C. & A. Potts & Co. v. Creager

• Decision Date: 23 October 1899
• Docket Number: 625.
• Citation: 97 F. 78
• Parties: C. & A. POTTS & CO. v. CREAGER et al.
• Court: U.S. Court of Appeals — Sixth Circuit

97 F. 78

C. & A. POTTS & CO. v. CREAGER et al.

No. 625.

United States Court of Appeals, Sixth Circuit.

October 23, 1899

This is an appeal from a decree dismissing a bill for the infringement of a patent. The case has a somewhat peculiar history. The complainant, Potts & Co., an Indiana corporation, filed its bill against the firm of Jonathan Creager's Sons, of Cincinnati, to restrain the infringement of patent No. 322,393, issued July 14, 1885, to Clayton Potts and Albert Potts, for a clay disintegrator; and also of a patent issued August 23, 1887, to the same inventors, for an improvement upon the prior patent. Issues were made up by the filing of an answer and replication, and the circuit court, after a hearing upon the merits, dismissed the bill. 44 F. 680. The plaintiff then appealed to the supreme court, and that court, after a full hearing, found the patent to be valid, found the defendants to have infringed it, reversed the decree of the circuit court, and directed a decree for the complainant. Potts & Co. v Creager, 155 U.S. 597, 15 Sup.Ct. 194. Upon the coming down of the mandate, and the entry of the interlocutory decree finding the issues for the complainant, and directing a reference, the defendants filed a petition for rehearing on the ground of newly-discovered evidence. The petition was allowed to be filed, and, after an examination of the evidence, the circuit court set aside the decree for the complainant, and entered a new decree, dismissing the bill. 71 F. 574; 77 F. 454. The complainant then had recourse to a proceeding in mandamus in the supreme Court to compel the circuit court to comply with the decree of the supreme court. On this application the supreme court held that the action of the circuit court in setting aside the decree entered in accordance with the mandate was irregular and void; that a petition for rehearing in such a case could properly be addressed only to the supreme court, or to the circuit court after leave had been obtained from the supreme court to file such a petition in the circuit court; and directed the writ to issue. Thereupon the circuit court restored the decree, which it had, without authority set aside, and the defendants applied to the supreme court for leave to file a petition for rehearing on the same ground already irregularly presented to the circuit court. Leave was granted. A petition for rehearing was filed in the circuit court, and the circuit court, Judge Sage presiding, upon a rehearing, set aside the former decree, and again dismissed the bill. The present appeal is from the second decree dismissing the bill upon the petition for rehearing.

The substance of the two patents upon which the bill is founded is stated by Mr. Justice Brown, for the supreme court, in 155 U.S. 597, 15 Sup.Ct. 194, as follows: 'In the first patent, No. 322,393, the patentees stated the object of their invention to be 'to disintegrate the clay by means of a revolving cylinder, which shall remove successive portions from a mass of clay which is automatically pressed against the cylinder.' This was accomplished by a cylinder containing a series of steel bars, fitted into longitudinal grooves in the periphery of the cylinder, where they were secured by flush screws at each end, by means of which they were adjusted, so as to present a sharp corner, projecting above the surface of the cylinder. Opposite the cylinder was a strong vibratory plate, mounted on a shaft, so as to swing in its bearings, by the aid of an eccentric wheel. The opposed sides of the cylinder and the upper and central portions of the plate formed a trough, one side of which approached and receded from the other at intervals, and which had at the bottom a narrow opening of constant width. In the operation of the machine, the plate was swung back, so as to leave as large an opening as possible, and the moist untempered clay was thrown into the trough between the cylinder and the upper portion of the plate. By a rapid revolution of the cylinder, successive portions of the clay were removed from the mass, carried through the narrow opening by means of the scraping bars, and at the same time the upper portion of the plate moved slowly towards the cylinder; thus keeping the mass of clay in close contact with the cylinder, as successive portions were removed. The only claim alleged to be infringed was the sixth, which reads as follows: '(6) In a clay disintegrator, the combination with cylinder, A, having a series of longitudinal grooves, of the scraping bar, c, and adjustably secured in said grooves for the purpose specified.' In the second patent, No. 368,898, which was for an improvement upon the first, there was substituted in lieu of the swinging plate, shown by the first patent, as co-operating with the revolving cylinder, a plain cylinder set opposite the cutting cylinder, and revolving therewith in close proximity, so that the raw clay might be fed, shredded, and discharged in an even and continuous manner, in readiness to be taken directly to the pub or other mill. The patentees further stated in their specifications: 'The machine shown in our letters patent No. 322,393 was provided with a swinging or vibrating plate to co-act with the cutting cylinder in effecting the shredding of the clay which was fed between them. In such machine the abutting surface of the vibrating plate furnished a rest or bearing for the clay in presenting the same to the action of the cutter knives. This abutting surface was limited in extent and unchanging in position, so that it became rapidly worn. By substituting the revolving roll for the vibrating plate, this objection is greatly lessened. The roll constantly presents new surfaces to the cutters, so that the wear is even and regular throughout its circuit. If any inequalities exist in the roll at the outset, these become rapidly reduced, so that by use the cylinder wears more and more true, and acts thus with constantly better effect. Aside from cheapness in construction, the revolving roller or cylinder machine will work wet or sticky clays with perhaps one-third of the power necessary in treating such clays in the vibratory plate machine. Such plate tends constantly to crowd or squeeze the passing clays, whereas the revolving roll yields continuously, so that clogging is less apt to occur at the same time that the clay is finely and evenly shredded; the cutter cylinder moving, by preference, more rapidly than the companion feed roll, in order to accomplish this effect. Prior to our invention, it has been very common to employ, in clay mills, sugar mills, and the like, a set of rolls between which the material passed as the rolls were revolved; but in such machines the operation of the rolls was merely to break up the clogs of clay, and squeeze or crush the same, whereas, by our invention, the clay is positively cut into fine shreds or clippings, in much better condition to be tempered and molded than by the old forms of disintegrating machines."

The following drawing illustrates the main features of the machine, so far as the same are material to the present case:

Fig. 3.

(Image Omitted)

Defendants were charged with infringing the first and second claims of this patent, which read as follows:

'(1) In the supporting frame of a clay disintegrator, a rotating cylinder longitudinally grooved, and carrying cutting bars in and projecting beyond the grooves, in combination with a smooth-faced rotating cylinder adapted to carry and hold the clay against the cylinder having the cutting bars thereon, which latter cut or shred the clay, and pass the same between the cylinders, substantially as set forth.

'(2) In clay disintegrators, the combination, with the main supporting frame and with a rotating cylinder fixed therein, and having longitudinal cutting bars projecting beyond the face thereof, of a positively revolving companion cylinder fixed opposite thereto in said frame, and having a smooth face or surface, with which said cutting bars directly co-operate to shred or clip the clay, as the same is fed by and passed between said cylinders, substantially as described.'

The art, and the relation of the inventions to the art, are described by Mr. Justice Brown as follows: 'Beds of clay are composed of different strata; and the first step necessary to be taken in the manufacture of such clay is a thorough mixing of the strata, and the reduction of the clay to a suitable condition. Otherwise, the product will contain laminations, will shrink unevenly, and check in burning scale or peel off in use, and be less valuable than products made of clays which are first thoroughly mixed and tempered, and reduced to a homogeneous mass, before being manufactured into the product. Prior to the Potts inventions, various methods seem to have been employed to secure this result. The clay had been sometimes spaded up in the autumn, subjected to the action of the frost during the winter, and then to the operation of the old-fashioned grinding pit. A mud wheel had also been used. The 'soak pit' was another means used to accomplish the same result; the clay being deposited in a pit of water, and allowed to remain until the soaking process had reduced it to the desired condition. These methods were slow and expensive. Both grinding machines and crushing rolls had been adopted in comparatively recent years. Their action was simply to crush the clay, the different strata being pressed together and made more compact, and the clay discharged from the rolls in cakes or sheets,-- a condition that made the tempering very difficult, as the clay thus treated would not readily receive or absorb the water. The object of the Potts inventions was not to crush the clay as had been previously done, but to disintegrate and...