Excelsior Steel Furnace Co. v. Williamson Heater Co.

• Decision Date: 03 November 1920
• Docket Number: 3250.
• Citation: 269 F. 614
• Parties: EXCELSIOR STEEL FURNACE CO. v. WILLIAMSON HEATER CO.
• Court: U.S. Court of Appeals — Sixth Circuit

269 F. 614

EXCELSIOR STEEL FURNACE CO. v. WILLIAMSON HEATER CO.

No. 3250.

United States Court of Appeals, Sixth Circuit.

November 3, 1920

On Petition for Rehearing, January 14, 1921.

On Petition for Rehearing.

Benjamin T. Roodhouse, of Chicago, Ill. (Benjamin, Roodhouse & Lundy Benj. T. Roodhouse, and John A. Brown, all of Chicago, Ill and Wm. F. Madden, of Cincinnati, Ohio, on the brief), for appellant.

Wm. R Wood, of Cincinnati, Ohio (Wm. R. Wood, of Cincinnati, Ohio, and Wood & Wood, of Athens, Ohio, on the brief), for appellee.

Before KNAPPEN and DENISON, Circuit Judges, and KILLITS, District judge.

KILLITS District Judge.

The appellant, the Excelsior Steel Furnace Company, whom we will hereafter designate as the plaintiff, sued the appellee, the Williamson Heater Company, a corporation, whom we will hereafter designate as the defendant, in the District Court on a bill charging infringement of two patents, unfair competition, conspiracy to infringe patents, fraudulent acquisition of secrets having to do with the mechanism, dimensions, and method of operating the patented machines and all other such machines not patented, and conspiracy to obtain such information. From the decree of the District Court, dismissing the bill, plaintiff appeals.

Although the question occupies a great deal of the record and argument in this case, we do not find it difficult to dispose of that part of the bill which is predicated upon the alleged piracy, in several forms, by the defendant of plaintiff's business methods. In a very large measure the charge centers upon the employment by the defendant of one Holub, a workman from plaintiff's factory, through whom the defendant is alleged to have introduced into its factory practices and to have constructed machines closely following those used in plaintiff's factory. Unless Holub's engagement by defendant was actionably reprehensible under settled principles of equity, plaintiff has no case on any of the grounds involving piracy. Without venturing an opinion upon the ethics of the situation, we are satisfied, with respect to this phase of the case, to leave it upon the judgment and opinion of the learned District Judge.

The case on its facts does not rise to a dignity which would invoke the rule of such cases as Herold v. Herold China & Pottery Company (decided by this court) 257 F. 911, 169 C.C.A. 61. The practices and machines, knowledge of which defendant may have gained through its employing of Holub, were not in the nature of trade confidences. Some of the important practices which it is charged the defendant introduced into its factory operations through unfair use of Holub were disclosures made by plaintiff through the patent office. All of those alleged to have been fraudulently appropriated by defendant were usages more or less open in plaintiff's factory. At least they were not restricted to the activities of confidential employes. They were secret only to the extent that many manufacturers are accustomed to exclude the general public from an inspection of their methods. There is no proof here at all of any contractual relation in Holub which involved an agreement by him not to disclose these matters, as in Nulomoline Co. v. Stromeyer, 249 F. 597, 161 C.C.A. 523. The court below also rightfully found that the general charge of unfair competition was not sustained.

Of the patents sued upon, plaintiff seems to have abandoned its case as to that known as Scherer, No. 728,020, but presses its demand for reversal of the decree below and for relief against the alleged infringement of its rights under Scherer, No. 729,964, filed December 18, 1902, and granted June 2, 1903, machine for cutting sheet metal. The court below held that this patent, which is owned by the plaintiff as assignee, is void. The alleged invention is claimed to be an improvement in machines for cutting sheet metal, with the main object to be provided that sheet metal may be readily cut in any pattern through a novel construction, which in the language of the specification is 'particularly adapted to the cutting of sheet metal in long, irregular curves'; the inventor saying that it is used 'principally for cutting sheet metal in proper shape for sheet metal elbows of large dimensions.'

Of the anticipations in the prior art cited, the one principally depended upon as specially important is that to Chambers and Bullard, No. 730,874, allowed June 16, 1903, two weeks after the Scherer allowance. The application for this grant was filed June 6, 1902, or six months prior to the filing of Scherer's application. The two applications were in the same classification and were for the same general class of improvements. They pended in the Patent Office at the same time, but seemed not to have been brought into contact with each other. Of course, as far as they are seen to interfere as to valid invention, the Chambers and Bullard patent, having the earlier application, has priority; the record before us indicating nothing to the contrary. As the case is presented to us, and as we also view it, so far as Scherer has avoided the anticipation of Chambers and Bullard, he is not in conflict with the other references, and, on the record, we are to read the Scherer grant as in a field still further restricted by Chambers and Bullard.

The grant under consideration has 10 claims. The problem with which it deals is to provide cutting rollers to follow a curved track, which determines the pattern, to the end that the cut product, when properly edged and rounded, may make suitable sections of an elbow to such sheet metal pipes as are used in hot-air furnaces. The machine cuts these sections so successfully that, when they are edged and connected up, elbows and turns in the completed pipe are readily produced in varying angles and directions.

The details of the Chambers and Bullard machine are a suitably supported table, in front of which is a shelf for a second table supported by brackets; a movable pattern plate, clamped through slots in the table, for guides or tracks which form the pattern, these tracks being arranged in relation to each other to outline the cut to be made; clamps controlled by threaded rods, supported on the under side of the table by bearings; a cutting device, provided with cutting rolls and suitable means for revolving the same; a wheel or roller to support the cutting machine, which travels on the supplementary table or shelf; rollers to further support the cutting machine, and which travel on the guides or tracks; other guide rollers suitably provided, which guide and hold the cutting machine in a position while it is being operated that it does not tend to bind on the tracks, or to displace the cutting shears or rolls, or to draw the metal operated on.

In most particulars the alleged invention in issue here is similarly or equivalently equipped, and, only as it may be inventably distinguished in any essential detail from the reference in question, may the Scherer grant be sustained. We are of the opinion that such a distinction should be made and the grant upheld in some measure as a patentable improvement over Chambers and Bullard.

The special distinction between the two machines is in the manner of adjusting the cutter head to effect a cut which definitely follows the pattern. In Chambers and Bullard the cutter head is rigid on the carriage, but Scherer mounts it on a frame which is adjusted slidingly on the carriage. The effect is to permit a simultaneous movement of the cutting mechanism longitudinally as the carriage follows the track and radially of the curve of the track. This keeps the cutter always directly over the curving track, a result secured from disadjustment by vertical rollers, which are attached to the sliding cutter frame and which span the track.

This is, we think, a patentable improvement. The Chambers and Bullard device was designed for the cutting of thin metal plates or streaks to form the skin of a boat. For that purpose only an approximate mate identity in curves between the pieces cut and the pattern is necessary, because in using the section or streaks in building up the boat's skin overlapping was employed, and even fairly substantial departures...