International Steel Wool Corporation v. Williams Co., 9376.

• Citation: 137 F.2d 342
• Decision Date: 24 June 1943
• Docket Number: No. 9376.,9376.
• Parties: INTERNATIONAL STEEL WOOL CORPORATION v. WILLIAMS CO.
• Court: United States Courts of Appeals. United States Court of Appeals (6th Circuit)

137 F.2d 342 (1943)

INTERNATIONAL STEEL WOOL CORPORATION v. WILLIAMS CO.

No. 9376.

Circuit Court of Appeals, Sixth Circuit.

June 24, 1943.

Marston Allen and Erastus S. Allen, both of Cincinnati, Ohio (Allen & Allen, of Cincinnati, Ohio, and Paul A. Staley, of Springfield, Ohio, on the brief), for appellant.

Albert L. Ely, of Cleveland, Ohio (John M. Cole, of Springfield, Ohio, Ely & Frye, of Cleveland, Ohio, and Cole & Hodge, of Springfield, Ohio, on the brief), for appellee.

Before ALLEN, HAMILTON, and MARTIN, Circuit Judges.

ALLEN, Circuit Judge.

This appeal arises out of a suit charging infringement of United States patent 1,907,453, issued to appellant as assignee of William A. Steinbart, who filed the patent application. The patent is for a method of and a machine for making steel wool, article claims 17, 23 and 29, and method claim 34 being in suit. A counterclaim filed by appellee for infringement of Robbins patent, 1,584,145, for improvements in a machine for cutting steel wool, was voluntarily dismissed with prejudice. The District Court held the claims in suit invalid and not infringed, and dismissed the bill.

The parties to this suit were also parties to an interference in the United States Patent Office (Robbins v. Steinbart). The appellee is the owner of the Robbins patent, supra, which came into interference with the Steinbart application after the Robbins patent was granted. In Robbins v. Steinbart, 57 F.2d 378, 19 C.C.P.A., Patents, 1069, the Court of Customs and Patent Appeals sustained the Board of Patent Appeals in awarding priority to Steinbart on claim 23, stating that while the court might have arrived at a different conclusion if it were an initial question, nevertheless the court was not convinced that the lower tribunals were manifestly wrong.

Appellant contends that since the appellee was a party to the interference proceedings and in this case filed a counterclaim for infringement of the Robbins patent, holding itself out as being the owner of a valid patent for the same invention, it cannot in good faith assert the defense of invalidity. We think this contention has no merit. However inconsistent appellee's former attempt to procure a patent may be with its present contention of invalidity of the Steinbart patent for want of invention, the Supreme Court has long recognized that such inconsistency affords no basis for an estoppel and does not preclude the court from relieving the alleged infringer and the public from the asserted monopoly when there is no invention. Paramount-Publix Corp. v. American Tri-Ergon Corp., 294 U.S. 464, 477, 55 S.Ct. 449, 79 L.Ed. 997. This is because the defense of want of patentable invention in a patent operates not merely to exonerate the defendant, but to relieve the public from an asserted monopoly, and the court cannot be prevented from so declaring by the fact that the defendant had ineffectually sought to secure the monopoly for himself. Haughey v. Lee, 151 U.S. 282, 285, 14 S.Ct. 331, 38 L.Ed. 162; Kellogg Switchboard & Supply Co. v. Michigan Bell Telephone Co., 6 Cir., 99 F.2d 203.

The early machines for cutting steel wool comprised a cutting table with reversible drums for winding and rewinding wire, and double-edged knives held in tilting holders arranged to be reversely tipped as the wire moved to and fro. In these machines the series of knives operated on only one strand of wire. Later machines, such as those used in 1914 at the plant of the Ridgely Trimmer Company, Springfield, Ohio, included idler pulleys placed at the ends of the table around which the wire looped so that two strands were cut by the gang of knives. Even so, the necessity for reversing the wire reduced the speed and efficiency of the operation. Steinbart declared it to be one of his principal objects to solve this problem. He stated that his device was intended to provide "a method and apparatus for making metal wool wherein a length of wire may be fed and guided through an apparatus in a unidirectional way and reduced to attenuated condition by a single run through the apparatus, thus enabling a much greater quantity of wool to be made in a given length of time than by other methods and apparatus and also obviating the necessity of numerous reversals in the direction of travel of the wire from which the wool is formed."

The patent in suit discloses a machine consisting of a base on which are mounted two vertical parallel pulleys about which a steel wire is wrapped in a plurality of parallel convolutions. The pulleys are grooved to receive the wire and are driven by a motor located in the base of the machine and connected to the shafts of the vertical pulleys. 560 knives are disclosed, each knife operating upon a single strand of wire which is supported beneath the knives by blocks. The shavings from the wire (in the patent denominated "shavings" or "fibrous shavings"), constitute the cuttings of steel wool.

At the sides of the machine are located parallel guideways in which are supported vertical boards upon which the knives are mounted. The knives were directed in the original application to be reciprocated during the operation of the machine for the purpose of crosscutting the wire, and the issued patent retains this feature in a number of claims. Steinbart joined the end of one wire to the next by a coupling and provided lever mechanism to raise the knives to permit the coupling to pass under the knives in succession. By an interlocking connection between all the levers on each board, as each knife is raised or lowered, all of the other knives on the same board are raised or lowered simultaneously. The District Court found that as the lever mechanism is carried by the reciprocating boards and the wire is moving in a fixed path, any certain coaction between the coupling and the lever mechanism would be impossible, with the result that even if the coupling could pass the blocks, it would strike some, if not all of the knives, either breaking the knives or stopping the machine. No provision was made for adjusting the knives to compensate for the gradual reduction of the wire. The District Court held that the patent is inoperative for the purpose of cutting wool, and concluded that the only portions of the Steinbart machine which are operative are the vertical pulleys and their power-driving means.

The Court of Customs and Patent Appeals in Robbins v. Steinbart, supra, where it was also contended that the Steinbart machine was inoperative, declared: "It seems obvious that the knives would not function as intended; that the drums would not rotate properly; and that the machine had other serious defects which rendered it, as the Board held, an impracticable construction." (Page 380 of 57 F.2d.) However, that court, declaring that the knife mounting was "no part of the invention of the involved claims," decided that the features of the device responsible for its alleged inoperativeness could have been corrected without the exercise of inventive skill.

Appellant attacks the finding of the District Court on the issue of inoperativeness, contending that the appellee is bound by the decision of the Court of Customs and Patent Appeals within the doctrine of Morgan v. Daniels, 123 U.S. 120, 14 S.Ct. 772, 38 L. Ed. 657. It does not claim that the Steinbart machine as originally disclosed is not inoperative, but states that since its defects can "be corrected by the use of standard equipment in wool cutting," it cannot be said to be inoperative.

We think that the ruling in Morgan v. Daniels to the effect that the decision of the patent tribunals upon priority of invention is controlling upon that question of fact in any subsequent case between the same parties is not in point here, where the issue is not priority, but validity of invention. Also we consider that the findings of the two courts upon the issue are entirely consistent. Both of them find the cutting mechanism of Steinbart to be completely inoperative. The District Court does not hold the patent invalid because of inoperativeness, nor does it state that the defective features could not have been cured by exercise of ordinary mechanical skill. We regard the finding of the District Court upon this issue as limiting the scope of the inquiry upon article claims 23 and 29 to the invention residing in the parallel pulleys and their power-driving means, as embodied in a machine for the cutting of steel wool. That this is a correct limitation is virtually conceded by the appellant, for one of its experts stated that the gist of the claimed invention resides in the feature that each loop of wire is independently driven by the application of power to the sheaves or drums, thus taking away the strain from the wire. He said:

"The dominant mechanical feature or principle of the Steinbart disclosure lies in simultaneously applying unidirectional driving power individually to each of a series of parallel convolutions independently of each other convolution of the series, and limiting the pulling strain imposed on each convolution to a fractional portion only of the total cutter resistance imposed upon the entire wire by subjecting each convolution to the cutting action and resistance of a relatively small number of cutters, far less than the number of cutters necessary to reduce the wire from its initial condition to an attenuated scrap condition, as distinguished from the prior art practice of subjecting the wire to a cumulative resistance of all the actual cutters by the application of power at a single point on the wire."

Claims 23 and 29 of the patent in suit read as follows:

"23. In a machine for manufacturing steel wool, a table, cutting tools arranged adjacent thereto, means to guide a plurality of parallel strands formed from a single wire in engagement with said tools over said table, and means to drive said guiding means so that each loop of wire will be independently driven by said guiding means whereby...