30 F.2d 375 (8th Cir. 1928), 8076, McDonough v. Johnson-Wentworth Co.

Docket Nº:8076.
Citation:30 F.2d 375
Opinion Judge:BOOTH, Circuit Judge.
Attorney:A. C. Paul, of Minneapolis, Minn. (Paul, Paul & Moore, of Minneapolis, Minn., on the brief), for appellant. Stephen H. Philbin, of New York City (Fish, Richardson & Neave, of New York City, and Clapp, Richardson, Elmquist, Briggs & Macartney, of St. Paul, Minn., on the brief), for appellee.
Judge Panel:Before BOOTH, Circuit Judge, and POLLOCK and DEWEY, District Judges.
Case Date:December 14, 1928
Court:United States Courts of Appeals, Court of Appeals for the Eighth Circuit

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30 F.2d 375 (8th Cir. 1928)




No. 8076.

United States Court of Appeals, Eighth Circuit.

December 14, 1928

Appeal from the District Court of the United States for the District of Minnesota; John B. Sanborn, Judge.

Suit by Joseph G. McDonough against the Johnson-Wentworth Company. Decree of dismissal, and plaintiff appeals. Reversed, with directions.

A. C. Paul, of Minneapolis, Minn. (Paul, Paul & Moore, of Minneapolis, Minn., on the brief), for appellant.

Stephen H. Philbin, of New York City (Fish, Richardson & Neave, of New York City, and Clapp, Richardson, Elmquist, Briggs & Macartney, of St. Paul, Minn., on the brief), for appellee.

Before BOOTH, Circuit Judge, and POLLOCK and DEWEY, District Judges.

BOOTH, Circuit Judge.

This is a patent suit in which the complaint contains the usual allegations and prays for an injunction and an accounting. The patents involved are, United States patent No. 1,282,552, application filed September 7, 1917, patent issued July 5, 1921, to plaintiff, J. G. McDonough, for a machine for trade-marking lumber or timber; United States patent No. 1,400,223, application filed September 15, 1917, renewed May 23, 1921, patent issued December 13, 1921, to plaintiff for a lumber and timber trade-marking device. The trial court dismissed the bill. In its opinion filed it held both patents valid, but further held that the accused devices of defendant did not infringe either of the patents.

In this court appellee insists, as in the court below, that both patents are invalid, because the alleged inventions were anticipated by prior patents, and because of prior public uses; and, further, because the alleged inventions lacked patentable novelty. A further defense is noninfringement.

At the time of the issuance of plaintiff's patents in suit and for some time prior thereto, there was a demand in the trade for devices for trade-marking lumber. Plaintiff was a designer and manufacturer of sawmill machinery. He became interested in machines for trade-marking lumber as early as 1915, and filed applications for patents on machines for such purpose as early as 1916. In 1917 the applications for the patents in suit were filed. The first marker machines

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designed by plaintiff for trade-marking lumber were used in connection with the trimmer machines in lumber mills. In these trimmer machines the lumber moved transversely. As early as 1916 plaintiff had in mind the designing of a market machine which should mark the end of lumber moving longitudinally, i.e., directly toward the marking machine.

While the applications for the patents in suit were pending, and as early as 1917, plaintiff entered into correspondence with some of the officers of defendant or of its allied companies (belonging to the 'Weyerhauser Forest Products' association) relative to a marker machine to place a trade-mark on the ends of lumber. This correspondence continued, and in the latter part of 1920 plaintiff disclosed to some of the officials of said allied companies his pending applications for the patents now in suit. A form of contract was also drawn up between plaintiff as licensor, and the 'Weyerhaeuser Forest Products' as licensee, for the use by the license of rights under patents already granted to plaintiff for marking lumber, and also of rights under applications for patents pending. The execution of this contract was delayed from time to time and was never finally consummated. Meanwhile, however, plaintiff constructed a machine embodying the disclosures of his application under which patent No. 1,383,552 was later issued, and this machine was installed in January, 1921, in the plant of the Edward Rutledge Timber Company (one of the allied companies) at Coeur d'Alene, Idaho. This machine was experimental and crude, but was operative. It was too light in construction. A second machine was constructed under plaintiff's supervision and was installed at the same plant in April, 1921. It also was operative and was operated, but not to the complete satisfaction of the company. Time went on. Plaintiff secured his patents under the pending applications, but the contract with the Weyerhaeuser Forest Products was not executed.

Harry H. Payzant, superintendent of a factory of one of the allied companies, in 1920, and perhaps prior thereto, had at the request of one of the officials of his company turned his attention to machines for trade-marking lumber. His first machines marked the surface of the boards. Early in 1921 he made one for marking both the surface and the end of the lumber. Only one of this type was built, and it was used about an hour. In April, 1921, Mr. Payzant developed a marker machine for trade-marking lumber on its end, which is known as the Payzant first marker or the toggle marker. Machines were manufactured in considerable numbers commencing in July, 1922. A patent covering the device--No. 1,491,735-- was obtained April 22, 1924; application filed August 18, 1922.

This marking machine is claimed by plaintiff to infringe his two patents in suit.

A later marking machine, known as the second Payzant marker, was built in 1924 and went into commercial use. A patent-- No. 1,592,746-- was obtained on this second marker July 13, 1926; application filed July 14, 1924. This marking machine also is claimed by plaintiff to infringe his two patents in suit.

It may be noted in passing that the trial court was of the opinion that Payzant at the time he developed these two marking machines had knowledge of what plaintiff had done. We think the evidence is persuasive to that effect. This evidence, while not material on the question of infringement, was material on other issues in the case.

We turn from this outline of facts to the questions of major importance in the case.

Are Plaintiff's Patents Valid?

Patent No. 1,383,552 states that the object of the invention was to provide for a machine, such as a planer, handling lumber by means of a longitudinal or end of the lumber passing through, the parts of the attachment being actuated by the pressure of the moving lumber. Plaintiff sought to accomplish this purpose by a device which consists of a die set in a die carrier, the latter so mounted upon a support that it may oscillate, and standing, when at rest, directly in the path of the longitudinally moving pieces of lumber as they are fed through the planer. The resistance of the die to the moving lumber is due to the weight of the parts, and also to the action of an ordinary spring door check having connection with the die carrier . The impact of the lumber against the face of the die produces the impression in the end surface of the lumber. The piece of lumber still advancing, pushes the die carrier out of its path, and the carrier then assumes a position alongside the moving piece of lumber and in sliding contact with it until the end is reached. At this point the spring door check operates in connection with the arm to which the die carrier is pivoted so as to cause the die carrier to spring back into its original position, ready for the next piece of lumber. The accompanying Figures 2, 3, and 4 of the patent drawings, together with the following excerpts from the specifications of the patent, make clear the operation:

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'In carrying out my invention, I provide a suitable base 8 secured to a support 9 adjacent to the machine. In this base I mount an upright stud 10. A hub 11 is journaled on said stub and is provided with an arm 12 having an upright pivot pin 13 for a die carrier 14. The carrier is centrally mounted on the stud and is somewhat elongated in form and preferably provided at each end with dies 15 which are curved slightly to fit the corresponding end surfaces of the carrier. These dies may be rigidly or removably mounted on the ends of the carrier, as preferred. The hub 11 is secured to the barrel 17 of an ordinary spring door check of the type usually used for closing a door without slamming.'

'When the piece of lumber or timber contacts with the die, as shown in Fig. 2, it will gradually swing it from the position shown in Fig. 2 to that illustrated in Fig. 3, where the die is indicated as having...

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