Austin Machinery Co. v. Buckeye Traction Ditcher Co.
| Decision Date | 09 October 1926 |
| Docket Number | No. 4315.,4315. |
| Citation | 13 F.2d 697 |
| Parties | AUSTIN MACHINERY CO. v. BUCKEYE TRACTION DITCHER CO. |
| Court | U.S. Court of Appeals — Sixth Circuit |
John C. Carpenter and Will R. Wood, both of Cincinnati, Ohio (Munday, Clarke & Carpenter, of Chicago, Ill., and Tracy, Chapman & Welles, of Toledo, Ohio, on the brief), for appellant.
Chas. W. Owen, of Toledo, Ohio (Owen, Owen & Crampton, of Toledo, Ohio, on the brief), for appellee.
Before DENISON, DONAHUE, and MOORMAN, Circuit Judges.
The court below dismissed the infringement suit brought by the appellant, as plaintiff, based upon the Bentson patent, No. 1,246,527, dated November 13, 1917, for an improvement in trenching machines. This patent had to do solely with an improvement, consisting of a spring cleaning device, by which the buckets on the continuous chain would be automatically cleaned by a resilient scraper. The court found that the patent involved invention and was infringed, and those points are not discussed in this court; but the patent was found invalid because of sale or public use by the inventor more than two years before the application. This two-year period began January 10, 1911.
The general legal principles involved are well settled. If the critical public use is by or under the control of the inventor, and for no longer period than is reasonably necessary to determine by experiment whether the invention is complete, or requires modification or change before final adoption, or if the sale, though otherwise complete, reserves to the inventor a similar right of experimentation and substitution, then, although there technically may be public use or sale, that which has happened is within the implied reservation in the statute, and does not invalidate the patent. Smith & Griggs v. Sprague, 123 U. S. 249, 256, 8 S. Ct. 122, 31 L. Ed. 141; Jenner v. Bowen (C. C. A. 6) 139 F. 556, 561, 71 C. C. A. 540. The proper extent of such experiment will depend upon the subject-matter. Since the durability of a pavement can only be determined by long use, the maximum period of test and experiment may be had (Elizabeth v. Pavement Co., 97 U. S. 126, 24 L. Ed. 1000); while, if every question involved will be answered by a few minutes' or a few hours' test, then the allowable period is reduced to the minimum (Jenner v. Bowen, supra).
Properly to apply these rules to the unusual and probably unique facts of this case requires a careful statement. It is mainly in the inferences to be drawn from the facts, rather than as to the facts themselves, or as to any legal rules, that we find ourselves unable to agree with the trial court.
The inventor, Bentson, was superintendent of plaintiff's predecessor, having charge of its factory near Chicago, where it was manufacturing a line of machinery, including these ditch-digging or trenching machines. During the summer of 1910 it produced a smaller model intended for ditches in farm draining. In September, 1910, it had not only developed and completed some machines of this model, but had improvements, by way of changes or attachments, which were in process of development, and which it intended, if successful, to attach to this and other models. It was desirable to test these improvements, not only on the company's testing ground at the factory, but under the varied conditions that would arise in the field, with different soils and unknown difficulties. Anderson had work of this kind available not far from the factory, and wanted to buy a machine, but had no means with which to make the requisite down payment; Bentson saw the opportunity for extending his testing field, and proposed to Anderson an arrangement which was, as between them, in substance a partnership. He furnished to Anderson the money for the down payment. Anderson bought the machine, taking the bill of sale thereof, running to him, and giving a chattel mortgage to the company for the deferred payments, and it was arranged that the operating profits should be used, first, to pay Anderson a daily wage; second, to pay the unpaid purchase price; third, to repay to Bentson his advance, with interest; and, fourth, the remainder to be equally divided between the two.
The machine so sold and delivered did not contain the improvement now in question, or some others that were more or less definitely in mind. That whole subject was covered by an oral understanding by Anderson with Bentson, who was acting for himself and for the factory. As somewhat vaguely stated by Bentson and Anderson, it was arranged that the machine was to have all the improvements made in 1910; in exchange for this Bentson and the company had the right to subject the machine to use for their experiments in determining what were and what were not desirable improvements. In return for the present help received from Bentson, and the indefinite expectation of additional improvements and attachments, Anderson was willing to subject his free use of the machine to this burden. Bentson was willing to risk his money in furtherance of whatever personal benefit he might indirectly get from perfecting the contemplated improvements, and the company was willing to let Anderson have the additional improvements, if and when perfected, in exchange for his co-operation in permitting the use of his machine for field experiments.
The machine was delivered and went to work a few miles from the factory about mid-September, 1910, and continued at work in this vicinity more or less steadily for a period of six or seven weeks. During this period Bentson was very frequently observing its work and conducting experiments upon it. During this period three different attachments or improvements were added, and after trials and changes were finally abandoned.1 Perhaps as the result of watching this work, or perhaps from some previous idea, Bentson planned out the spring scraper in question. A single device was built with parts forged in the blacksmith shop, and probably in September was put in the machine. From time to time several changes were made in this device — not, it is true, in matters affecting the theory of its operation, but in matters of shape, attachment, and strength, necessary to determine whether the invention was practical and useful, so as to be of commercial...
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