Bain v. MA HANNA COMPANY

• Decision Date: 01 March 1962
• Docket Number: Civ. A. No. 752.
• Citation: 203 F. Supp. 379
• Parties: Charles Kremer BAIN, Plaintiff, v. The M. A. HANNA COMPANY, Defendant, and Blaw-Knox Company, Intervenor.
• Court: U.S. District Court — Western District of Michigan

203 F. Supp. 379

Charles Kremer BAIN, Plaintiff, v. The M. A. HANNA COMPANY, Defendant, and Blaw-Knox Company, Intervenor.

Civ. A. No. 752.

United States District Court W. D. Michigan, N. D.

March 1, 1962.

Grand, Peper, Martin & Roudebush, Kingsland, Rogers & Ezell, St. Louis, Mo., Eldredge & McDonald, Marquette, Mich., for plaintiff.

Blenko, Hoopes, Leonard & Buell, Pittsburgh, Pa., Paul Rahm, Iron Mountain, Mich., for defendant.

KENT, Chief Judge.

This is an action for damages for alleged infringement of Bain Patent No. 2,667,750. The patent covers a "method and apparatus for sinking mine shafts", and was issued February 2, 1954. After the complaint was filed the plaintiff, a resident and citizen of St. Louis, Missouri, consented to the intervention of the Blaw-Knox Company, a Delaware corporation, and the intervening defendant became the actual defendant in the case in place of M. A. Hanna Company, an Ohio corporation. Prior to trial it was agreed by counsel for all parties that any error in the description of the original defendant or the nature of its entity, whether a corporation or partnership, or the name of the actual owner of the premises involved, could be considered as waived by the Court, and that the Court should limit itself to the determination of the validity of the patent, whether the patent was infringed by the intervenor, (hereinafter referred to as defendant) Blaw-Knox Company, and the extent of damage sustained by the plaintiff, if any.

The alleged infringement took place during the construction of a mine shaft described as the Homer-Wauseca shaft at Iron River, Michigan, within the Northern Division of the Western District of Michigan. The alleged acts of infringement are claimed to have occurred during the years 1956 to 1959. This Court is asked to consider only Claims 1, 2, and 3 of the patent in suit, all of which relate to a method for the sinking of a concrete lined circular mine shaft.

In the application it is stated:

"It has become customary to provide a mine shaft with a lining along the walls thereof of concrete so as to seal off water seepage and prevent crumbling and the like. The usual practice has been to excavate the shaft to its full depth and then to apply the concrete lining to the shaft walls, starting at the bottom and working upward to the top of the shaft.

"An object of this invention is to provide a method whereby a concrete lining may be applied to the shaft wall as the excavation of the shaft proceeds, working from the top downward."

The claims of the patent upon which the plaintiff relies, read as follows:

"1. The method of sinking mine shafts, comprising, excavating a shaft section to a predetermined depth, rigidly mounting a plurality of guide beams in vertical position along the sides of the excavated section, securing concrete-supporting bottom forms to the lower portions of said beams above the bottom of said beams to extend along the wall of said excavated section but spaced therefrom, said bottom forms closing the space between said upright forms and said wall, and pouring concrete between said upright forms and said wall to mold a shaft-lining section having its lower end spaced above the bottom of said excavated shaft section.

"2. The method of sinking mine shafts, comprising, excavating a shaft section to a predetermined depth, rigidly mounting a plurality of guide beams in vertical position along the sides of the excavated section, securing concrete-supporting bottom forms to the lower portions of said beams above the bottom of said excavated section, securing upright forms to said beams to extend along the wall of said excavated section but spaced therefrom said bottom forms closing the space between said upright forms and said wall, pouring concrete between said upright forms and said wall, excavating a succeeding shaft section below said first section, and in like manner molding a succeeding shaft-lining section below the preceding one.

"3. The method of sinking mine shafts, comprising excavating the shaft for a predetermined depth, rigidly mounting a plurality of guide beams in vertical position along the sides of the shaft, securing a lower concrete-supporting ring to the lower ends of said guide beams, securing removable forms to said guide beams, said forms extending along the shaft wall but spaced therefrom, pouring concrete between said forms and the shaft wall to mold a shaft-lining section, after the concrete has set removing said forms and said lower ring, and repeating the foregoing sequence of operations to mold a succeeding shaft-lining section below the preceding one."

Defendant takes the position that the patent in suit is invalid as lacking invention, not because the patent reads directly upon any previously issued patent, but because all of the elements of the plaintiff's patent have been previously described in previously issued patents and in publications available at the time of the plaintiff's application.

Defendant relies upon certain prior trade publications dating back to 1894, and also upon prior United States Patents.¹ Defendant further takes the position that the method used by the defendant in the sinking of the Homer-Wauseca shaft does not directly or by the manner of use infringe upon plaintiff's patent.

The evidence demonstrated that the patent in suit describes a method whereby mine shafts can have concrete linings applied while the shaft is being excavated, working from the top downward, in the manner described in Claims 1, 2, and 3 of plaintiff's patent in suit. The evidence further showed that the defendant did not utilize "guide beams rigidly mounted in a vertical position * * * securing concrete supporting ring to the lower ends of said guide beams". The evidence further demonstrated that the defendant did not secure removable forms to guide beams. The use of the method described in the plaintiff's patent as demonstrated by the exhibits received in evidence and as described in the testimony requires that guide beams be secured by bolts, in holes previously provided for, to the previous pour (or cast) in a rigid position, to the desired depth previously excavated. To the bottom of these guide beams, according to the plaintiff's proofs, is secured a template or ring which according to plaintiff's proofs is designed to carry the weight of the wet concrete when rigidly fixed in position by hydraulic jacks placed horizontally against the rock wall of the previously excavated area. After the beams are affixed in plumb to the previous pour and the template or ring is rigidly in place removable forms are then attached to the guide beams in quadrants providing for the pouring of the concrete liner in the area between the previous pour and the template.

The evidence demonstrated that the defendant's method required the use of "anchor" or "suspension" chains attached to the previous pour with bolts inserted in holes previously provided for, that from the anchor chains was suspended a collapsible circular form of the desired diameter when expanded after the form had been suspended from the bolts in the previous pour (cast). There was a narrow beveled ring at the bottom of defendant's form which could not, was not intended to, and did not carry the weight of the concrete. The area of contact and support at the bottom of the newly poured concrete was primarily with the muck and sand placed at the bottom of the form to fill in the area beneath the form. The form was wedged into place in position plumb with the previous pour by the use of wooden blocks wedged against the muck and sand beneath the form. The horizontal jacks described in the Bain patent in suit were not utilized in the Homer-Wauseca shaft.

It was conceded by plaintiff's counsel that the method used in the sinking and lining the Homer-Wauseca shaft by the defendant was not an exact copy of the method for sinking and lining shafts described in Claims 1, 2, and 3 of the Bain patent. It is plaintiff's claim that the method actually used was nothing more or less than an adaptation of the Bain patent method.

It is the plaintiff's theory and claim that the use of anchor chains, the use of a collapsible form, the use of a beveled ring at the bottom wedged against the muck in the previously excavated area was equivalent to the method described in the patent in suit, i. e., the use of guide beams rigidly mounted, to which is attached a template or bottom ring carrying the weight of the poured concrete and the use of quadrant forms as described in Claims 1, 2, and 3 of the plaintiff's patent.

It was with difficulty that the Court determined from plaintiff's proofs and arguments the elements of novelty upon which the plaintiff relied. It was the Court's conclusion and is the Court's finding based upon the evidence that plaintiff claims that the rigidly mounted guide beams utilized for the purpose of assuring that the new pour would be plumb with the previous pour, and the circular template or bottom ring used in part for the same purpose in conjunction with the guide beams when braced against the wall of the excavation by horizontal jacks, and the template used in part to support the wet concrete were the novel features upon which plaintiff relied, having in mind that the rigid guide beams could be used in conjunction with forms attached in quadrants to obtain the desired diameter. It was conceded that quadrant forms as used in the method described by Bain were merely an utilization of a method of forming long known to the art.

Under the patent law an inventor is entitled to the benefit of his patent and is entitled to have those benefits protected by the Courts if his patent is valid and infringed. 35 U.S.C.A. 284; Horvath v. McCord Radiator & Mfg. Co., C.A. 6, 100 F.2d 326; Birdsall et al. v. Coolidge, 93 U.S. 64, 23 L.Ed. 802; Bros Incorporated v. W. E. Grace Manufacturing Company, C.A. 5, 261 F.2d 428, 433. It is defendant's theory that the...