Concrete Appliances Co. v. Meinken

• Decision Date: 06 January 1920
• Docket Number: 3241.
• Citation: 262 F. 958
• Parties: CONCRETE APPLIANCES CO. et al. v. MEINKEN et al.
• Court: U.S. Court of Appeals — Sixth Circuit

262 F. 958

CONCRETE APPLIANCES CO. et al. v. MEINKEN et al.

No. 3241.

United States Court of Appeals, Sixth Circuit.

January 6, 1920

On Petition for Rehearing, March 2, 1920.

On Petition for Rehearing.

Suit upon patents numbered 948,719, issued February 8, 1910, to L Callahan, and 948,746, issued February 8, 1910, to A. L Smith. This case involves the tower apparatus now in common use for elevating and distributing wet ('mush') concrete upon the successive floors of high buildings constructed in whole or in part from that material. The apparatus, as now used, involves two steps: First, elevating the material to a reservoir or hopper bin temporarily fixed at the desired elevation in the tower; and, second, distributing it from that elevation, by gravity, through a conduit revolving at the point of connection with the hopper bin and having at least one swiveled elbow joint, whereby any desired point upon the selected horizontal plane can be reached for the gravity discharge of the material.

Callahan and Smith each showed, in his drawing, the complete apparatus; but Callahan made no claim to the feature of the double swiveled discharge pipe. Callahan's application was filed January 21, 1909; Smith's on February 23d of the same year. The Patent Office notified Callahan that his application seemed to conflict with another, and suggested to him some of the claims which Smith had made. Callahan adopted these claims, whereby an interference was declared. The substance of the issue is shown by count 1, which is given in the margin. ^[1] Upon this issue, Callahan conceded priority; judgment was rendered upon the concession; Callahan canceled these additional claims; and both patents issued. Both patents, by assignments, licenses, etc., became the property of the Concrete Appliances Company and Insley, and this suit was brought by them in the court below based upon alleged infringement of both patents. The above-quoted count 1 of the interference became claim 1 of the Smith patent, and is typical of those sued upon.

Claim 5 of the Callahan patent is here quoted, ^[2] and may be accepted as a statement of his invention said to be infringed. Claims 1, 2, and 13 are also declared upon.

Arthur M. Hood, of Indianapolis, Ind., for appellants.

F. E. Dennett, of Milwaukee, Wis., for appellees.

Before WARRINGTON, KNAPPEN, and DENISON, Circuit Judges.

DENISON Circuit Judge (after stating the facts as above).

It goes without saying that the Smith patent can get no advantage merely because it has been owned and commercially exploited along with the Callahan patent. Upon this record, Smith cannot claim to be the inventor of anything shown by Callahan's application, except as the latter is modified by the later concession of priority. The Callahan patent is not a part of the prior art, in the sense in which that phrase is used with reference only to publications, but the Smith patent, both as to anticipation and as to the presence of invention, must be judged upon the basis of which the earlier Callahan application is a part. Lemley v. Dobson-Evans Co., 243 F. 391, 156 C.C.A. 171. It must therefore be assumed, as against Smith, that the advance of his claim 1 consisted merely in taking the concrete elevating and distributing apparatus of Callahan and substituting for Callahan's simple discharging conduit, revolving only at the point of attachment to the receiving hopper, the compound discharging conduit consisting of two or more sections revolubly connected with each other. ^[3] We are not convinced that this advance involved any invention. Such a double swiveled conduit was a well-known expedient for the gravity conveying of any material which it was desired to discharge at selected points in a lower horizontal plane. It is obvious--at least when it is pointed out to us-- that, with an inclined conduit revolving at its upper end, the lower end could be made to reach any desired point on the lower plane, either by changing the angle of inclination and modifying the length of the conduit, as by telescoping a section, or by adding a supplementary conduit revolubly connected with the lower end of the primary one. Neither form had been in use for concrete (before Callahan), but both forms were old for other purposes. The double swiveled form had been most highly developed in grain elevators, for distributing the grain from the elevated receiving bin to the several openings on the floor below, which indicated spouts leading to still lower storage bins

If the matter were to be considered in the broadest sense, there might be such distinctions between elevating and distributing grain and elevating and distributing concrete that transferring a device from one art to the other and making the necessary adaptation would involve invention. That need not be decided; but here Smith begins at the point where the elevation of the concrete is finished. He has then merely the question of gravity distribution. He finds that concrete has been distributed and grain has been distributed by a single unitary chute, swinging and turning at its upper end, and that grain has also been distributed by the double swiveled chute, thereby increasing the ability to select exactly the desired point for discharge. In the words which were used in Crown Co. v. Sterling Co., 217 F. 381, 133 C.C.A. 297, Callahan had already 'bridged over whatever gap there was' between the art of concrete building and the art of gravity distribution, and the 'door of opportunity was open' to all who wished to use in the former art an expedient well known in the latter. It seems to us quite clear that there is no invention in adding to the device of Callahan the well-known additional swiveled joint in the discharge conduit. It follows that those claims of the Smith patent sued upon are invalid, and the decree of the court below, which dismissed the bill as to this patent, must so far be affirmed.

At the time these patentees appeared on the field concrete had already come into extensive use as a building material in connection with metallic reinforcements, and it had been found that it was suitable for buildings of all shapes and of many stories in height. When mixed of the proper consistency, it was called 'mush' concrete, and to handle this material and deliver it efficiently at the place of use in a large building operation was a considerable problem. Various methods had been employed, but the one most approved consisted in raising it by elevator to the floor or level where it was to be used and there dumping it into wheelbarrows, by which it was conveyed to the various desired points of use upon that level. It occurred to Callahan that he could construct a tower, or skeleton elevator shaft, which should originally extend, or which, by successive additions, should be made to extend, well above the highest story of the proposed building; that he could attach to this tower, and make vertically adjustable thereon, a receiving bin or hopper carrying a downwardly inclined and revolubly connected discharge chute, which could be swung about to reach various points on the next lower level to that where the receiving bin was fixed; that this receiving bin and its discharging apparatus could be temporarily fixed, as the building advanced, at positions on the tower suitably elevated above each successive story; that the mush concrete could be elevated inside the tower to these various fixed positions and there dumped into the receiving bin; and that, in this way the mush concrete could be delivered in an approximately automatic way throughout the successive floors or levels of a building, no matter how high. Upon this record, this general thought was wholly novel. It has proved to be of great commercial value. It is common knowledge that, mostly within the period since the patent issued, reinforced concrete has largely superseded all other materials in the erection of large structures, and the record shows that 80 or 90 per cent. of all the important construction work of this class in the country employs this Callahan method, and that all of the larger manufacturers of machinery and apparatus for this general purpose have taken licenses under the patent. It is not too much to say that the invention has played a large part in revolutionizing the building industry, and that it is not common for a patent in litigation to find itself supported by such a large measure of commercial merit and public acquiescence.

It is not contended that the patent is anticipated, in the strict sense of that term, but the defendant's position approved by the court below, is that Callahan only put together old and familiar elements, and that his advance did not involve invention over what had gone before. To determine this question, we must know, first, the character of the relations between what was old and this new arrangement; and, second, whether his claims are properly characterized by reference to his real advance. To elevate material to a fixed and invariable height, and to distribute it therefrom by gravity, through a swinging, revolving chute, to different discharge spots upon a lower level, was common. As we have said, in considering the Smith patent, this was familiar in the class of grain elevators. The typical so-called grain elevator, or storage house, was a permanent structure, and grain was carried by various types of elevating apparatus to the permanent top floor or level. From the bottom of the bin there situated depended a swinging chute, which could be moved about so as to discharge, upon the floor below, into any storage bin opening from that level. These grain elevators, like others of similar type shown by the record, entirely lack the only substantial novelty claimed for Callahan. They did not...