Cimiotti Unhairing Co. v. American Unhairing Mach. Co.

• Decision Date: 09 April 1902
• Docket Number: 23.
• Citation: 115 F. 498
• Parties: CIMIOTTI UNHAIRING CO. et al. v. AMERICAN UNHAIRING MACH. CO.
• Court: U.S. Court of Appeals — Second Circuit

115 F. 498

CIMIOTTI UNHAIRING CO. et al. v. AMERICAN UNHAIRING MACH. CO.

No. 23.

United States Court of Appeals, Second Circuit.

April 9, 1902

Frederic H. Betts, for appellant.

Louis C. Raegener, for appellees.

This is an appeal from an interlocutory decree sustaining the eighth claim of letters patent No. 383,258, granted May 22, 1888, to John W. Sutton for a machine for plucking furs, and adjudging said claim to be infringed by the appellant. The opinions of Judge Townsend, in the court below, will be found in (C.C.) 95 F. 474, and (C.C.) 108 F. 82. The opinion of Judge Wheeler will be found in (C.C.) 98 F. 297. The errors assigned present all the questions relating to the validity and infringement of the patent.

Before WALLACE, Circuit Judge, and COXE and HAZEL, District Judges.

COXE District Judge.

The issues involved in this appeal have received unusual consideration in the circuit court. Two judges have passed upon the questions directly involved in the case at bar and two judges have granted injunctions in other actions involving similar issues. Every opportunity has been accorded all of these defendants to present their defenses and it is safe to assert that nothing bearing even remotely, on the controversy has been omitted. The decree at bar was entered by Judge Townsend after a reargument and a full and careful consideration of all the testimony brought into the case since the original hearing. The attack upon the patent has been persistent uncompromising and ably conducted, the decision sustaining it has been reached after the most mature deliberation and has been acquiesced in and followed by Judges Lacombe, Wheeler and Thomas. It must be admitted, therefore, that the presumption always existing in favor of the rectitude of a decree is enhanced when the decree is entered after such thorough and patient investigation and is sustained by such a weight of authority.

The first commercially successful brush machine for unhairing pelts was made by John W. Sutton. He accomplishes the desired result, as shown in his patent, by dispensing with the blast fan and other forcing devices, theretofore in use, and by substituting therefor mechanical means by which the water hairs are removed.

The invention consists of a power machine which comprises-- First: A stretcher-bar. Second: Means for stretching and intermittently feeding the skin over the stretcher-bar. Third: A fixed card above the stretcher-bar near the edge of the same for straightening the hair and fur, holding down the fine fur and permitting the stiff haris to stand up between the teeth of the card while the skin is fed forward. Fourth A rotary separating brush below the stretcher-bar and intermittently moved up in front of the bar. Fifth: Mechanism for moving the brush up in front of the stretcher-bar. Sixth A rotary cutting knife and a vertically reciprocating cutting knife, working in conjunction, for cutting off the stiff hairs. Seventh: Other auxiliary devices designed to facilitate the unhairing operation.

The eighth claim, which is the only one involved, is designed to protect a combination of the first five elements as stated above. It is as follows:

'The combination of a fixed stretcher-bar, means for intermittently feeding the skin over the same, a stationary card above the stretcher-bar, a rotary separating brush below the same, and mechanism, substantially as described, whereby the rotary brush is moved upward and forward into a position in front of the stretcher-bar, substantially as set forth.'

The prior art is within unusually circumscribed limits. It is conceded on all sides that nothing found there affects the patent in suit, except the English patent to Lake of 1881, the United States patent to Covert of 1884 and the machine by Covert in 1886 and introduced in evidence as the 'Covert machine.'

That both Lake and Covert had in mind an automatic brush machine is evident, but it is equally clear that neither succeeded in embodying his idea in a practical working mechanism. It was not contended in the court below and it is not now contended that the Lake patent is an anticipation, but it is argued that it so limits the claim that appellant's machine is not within its provisions. The circuit court decided that the mode of operation of the machine of the Lake patent is not clear, that it does not show the essential feature of the patent in suit and does not seriously affect the meritorious invention of Sutton. In this we concur. The Lake patent is entitled to scant consideration and contributes little to the controversy that is not described and shown more clearly in the Covert patent and machine. In view of the radical disagreement between the appellant's counsel and expert as to the way the machine operates and of the additional fact that the interpretations presented for consideration are almost as numerous as the individuals who have sought to aid the court either from the witness stand or the bar, we are unable to reach a definite and satisfactory conclusion as to the modus operandi of the Lake machine. Indeed, there is nothing in the record to show that the Lake machine could successfully unhair a pelt. No one ever saw it operate. It began and ended its uneventful career in 1881. For nearly 20 years it remained nothing but an ambiguous description of incomprehensible drawings. It emerged from oblivion solely to meet the exigencies of this litigation. Were it not for the drawings the specification might be understood and were it not for the specification the drawings might be understood; but united they form a document which demonstrates that its author was either ignorant of the English language or of the essentials of a successful unhairing machine. The Lake patent antedates both Sutton and Covert; since its date the unhairing of pelts has assumed enormous proportions and fortunes have been made in the business, and yet we are asked to believe that here was a machine which could successfully do the work and thus levy an enormous tribute upon the entire art. The inquiry is pertinent, why was it that this machine was permitted to remain unused?

Since the success of the Sutton apparatus every effort has been made by infringers to evade it by introducing specious changes of form and yet, if we are to accept the contention of the appellant, there is an operative machine in existence doing the work as well as the Sutton machine and free to any one who desires to use it. Even within the last few years, when infringers have been in desperate straits and have resorted to every conceivable device, it seems to have occurred to no one that the Lake machine might furnish the necessary means of escape. Is not the presumption almost conclusive that it was not used because it was not usable?

The appellees insist that the Lake device was a failure, that it never worked and is incapable of working. The inferences to be drawn from its desertion almost at its birth and its subsequent abandonment not only by the authors of its being but by everybody else, are strongly in corroboration of this position of the appellees.

The Covert patent and the machine built under it are unquestionably the appellant's best references. In approaching the consideration of these defenses it is important to keep in mind the distinguishing feature of the Sutton mechanism, the change from the prior art which made it successful and produced results which no other device is capable of producing. Covert had all the elements of a workable machine before him, but he did not know how to put them together. Sutton possessed this knowledge. He discarded the revolving metal plate, which Covert thought would operate to carry down the fur out of reach of the cutters, and changed the location and function of the revolving brush so that it permits the water hairs to spring up against the blades while brushing down the soft fur flat on the pelt, out of harm's way. It is said that these changes were obvious; whether this be so or not will be considered later on; it is enough for present purposes to point out what the features are that appear for the first time in Sutton's device, for to them is due its success.

The essence of the invention is the arrangement of the rotary brush so that it will separate the fur from the undesirable stiff hairs, permit the latter to stand up on the keen edge of the stretcher-bar and brush the former down on the off side of the bar where it will not be cut or injured by the action of the knives. No previous machine had this feature. In the Covert patent an attempt is made to accomplish this result by a combination of a stationary cutter, a revolving brush and a revolving metal wiper. The cutting blade holds the fur and hair down on the 'on side' of the stretcher-bar. The brush was probably intended to make a 'part' on the edge of the bar and permit the stiff hairs to stand up alone, but in this it failed. It does not brush the fur out of the way of the revolving knife; this is done by the wiper, which is kept damp, and has a tendency to mat down the fur. The brush does not and cannot brush down the fur on the off side of the bar. The fur as left by the brush is almost at right angles with the position which it should assume to escape being injured by the moving blade. After the brush sweeps over the fur it is left standing in the path of the knife. The wiper is expected to save the fur from mutilation. If the wiper does not do this it is not done at all. Remove the wiper and there is no brushing over 'out of reach of the cutting blades. ' Both of these instrumentalities were necessary to do that which Sutton does with the brush alone; and there is the further difference that the Covert brush and wiper do badly what the Sutton brush does well....