Priebe & Sons Co. v. Hunt

• Decision Date: 04 May 1951
• Docket Number: No. 14223.,14223.
• Parties: PRIEBE & SONS CO. v. HUNT et al.
• Court: U.S. Court of Appeals — Eighth Circuit

188 F.2d 880 (1951)

PRIEBE & SONS CO. v. HUNT et al.

No. 14223.

United States Court of Appeals Eighth Circuit.

May 4, 1951.

Casper W. Ooms, Chicago, Ill. (Owen J. Ooms, Chicago, Ill., and Benjamin F. Swisher, Waterloo, Iowa, on the brief), for appellant.

F. O. Richey and H. F. McNenny, Cleveland, Ohio (Richey & Watts, Cleveland, Ohio, on the brief), for appellees.

Before GARDNER, Chief Judge, and THOMAS and RIDDICK, Circuit Judges.

GARDNER, Chief Judge.

This appeal is from a judgment holding Hunt Patent No. 2,300,157, for "Feather-Picking Apparatus for Fowls and the Like," valid and infringed by certain chicken-picking machines used by appellant but built by others. The parties will be referred to as they were designated in the trial court.

Plaintiff Anna May Hunt, Administratrix, is the owner and plaintiff Greenbrier Company is the licensee of the Hunt patent. The defendant is a poultry processor. Defendant challenged the validity of the patent, denied infringement, and affirmatively pleaded patent misuse. By stipulation of the parties the case was tried on the record made in an earlier suit under the same patent against Armour and Company, Hunt v. Armour & Co., D.C., 90 F.Supp. 767. The trial court found all the issues in favor of plaintiffs and entered judgment enjoining defendant from using or causing to be used any poultry-picking machines embodying the invention described in the Hunt patent and adjudging that plaintiffs recover general damages for the infringement.

The Hunt patent contains 19 claims but prior to the institution of this suit claim 16 of the patent was disclaimed. Defendant was charged with the infringement of claims 2, 3, 7, 8, 10, 12, 14, 17 and 19 by reason of its use of machines and fingers for such machines manufactured respectively by F. J. Albright Company and Gordon Johnson Company. The device disclosed by the patent comprises a hollow drum mounted in a frame and driven by an electric motor. From the outside surface of the drum extend flexible fingers arranged completely around the drum and extending outward at an angle or inclination of 14 degrees. The fingers are arranged in spaced rows, each row being staggered with reference to the adjacent rows. In the preferred form the fingers have a tapered bore extending from the outer or free end almost as far as the corrugations extend. The specifications recite that solid fingers would remove feathers but that the operation was speeded by the use of hollow fingers.

Before a chicken is processed it is dipped in hot water, the temperature varying, dependent upon whether the chicken is being prepared for immediate sale or for cold storage. The operator places the chicken against the fingers projecting from the revolving drum and by turning the chicken to different positions all parts of its body are contacted by the fingers of the machine and the feathers removed by a rubbing or scrubbing action. When higher temperatured water is used the machine removes practically all of the feathers within a period of from eight to ten seconds and the machine does a noticeably better job of picking than does the hand picker. The court found that, "Until the Hunt patent, and the disclosures made by Hunt, no machine had been built or constructed which successfully picked fowl by mechanical means. Such prior art as has been disclosed consists entirely of `paper' patents for machines that were either never built or never operated in accordance with the disclosures of those patents."

The court also found that the machine defined by the finger claims of the patent "were new and useful, accomplished important new results and embodied patentable invention. The patent in suit is a pioneer patent and basic in nature." The court further found that, "The machine of the Hunt patent met with immediate commercial success and has continued to meet with commercial success."

In seeking reversal defendant renews the contentions urged by it in the trial court.

The court found that the Hunt patent is a pioneer patent and basic in nature. This is probably a mixed question of law and fact. The finding is not specifically challenged on this appeal but we think it important to consider this holding of the court at the very inception of our consideration of the issues. A primary or pioneer invention is entitled to a broad and liberal construction and to a broad and liberal range of equivalence and is not to be limited to the precise device and instrumentality disclosed. Dean Rubber Mfg. Co. v. Killian, 8 Cir., 106 F.2d 316, certiorari denied, 308 U.S. 624, 60 S.Ct. 380, 84 L.Ed. 521; Flowers v. Austin-Western Co., 7 Cir., 149 F.2d 955; Mason Corporation v. Halliburton, 10 Cir., 118 F.2d 729. We think the finding is sustained by abundant evidence. This device performed a function never successfully performed by an earlier invention. It was of such novelty and importance as to mark a distinct forward step in the progress of the art. It has in fact revolutionalized the art and was the first successful solution of the problem involved.

We should perhaps here observe that while this patent is a comparatively new one, it has been the subject of much litigation. This litigation will be found reflected in the following reported cases: Campbell v. Mueller, 6 Cir., 159 F.2d 803; Hunt v. Armour & Co., 7 Cir., 185 F.2d 722; Mueller v. Campbell, D.C., 68 F.Supp. 464; Mueller v. Campbell, D.C., 68 F.Supp. 475; Mueller v. Wolfinger, D.C., 68 F.Supp. 485; Mueller v. Pickwick, Corp., D.C., 94 F.Supp. 742; Hunt v. Armour & Co., D.C. 90 F. Supp. 767; Mueller v. Wolfinger, D.C., 91 F.Supp. 971; Hunt v. Priebe & Sons, D. C., 92 F.Supp. 767.

Judge Duffy, speaking for the Court of Appeals for the Seventh Circuit, in Hunt v. Armour and Company, supra, in a searching opinion reviews the many cases which had passed upon the validity and scope of the Hunt patent.

In view of the unanimity of judicial reaction to the various contentions urged against the validity and scope of this patent, it would be presumptuous in us to attempt to add anything to the law or literature as applied to this patent. While these decisions may not be binding upon us they are certainly persuasive and should not lightly be brushed aside. Faulkner v. Gibbs, 338 U.S. 267, 70 S.Ct. 25, 94 L.Ed. 62; Republic Steel Corp. v. Farval, Corp., 6 Cir., 179 F.2d 719. Neither may the findings of the trial court as to validity and infringement be set aside unless clearly erroneous. Buder v. Becker, 8 Cir., 185 F.2d 311; Hunt v. Armour & Co., 7 Cir., 185 F.2d 722.

The prior art relied upon, including the Bouda and Richards patents, was before the Patent Office and likewise before each of the courts in the above cited cases. District Judge Shaw in Hunt v. Armour & Co., 90 F.Supp. 767, 769, in referring to the so-called prior art relied upon, among other things said: "It is my holding, and the record shows conclusively, that until the Hunt patent and the disclosures made by Hunt there was never any machine built that successfully picked chickens mechanically. Such prior art as has been disclosed consists entirely of `paper' patents, none of which has ever been built or operated in accordance with the disclosures of those patents."

We are in accord with this view as expressed by Judge Shaw, based upon the same record as is now before us, and there being no prior art, the Hunt patent is entitled to a liberal construction.

Having in mind the rule applicable to the construction of a basic or pioneer patent, we turn to a consideration of the question of infringement by the devices used by the defendant. There are two classes of claims embodied in the patent — machine claims and finger claims. Claims 2 and 3 are said to be typical of the machine claims. They read as follows:

"Claim 2. A feather plucking device comprising a rotatable member having secured thereto means projecting from the outer surface thereof, said means being substantially cylindrical in shape, of elastic material, and having projections on the surface thereof, a portion of said means adjacent one end thereof being hollow.

"Claim 3. A feather plucking device comprising a rotatable member having secured thereto means projecting from the outer surface thereof, said means being substantially cylindrical in shape, of elastic material, and having projections on the surface thereof, a portion of said means having a thin wall and the remainder thereof having thicker wall portions."

No single claim may be said to be typical of the finger claims. Thus, Claim No. 12, reads as follows: "Claim 12. A poultry plucking finger member of the character described comprising a substantially cylindrical body formed of elastic material and having projections on the outer surface thereof, a portion of said body throughout its length being hollow, the walls of the body being sufficiently thick to avoid collapse in a direction parallel to the longitudinal axis when the finger is in use."

It is observed that this claim describes the fingers as hollow. However, Claims 3, 8, 14, 17 and 19 do not recite the hollow feature.

It is strenuously argued that the accused devices do not infringe because the fingers on those devices are not hollow. This argument assumes that the fingers used by the defendant are solid. The finger used in the Albright device is a trough-like structure, while the finger used in the Johnson device is cut away at the back. Each of these fingers in a sense at least is hollowed on the outside. Part of the material in these devices is cut away. In the hollow finger the cut is on the inside and in the other finger the cut is on the outside. Even in patent law, substance is more important than form and should control over mere words. An expert witness was interrogated...