conveyor Corporation purchased Calumet buckets from Weller and listed them in its catalogue as "Calumet" buckets. It also called its other products "Calumet Products". In 1937, after Maas and Kozak had been unsuccessful in procuring from Weller an agreement to grant the Screw Conveyor Corporation a license or a right to manufacture Calumet buckets, they filed, on behalf of the Screw Conveyor Corporation, a certificate of registration of the trademark "Calumet" as applied to all of their products, including elevator buckets. They finally advised Weller that they had consulted counsel, who had informed them that the patent covering the Calumet bucket was invalid. They stated to him that they proposed to make and sell the bucket without his consent, which they then proceeded to do. The result was that thereafter there were upon the market identical elevator buckets known to the trade as Calumet buckets, some of which were made by the ...