241 F. 72 (4th Cir. 1916), 1439, National Mach. Corp., Inc. v. Benthall Mach. Co., Inc.

Docket Nº:1439.
Citation:241 F. 72
Party Name:NATIONAL MACH. CORP., Inc., v. BENTHALL MACH. CO., Inc. [1]
Case Date:November 23, 1916
Court:United States Courts of Appeals, Court of Appeals for the Fourth Circuit
 
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Page 72

241 F. 72 (4th Cir. 1916)

NATIONAL MACH. CORP., Inc.,

v.

BENTHALL MACH. CO., Inc. 1

No. 1439.

United States Court of Appeals, Fourth Circuit.

November 23, 1916

Page 73

George W. Ramsey, of New York City, and Melville Church, of Washington, D.C. (Menalcus Lankford, of Norfolk, Va., on the brief), for appellant and cross-appellee.

T. Hart Anderson, of New York City (Munn & Munn, of New York City, and Tazewell Taylor, of Norfolk, Va., on the brief), for appellee and cross-appellant.

Before PRITCHARD, KNAPP, and WOODS, Circuit Judges.

PRITCHARD, Circuit Judge.

The appellee and cross-appellant will be referred to as complainant, and the appellant and cross-appellee as defendant, such being the respective positions occupied by the parties in the court below.

Suit was brought by the complainant, a corporation doing business in the city of Suffolk, Va., against the National Machine Corporation, organized under the laws of the state of Virginia, and doing business in the city of Suffolk, Va., alleging an infringement of the patent to Benthall, No. 890,401, on a peanut stemming saw, and a patent to Jones, No. 908,271, on a peanut stemmer. The court below dismissed the bill as to the Jones patent and sustained the Benthall patent on the saw and granted an injunction against the defendant. The National Machine Corporation took an appeal from the injunction, and the Benthall Machine Company filed a cross-appeal from the decree of the court below dismissing the bill as to the Jones patent. The subject-matter of the Benthall patent is different from that of the Jones patent. Therefore each will be treated in its turn in the course of this opinion.

Defendant insists that the court below erred in holding that the letters patent No. 890,401, to Jesse T. Benthall, is, in respect to claims 4 and 5, good and valid. Complainant insists that defendant has infringed its patent by the use of a saw for stemming peanuts. The saw in question is described in the Benthall patent, page 1, line 60, as follows:

'It will be noticed from inspection of Fig. 3 that the sides of the throat meet each other at an acute angle, and that the front edge of each tooth is straight, and that the widest part of the throat is approximately the width of the tooth. By this construction the stems when engaged by the throat are drawn to the bottom thereof, and the gradual narrowing of the stem exerts a wedging action on the stem, thus gripping the same sufficiently tight to draw it between the slats and to strip the nuts therefrom.'

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The claims of the Benthall patent in suit are:

'(4) In a peanut stemmer, a stemming device comprising a disk provided on its periphery with a plurality of teeth, said teeth being inclined to radii of the disks, and having their front edges straight, the edges of the adjacent teeth meeting at an acute angle, and the points of the teeth being nearer the centers of the disks than the heels thereof, and the spaces between the teeth being of a width at the widest part approximately equal to that of the teeth.

'(5) In a peanut stemmer, a stemming device comprising a disk provided on its periphery with a plurality of spaced teeth having straight front edges, the heels of the teeth being farther from the centers of the disk than the points thereof, whereby to form a guard for the point, and the edges of the adjacent teeth meeting at an acute angle, whereby to exert a wedging action on the stem.'

Among other things, it appears that the limitations in the specifications and claims that the sides of the adjacent teeth meet at an acute angle were introduced by the attorney after the application was filed and the claims rejected by the Patent Office. It is insisted by defendant that the patentee is bound by this limitation, and it cites in support thereof the following cases: Burns v. Meyer, 100 U.S. 672, 25 L.Ed. 738; Keystone Bridge Co. v. Phoenix Iron Co., 95 U.S. 274, 24 L.Ed. 344; American Tobacco Co. v. Streat, 83 F. 700, 28 C.C.A. 18; Bonsack Machine Co. v. Smith (C.C.) 70 F. 383; Crown Cork & Seal Co. v. Aluminum Stopper Co. (C.C.) 100 F. 849; Ashton Valve Co. v. Coale Muffler & Safety Valve Co., 52 F. 314, 3 C.C.A. 98.

It is further insisted that, when Benthall made application for a patent (January 12, 1906), 'it came into a well-developed art which begins with the patent to Eli Whitney, March 4, 1794, on the saw cotton gin; saw cotton gins were in use stemming peanuts long before Benthall, and as early as April 2, 1872, a patent was granted to Edwin Scott on a peanut 'gin';' also that, when Benthall filed his application in the Patent Office, nothing was said in either the specification or claims about any 'acute angle' of the teeth to wedge the peanut stem. An examination of defendant's exhibit (the certified copy of file wrapper and claims, Benthall patent, 890,401) sustains this contention. It appears that at that time great stress was laid upon the 'bills (points) of the hooks (teeth) being nearer the centers of the disks than the heels thereof. ' (Original claims 9 and 10.)

It further appears that saws having protected points so as to prevent scraping of the hulls or seeds were public property anterior to the time Benthall applied for his patent; patents covering these points being known as the Hazelton patents, No. 293,576 and No. 313,412, having expired in 1901 and 1902, respectively. Patent No. 293,576 was the patent for a gin saw. A description of this patent is in the following language:

'Various other modifications will readily suggest themselves to those skilled in the art, as it is manifest that the form of the tooth is immaterial so long as the heel of the tooth is higher than its point, whereby the heel or base protects or guards the point of the tooth.'

Upon this description Hazelton claims this device as his patent, employing the following language in respect to the same:

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'(1) A saw provided with a series of angular teeth having heels higher than their toes, as and for the purpose set forth.

'(2) A saw having a series of angular teeth, C, the points or toes, D, thereof being lower than the heels, E, and having plane breasts, A, as set forth.

'(3) A saw having angular teeth, C, provided with plane breasts, A, recesses, F, and heels, E, higher than the points or toes, D, as set forth.'

Hazelton in describing the disk says:

'A is a metal disk provided with a central opening, B, by means of which it is mounted upon a shaft, C. The periphery of this disk has a series of teeth, E, of which e is the point or toe, and e the heel. The surface or face of the tooth, being that part included between the point and the heel, is a true circle from the center, B, for a distance of about two-thirds of its length, beginning at the heel and running toward the point, and the remaining portion of the face of the tooth is depressed so that the point of the tooth lies below the true periphery of the cylinder. To make this clear, the face of the tooth from the heel e to the line x is the true circumference of the disk, while the remaining portion from the line x to the point e is depressed or inclined so that the point itself is below the circumference of the disk.'

The complainant no doubt appreciated the fact that he was not entitled to a patent on a saw having protected point teeth, inasmuch as it appears that he canceled these claims and changed the proposed invention to a saw with protected point teeth and acute angles between the teeth. However, the Scott patent, No. 125,338, which expired in 1889, discloses a saw with the gullet or throat having teeth meeting at an acute angle. In describing his invention Scott says:

'The nature of my invention consists in the construction and arrangement of a 'peanut thrasher and gin,' as will be hereinafter more fully set forth.'

In referring to his patent gin he also says:

'From the inclined board, G, the vines and peas fall down on a gin, composed of a series of saws, I I, working between curved or inclined bars, J J, as shown in Figures 3 and 4.'

On this point the defendant introduced Mr. Foster, an expert, who, among other things, stated that:

'Considering, however, now the specific utilization of toothed wheels associated with conveying or directing means for the purpose of detaching, for example, adhering vegetable fiber from seed, Eli Whitney is unquestionably the pioneer. In my opinion, he discovered what the problems were in this art and solved them.'

In addition to what we have said as respects this point, the Ben Hicks patent peanut stemmer, No. 688,519, also shows and describes and claims the saw peanut stemmer. On page 1, lines 9-18, he describes his invention as follows:

'My invention is an improved machine for stemming and cleaning peanuts and green peas; and it consists in the peculiar construction and combination of devices hereinafter fully set forth and pointed out in the claims.

'The object of my invention is to provide a cheap, simple, and easily operated machine which is efficient in cleaning peanuts and green peas, stemming the same, and putting them in the best condition for the market.'

On page 1, lines 95-103, he also states:

'The lower side of the trough below the slats, 25, is open. A series of stemming saws, 30, are secured on the shaft, 27, and rotated thereby, and the

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upper sides of said stemming saws operate in the spaces between the slats, 25. The said stemming saws are appropriately spaced apart, and their teeth are exceedingly fine, the said saws being similar to the saws used in cotton gins. * * * '

Page 2, lines 15-41, he further states:

' * * * Owing to the fineness of the saw...

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