163 F. 254 (6th Cir. 1908), 1,765, National Tube Co. v. Aiken

Docket Nº:1,765, 1,766.
Citation:163 F. 254
Case Date:July 11, 1908
Court:United States Courts of Appeals, Court of Appeals for the Sixth Circuit

Page 254

163 F. 254 (6th Cir. 1908)




Nos. 1,765, 1,766.

United States Court of Appeals, Sixth Circuit.

July 11, 1908

James I. Kay and J. Snowden Bell, for appellant.

Marshall A. Christy, for appellee.

Before LURTON, SEVERENS, and RICHARDS, Circuit Judges.

LURTON, Circuit Judge.

These two appeals have been heard together, as they were in the court below. The first case, No. 1,765, was for an infringement of patent No. 492,951, issued March 7, 1893, to the appellee, Henry Aiken. The other involves the infringement of patent No. 450,360, issued April 14, 1891, to the same inventor. The defendants in each suit are the same, and the infringement is a single structure which infringes both patents. The defenses are that patent

Page 255

No. 450,360 is anticipated by expired patent No. 369,154, issued August 30, 1887, to the same inventor, and that the latter patent, No. 492,951, includes no improvement constituting patentable invention over No. 450,360 and is for a mere aggregation. The court below sustained both patents and found both infringed. The opinion was by Tayler, District Judge, and is reported in 157 F. 691.

Both patents are for apparatus relating to the making of metal plates by rolling mills. The patent of 1893, upon which the first suit was brought, is entitled 'An apparatus for straightening metal plates. ' The invention is described by the patentee in his specifications as 'mainly' consisting:

'In the combination with a straightening press for the plates, of a conveying table or carrier which leads up to the straightening press lengthwise thereof, so as to bring the plates from the rolls to or in close proximity to the press; and also in the combination with devices, of a transfer mechanism adapted to shift the plates from the conveying table to the press.'

The conceded fact is that the combination of this 1893 patent includes the entire device of the 1891 patent, with the addition of an interposed improved straightening press with suitable appliances for its operation in connection with the two parallel feeding and conveying tables. The 1893 patent is to that extent tributary to the 1891 patent, for it is not possible to use the entire device without using that of the earlier patent. The evidence, indeed, shows that the entire apparatus of the 1893 patent was conceived before either patent issued; but the inventor, having an order for a mill which did not desire the straightening press, made and patented those parts of his invention which covered his improved conveying and cooling tables, being the subject of his 1891 patent, and later applied for and obtained the patent of 1893. This is, however, not a matter of vital importance, for if the combination of the latter patent is a new combination and not a mere aggregation, and the results are new and useful in a patentable sense, the patent will stand, though every element is old. Nevertheless, it is difficult to justly estimate the advantages of the apparatus of 1893 without distinguishing between those which are attributable alone to that part of the device which is covered by the earlier patent and those which result only from the added straightening press. This comes about because the inventor divided his invention instead of patenting his entire invention in one patent. This division has also lent color and seriousness to the contention that the addition of a straightening press to the device of 1891 constitutes an aggregation and not a true mechanical combination. The solution of this question of aggregation will be facilitated if we shall first understand the device of the 1891 patent.

Aiken's first step in this matter of improving the methods for cooling hot metal plates is shown by his method patent of 1887. The patent has long since expired, and its only importance lies in the contention that the apparatus described therein for operating under Aiken's method, and the statements of the patentee as to a proper mechanism, constitute a disclosure which would enable any one skilled in the iron rolling business to have made the apparatus covered by Aiken's 1891 patent. The specifications of the 1887 patent disclose the prior methods for cooling plates. The patentee says:

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'It has been a common custom heretofore to place these plates one on top of another in piles on the floor of the rolling mill or on cars as they come hot from the rolls, and to permit them to remain in such position until cool enough to be handled, when they were taken to the shears to be trimmed. As they are not rolled to a uniform size, but vary greatly in dimensions, the edges of some of the plates in the piles will extend beyond the edges of others, so that the center of the pile is built up solidly of hot plates, while the projecting edges of the larger plates are exposed more or less to contact with the atmosphere, which can gain no access to the middle portions of such plates. The result is that they cool unequally, and the edges become warped and distorted, and internal strains are produced which tend to weaken the plates and injure their quality. Such plates also require more shearing on this account, which produces a larger percentage of waste. When the plates are placed singly on the floor to cool, they are also liable to warp and buckle, owing to the fact that the air cannot obtain free access to the under side.'

The method which Aiken proposed to substitute for the old and clumsy method was, as stated in the single claim of his patent, that of conveying the hot plates singly 'through the atmosphere upon moving surfaces, where they are exposed to the atmosphere on all sides; the points of support constantly changing. * * * ' To illustrate how this method might be carried out, he points out that, when the metal sheets or plates are delivered in the usual way from the rolls upon the usual rolling mill feeding table, there should be provided 'adjacent to the table, upon which the plate is delivered after the last pass, and preferably in line with said feed table, * * * a roller table of considerable length, terminating preferably at or near the shears. ' 'This roller table,' he says, 'is a series of rollers at suitable distances apart operated by proper mechanism. ' An apparatus which he constructed before applying for his patent is shown and described. That apparatus was made for and long operated in the Homestead Rolling Mill. It was longitudinally a monster, 300 feet long, requiring, of course, very great space. One end connected with the usual feed table upon which the plates were first delivered from the rolls. The other terminated at the shears, where the jagged edges were to be cut off and the plates given the shape desired. Somewhere between the feed table and the shears, and after the plates had stiffened, they were to be stopped, and the lines marked to be followed by the shears. The operation, as he described it, was this:


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