American Potato Dryers v. Peters

• Decision Date: 13 September 1950
• Docket Number: No. 6051.,6051.
• Citation: 184 F.2d 165
• Parties: AMERICAN POTATO DRYERS, Inc., et al. v. PETERS.
• Court: U.S. Court of Appeals — Fourth Circuit

184 F.2d 165 (1950)

AMERICAN POTATO DRYERS, Inc., et al. v. PETERS.

No. 6051.

United States Court of Appeals Fourth Circuit.

Argued June 13, 1950.

Decided September 13, 1950.

COPYRIGHT MATERIAL OMITTED

Gordon W. Daisley, Washington, D. C., and Oscar Leach, Raleigh, N. C. (Smith, Leach & Anderson, Raleigh, N. C., on the brief), for appellants and cross-appellees.

Charles F. Meroni, Chicago, Ill. (Hill, Sherman, Meroni, Gross & Simpson, Chicago, Ill., Clem B. Holding and Bailey & Holding, all of Raleigh, N. C. on the brief), for appellee and cross-appellant.

Before PARKER, Chief Judge, and SOPER and DOBIE, Circuit Judges.

PARKER, Chief Judge.

These are cross appeals in a patent case. The plaintiff in the court below was Frederick C. Peters, holder of Arthur patents Nos. 2,228,192 and 2,326,115, relating respectively to a process for drying potatoes for shipment and a machine for carrying out the process. Plaintiff asked damages for infringement of the patents and for breach of confidence and breach of contract by defendants with respect to the subject matter which they embrace. Defendants are Broadus Wilson and American Potato Dryers, Inc., a corporation which he controls. In addition to denying liability to plaintiff, defendants alleged that plaintiff had been guilty of violating the anti-trust acts in connection with his ownership of the patents and asked damages on that account. The judge below made extensive findings of fact in which he held that the patents sued on were invalid, that, even if valid, they had not been infringed, that defendants were not estopped to deny their validity, and that there was no basis for recovery by plaintiff on account of breach of confidence or breach of contract or by defendants on account of the alleged violations of the anti-trust acts. From judgment entered on these findings both sides have appealed; but plaintiff raises no question as to the correctness of the holding as to the invalidity of the machine patent.

While many matters have been discussed in the briefs and arguments of counsel, the case before us, when properly analyzed, is narrowed to three questions: (1) whether, the process patent sued on is valid; (2) whether because of dealings had between the parties, defendants are estopped to question the validity of the patent or plaintiff is entitled, irrespective of its validity, to recover damages of defendants because of breach of confidence or breach of contract; and (3) whether defendants are entitled to recover damages of plaintiff on account of violations of the anti-trust laws. We think that all of these questions should be answered in the negative.

1. The Validity of the Patent.

The patent in suit, No. 2,228,192, issued to A. F. Arthur and assigned to plaintiff, was applied for March 29, 1940, and granted January 7, 1941. It relates to the washing of dirt from potatoes and drying them by the use of a current of hot air. To wash potatoes before they are shipped to market adds to their value, but the moisture which clings to them after they are washed is conducive to soft rot or decay. It is important, therefore, that, if the potatoes are washed, they be dried afterwards; and the process of the patent is to dry them by passing them through a tunnel in which they come in contact with hot air flowing in the opposite direction. It is contended that this process results not only in drying the potatoes but also in producing a biological change which further protects them from decay. Claims one and five, which may be taken as typical, are as follows:

"1. The process of treating potatoes for shipment and to aid in preventing soft rot during shipment which comprises moistening whole potatoes so that the skin of each potato is covered with a film of moisture adapted to serve during subsequent steps of the process as a heat insulator to prevent cooking of the body of the potato, then conveying the moistened potatoes through a confined area, subjecting the potatoes as they travel through said area to a heated blast of air for a period of time approximating four minutes and of a temperature of substantially 100 to 145 degrees F. and of a velocity of substantially 1200 feet per minute to evaporate the moisture from the skins of the potatoes by skin drying the potatoes and whereby substantially one-half pound of moisture is removed from each bushel of potatoes, and utilizing the evaporation of said moisture to preclude the heating and cooking of the body of the potato."

"5. In a process of treating raw potatoes to aid in preventing deterioration while preserving the natural appearance of the potatoes, the steps of disposing the potatoes in a predefined area and subjecting each potato uniformly over its entire surface to a large volume of heated relatively high velocity air of a temperature approximately 100 degrees F. for a short period of time sufficient to remove rapidly moisture from the outer and periderm layers of cells of the potato, and just prior to discharge of the potato from said area causing the dried outer cells of the potato to be subjected to a higher temperature short of that which would cook the starchy body of the potato but which will cause a biological change in the formation of the outer and periderm layers of cells of the potato to render the same resistant to the ingress of deteriorating bacteria."

The patent is correctly analyzed in the findings of the learned judge below as follows: "The only acts or physical operations actually performed on the potatoes in carrying out the process disclosed in patent No. 192 are as follows: (1) moistening or washing whole potatoes so that the skin of each potato is covered with a film of moisture, (2) conveying the moistened potatoes through an enclosed drying chamber, (3) subjecting the potatoes as they travel through the chamber to a blast of heated air moving in the opposite direction to that of the potatoes, the air having (a) a temperature of approximately 145 degrees F. upon entry into the chamber and an exit temperature of about 100 degrees F., and (b) a linear velocity of approximately 1200 feet per minute, and (4) keeping the potatoes in the chamber for a period of approximately four minutes. The specification of patent No. 192 also describes, and the claims include, certain other alleged features of the process, such as: (a) evaporating the moisture from the skins of the potatoes by skin-drying the potatoes and thereby removing substantially one-half pound of moisture from each bushel of potatoes, (B) utilizing the evaporation of said moisture to preclude the heating and cooking of the starchy body of the potatoes, and (C) causing the heat of the heated air to act on the outer layers of cells of the potatoes as they are drying to cause a biological change or a change of cell construction or formation therein such as to render the potatoes resistant to the ingress of soft rot bacteria. The weight of the evidence is contrary to the teaching of patent No. 192 that the drying procedure specifically described therein is effective to cause such a biological or other change in the outer layers of cells of the potatoes as they are dried."

We would not be justified, on the evidence before us, in reversing the finding of the lower court with respect to the biological change produced in the potatoes by the process of the patent; but we regard this as immaterial, in any event, since the biological change produced in the potatoes, if any there be, is the result of the process and not a part thereof and is therefore not patentable. Le Roy v. Tatham, 14 How. 156, 174-175, 14 L.Ed. 367. The process of the patent, then, is nothing more than using hot air to dry potatoes being carried on a conveyor in a tunnel, and we agree with the court below that no patentable novelty was involved in such a process. The evidence shows beyond question the use of heated air for drying potatoes, which had been washed in preparation for marketing, as early as 1930 by the Idaho Packing Co. at Pocatello, Idaho. While the specific details of the process at Pocatello are not shown in evidence, the evidence does show that a process which is substantially the process of the patent was in use by John F. Stambaugh at McGuffey, Ohio, in 1934 and by the Gould's Growers, Inc. of Goulds, Florida, in 1937. Goulds, Florida, is the town in which it is claimed that the process of the patent was developed; and the evidence shows that more than a year before the patentee claims to have reduced his ideas to practice, the process for which his patent was issued was being publicly used in the town in which he was operating. With respect to the Stambaugh and Goulds uses of the process, the trial court found the facts as follows:

"11. The testimony and exhibits concerning the Stambaugh dryer establish that at least as early as 1936 Stambaugh publicly practiced a process of treating potatoes, for shipment which included the steps (1) washing the potatoes, (2) conveying them through an enclosed tunnel for a distance of 110 feet, (3) blowing air of relatively high temperature through the tunnel countercurrent to the movement of the potatoes by means of a fan having an output velocity of 1800 feet per minute, and (4) subjecting the potatoes to the heated air for a period of approximately 4½ minutes, and that, under normal weather conditions, the potatoes thus treated were satisfactorily dried, had no visible moisture on them, and were well enough dried to enable their packing in paper bags. In view of the non-critical character of the specific values of air temperature and velocity and time of treatment of the potatoes set forth in the claims of patent No. 192, and since the alleged production of a biological or other change in the outer layers of cells of the potatoes, if it occurs under the conditions specified in the claims, would inherently occur in any equivalent procedure, the method of operation of the Stambaugh dryer embodied every...