Western States Mach. Co. v. SS Hepworth Co.

• Decision Date: 16 January 1945
• Docket Number: No. 85.,85.
• Citation: 147 F.2d 345
• Parties: WESTERN STATES MACH. CO. v. S. S. HEPWORTH CO.
• Court: U.S. Court of Appeals — Second Circuit

147 F.2d 345 (1945)

WESTERN STATES MACH. CO. v. S. S. HEPWORTH CO.

No. 85.

Circuit Court of Appeals, Second Circuit.

January 16, 1945.

Albert C. Johnston, and Hammond & Littell, all of New York City (Nelson Littell, of New York City, on the brief), for plaintiff.

W. F. Sonnekalb, Jr., and Howson & Howson, all of New York City (Charles H. Howson, of New York City, of counsel), for defendant.

Before L. HAND, CHASE and CLARK, Circuit Judges.

L. HAND, Circuit Judge.

Both parties appeal from a judgment in an action for the infringement of four patents. (In the District Court five were involved, but no appeal has been taken as to one, and we disregard it.) Three were issued to the plaintiff, as assignee of Eugene Roberts: The first No. 1,758,901, on May 13, 1930, upon an application filed December 8, 1925. Claims 1, 3, 4, 5, 9 and 10 were in issue, all of which the court held valid and infringed. The defendant appealed. The second, No. 1,861,978, was granted on June 7, 1932, upon an application filed April 23, 1929. Only claim 3 was in issue, and the court dismissed the complaint for noninfringement. The plaintiff appealed. The third, No. 2,145,633, was granted on January 31, 1939, upon application filed June 23, 1934. Claims 10 and 12 were in issue, and the court held both valid and infringed. Defendant appealed. The fourth, No. 2,096,341, was issued to Roberts, personally, on October 19, 1937, upon application, filed November 30, 1934. Claims 3, 6, 7, 8 and 9 were in issue. The court held claim 9 valid and infringed, and claims 3, 6, 7 and 8 invalid. Each party appealed. All four patents related to improvements in sugar centrifuges. The process of extracting sugar from molasses, which is all done in a centrifuge, is in three phases: "purging," separating the sugar crystals from the "green syrup"; "washing," cleaning out the remains of the molasses; "drying," letting the sugar crust harden. The District Court in its opinion described the plaintiff's patents and the infringing machines in such detail that we may refer to it for the facts, except in so far as may be necessary for our own discussion. Western States Machine Co. v. S. S. Hepworth Co., D.C., 51 F.Supp. 859. We shall speak of the four patents as follows: (1) the "Control Patent"; (2) the "Lever Patent"; (3) the "Separator Patent"; (4) the "Brake Cooling Patent."

The "Control Patent"

The sequence of operations involved in a sugar centrifuge was confessedly old. Molasses is poured into a cylindrical basket with holes in its upright sides, which is then rotated at high velocities. Under the centrifugal force so generated, the molasses wells up on the inside of the basket through the holes in which the "green syrup" passes and drains off, leaving a crust of sugar crystals, adhering to the inside. This phase must not continue too long, else residual molasses, which remains in the sugar crystals, will harden and be held. To get it out, water is sprayed upon the inner surface of the crust, and passes out through the holes, like the "green syrup." This phase also must not go on too long, or to much of the sugar will be melted and run off with the water. Finally, after the spray has been stopped, the basket must continue to rotate to drive away vestigial water. This phase also must not go on too long, else the crust will harden too much, and will be difficult to "plow" off, which is done at a very much reduced speed. On the other hand, each of these phases must be continued long enough. It is not possible to set the same period for the same phase in every batch treated, because molasses varies in viscosity; it requires a skilled workman to know what time to allow for each phase in any given batch. Such a workman can, however, by a single inspection, set the period of each phase for any given batch, and an automatic machine set for the proper periods may be left to do its work alone. This Roberts's machine did, and we shall accept for argument as the date of his invention, December, 1923 — that being the date fixed by the District Judge. Claim 1 — after enumerating the well-known elements of a centrifuge, and prescribing that the sprayer shall be "automatically timed" — described a "timing means," which should start the sprayer at a fixed period after the basket started, and should stop the basket at a fixed period after the sprayer had stopped. Claim 3 was for setting the brake after a fixed period, and restoring the timer after the basket had stopped. Claim 4 was in general terms for "regulating the duration of the successive purging spraying and drying." Claim 5 was for a timer to start and stop the sprayer, and then to set the "self-setting brake," all at predetermined, variable, intervals. Claims 9 and 10 were variants, not necessary to describe. None of these claims descended into particulars; if read as written, they covered any centrifuges which would start the sprayer at the proper interval after the basket began to rotate, would stop it when the sprayer had sprayed long enough, would brake the basket after the proper drying period had passed, and would reset the timer. If it was an invention to take the old centrifuges and make them automatic throughout: that is, if it was an invention to conceive of making them automatic, and to disclose a machine which would do so, the judgment was right, for in the supposed infringements all three phases are automatically regulated.

We would hesitate to hold, even though the art had not taken a single step towards an automatic centrifuge, that the mere conception, though followed by the disclosure of an example, could support a monopoly of all future machines, which were similarly automatic. However, "invention" is so elusive a word that, if nothing had stood in the way of fabricating such a machine, if the art had waited long for one, and if, when it appeared, it had superseded all that had gone before; if all these facts conspired, we will not say that they might not have overcome our hesitation. French v. Buckeye Iron & Brass Works, 6 Cir., 10 F.2d 257, 261. As we have often repeated, in judging what requires uncommon ingenuity, the best standard is what common ingenuity has failed for long to contrive under the same incentive. In the case at bar, however, the art had already made a centrifuge, automatic in all but the last phase: i.e., stopping the basket at the end of the drying period. This appeared in the patent to Carlson, No. 1,669,927, granted on May 15, 1928, upon an application filed July 20, 1922: for a centrifuge "to provide efficient means * * * by which the sugar will be washed for a certain predetermined period of time and at a predetermined interval in the operation of the centrifugal machine; said action being carried on automatically and without control of, the operator." (p. 1, lines 18-25.) Carlson did this by an automatic timer which opened a control valve of the sprayer after the centrifuge had been running for a fixed period, and allowed it to close after it had sprayed for a second fixed period. The timers were set in motion by electromagnets — the first one beginning to run when the basket started to rotate; and the second, by the closing of a switch when the sprayer started.

To this patent the plaintiff makes two answers: (1) That the disclosure was inoperable; and (2) that, since the patent was not granted until after Roberts's date of invention, it did not invalidate his claims. The first need not detain us long. It is true that there was a mistake in the wiring diagram, but the defendant's expert, who alone testified on the matter, called it a "draftsman's error" to be "simply corrected by interchanging two wires." If two wires were "just swapped, then the circuit is completely rectified of the difficulty mentioned." The judge did not find that the disclosure was inoperative; and in the face of this undisputed testimony there would have been no support for such a finding. Besides, all patents are presumed to be operative when they pass the examiners, and there must be substantial proof that they are not, if they are to be disregarded. Dashiell v. Grosvenor, 162 U.S. 425, 431, 432, 16 S.Ct. 805, 40 L.Ed. 1025; Crown Cork & Seal Co. v. Aluminum Stopper Co., 4 Cir., 108 F. 845, 849; Troy Laundry Machinery Co. v. Columbia Mfg. Co., D.C., 217 F. 787, 789; Scovill Mfg. Co. v. Satler, D.C., 21 F.2d 630, 634. The same holds true of the strictures upon the Hull and Hall patents, the timing devices of which were in substance incorporated in Carlson's patent. The judge suggested, as we understand it, that Carlson's patent was not relevant, because it was not part of the prior art when Roberts conceived his invention. In this it seems to us that he did not give proper weight to the revolutionary decision of the Supreme Court in Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390, 46 S.Ct. 324, 70 L.Ed. 651. Nor can we agree that, except in mere form, it is incorrect to call an application, still in the Patent Office, "prior art," as the court did in Detrola Corporation v. Hazeltine Corporation, 313 U.S. 259, 265, 61 S.Ct. 948, 85 L.Ed. 1319; because in effect that is just what it is, as we shall try to show.

When Alexander Milburn Co. v. Davis-Bournonville Co., supra (270 U.S. 390, 46 S.Ct. 324, 70 L.Ed. 651), was in the District Court, I attempted to make a distinction between "prior art" and "earlier invention" (297 F. 846, 851-854). Once a disclosure has been published, I admitted, it ends all power to secure a patent upon any combination which can be made of the elements disclosed, no matter how authentic and outstanding an act of invention it may demand to conceive of that combination. There may be an indefinite number of "inventions" in the possible permutations of those elements, but they all fall into the public demesne. On the other hand, when the issue is of prior invention, I argued, an earlier application which is to invalidate a later one must show that the ...