Concrete Appliances Co. v. Gomery

• Decision Date: 13 June 1922
• Docket Number: 2067.
• Citation: 284 F. 518
• Parties: CONCRETE APPLIANCES CO. et al. v. GOMERY et al.
• Court: U.S. District Court — Eastern District of Pennsylvania

284 F. 518

CONCRETE APPLIANCES CO. et al. v. GOMERY et al.

No. 2067.

United States District Court, E.D. Pennsylvania.

June 13, 1922

On Reargument, October 31, 1922.

Supplemental Finding, November 6, 1922.

On Reargument.

Hood &amp Schley, of Indianapolis, Ind., and Cyrus N. Anderson, of Philadelphia, Pa., for plaintiffs.

Sheridan Jones, Sheridan & Smith, of Chicago, Ill., and Wm. Steell Jackson, of Philadelphia, Pa., for defendants.

DICKINSON District Judge.

This cause concerns letters patent No. 948,719, applied for January 21, 1909, and issued February 8, 1910, to Lee Callahan, for an apparatus for hoisting and distributing concrete.

One defense is the absence of invention. Whenever the patented thing is a construction the question often arises of whether it is the product of invention or merely of constructive skill. How near this border line the subject-matter of this patent is its juridical experience shows. One court before which the patent has been was not able to find invention; the other found it.

The patented thing with which we are now concerned is an appliance for use as an aid in large building operations. Given the thought of its use and the plan of its construction, all else may be done by the user. It is used in the building trade in operations of which concrete construction is a part. The cement must be brought to the place of the concrete construction in a condition in which it will 'set.' The first thought in the appliance is that of the utilization of the force of gravity. The cement is conveniently 'mixed' on the ground. The concrete work may be placed far above it. When 'mixed,' it must be lifted to a height. This varies. It must thence flow to the required place. This shifts. These needs suggest the features which such an appliance must possess. They may be listed by paraphrasing the language of claim 5 (the most significant one in issue), enumerating its elements, although in a somewhat different order of statement and with additions. They are, together with appropriate support fastenings: (1) A mast or tower, to provide for a hoist; (2) a bucket, scuttle, or skip, in which to carry up the cement (3) hoists, to raise and lower the bucket; (4) a hopper, in which to deposit it for distribution; (5) a pipe, trough, or other conduit, to conduct its flow; (6) provision for the hopper and the high end of the conduit being maintained at adjustable heights; (7) provision for a swiveled or goose-necked attachment of the conduit to the tower, so that the conduit would have freedom of movement of its discharging end both vertically and laterally; and (8) possibly a 'boom' or other support for the conduit, in addition to its attachment to the tower.

Whether all these needs are obvious, and providing for them calls only for ordinary constructive skill, determines the question of invention. As every element named had long been used in kindred arts, and every one of them separately or in smaller groups in this art, it is manifest that invention could reside only in the novel thought of their use in combination. It is also evident that these needs and practicable provision to meet them would vary with the conditions under which the work was to be done, as the means of depositing the cement must be adapted to these conditions. The owner of any appliance for doing what was thus required to be done might sell it to the user, having had it fabricated in parts, and assemble and erect it at the place of the operation, or he might license those in charge of the operation to make and erect it, thereby selling to them the naked thought of its use, together with plans for its construction and erection. Indeed, the latter was what the owner of this patent at first did, disguising the sale of the use of the mere idea by providing a superintendent of construction.

Early in the more general use of concrete construction, what is called 'dry cement' was favored. There was a pronounced prejudice against the use of the more liquid form now accepted. It took time to overcome this prejudice. The introduction of 'reinforced concrete' and the greater facility in handling cement when 'wet' probably caused the preference for 'dry' to be yielded and the prejudice against the 'wet' to be abated. The increase in the volume of the cement used also, of course, contributed. This prejudice still lingers, and as long as it was general the 'gravity' method of distribution was little used. When the 'wet' concrete came into general use and the operation was a large one, the 'gravity' method was feasible and practically necessary. Some of the appliances were the veriest makeshifts. 'Chutes' were in common use. They must, of course, be supported. Halyards, 'horses,' 'trestles,' 'false work,' 'cross yards,' and all kinds of supports, including, as is claimed, even 'booms,' were used. The methods of handling the cement adopted, and the means employed, were suggested, if not dictated, by the conditions with which the builder was forced to cope.

In such a state of the art, to give a monopoly of any one method is fraught with danger of injustice. A builder might be obstructed in his choice of methods which were open to all, or he might find himself shut out from the use of one which had been in use. Indeed, this is the very situation which is the basis of the defense now made. The defendants and other builders in sympathy with them resent as an injustice that they are charged for the use of a method of doing concrete work which would be adopted by any one who had the work to do without any hint gathered from this patent. The practical importance to them, and through them to the owners of buildings, is attested by the fact that when the plaintiff charged merely for the use of the ideas behind his appliance, the license fee demanded was on the basis of the surface area of concrete laid and was 10 cents a yard. The charge now made for the use of the constructed appliance is $3,500. If what is thus charged for is what any competent builder would do without the aid of any suggestions from the patentee, the sum demanded is a tax. If, on the other hand, however, the plaintiff's appliance is the product of patentable invention, the right to use it is the property of the patentee.

This brings us to face the question of invention. Right here the defendant is confronted with the ruling by the Circuit Court of Appeals for the Sixth Circuit, the supplementary opinion supporting which is reported in Concrete Appliances v. Meinken, 262 F. 958. How far is the question still an open one for a trial court to determine? The res adjudicata doctrine, of course, does not apply, because the present defendant was in no sense a party to that cause. At least some, however, of the very questions which now arise were determined in that case, with all before that court which is before us. One was the question of invention, and the other of novelty, as affected by prior patents and previous publications only. There is, or at least there is claimed to be, evidence of the state of the prior art and of anticipation by prior use, which was not then before the court.

A patent right is a property right, in respect to which the validity of the grant is analogous to a good title to other property. The thought of a right in any one to property to which he has not a good title cannot be entertained. There is a contradiction in terms. So, likewise, there is no property right in any real sense in a patent which is of validity in one district or circuit and not in others. Letters patent give only the right to assert a property right, and are barely, if anything, more than prima facie evidence of it. The mere grant of letters can, for obvious reasons, be given no greater effect than this. An adjudication of validity in one case by a trial court is binding upon another in a suit upon the same patent only so far as the rulings made are of persuasive force. This limitation of its effect is likewise necessary. There must, however, come a time when an adjudication of validity must be recognized as binding, not only upon parties and privies, but in all other suits. This does not mean an absolutely conclusive finding, because every new litigant must be accorded his day in court; but it does mean that the finding of validity will not be disturbed merely because the court before which the later case is heard differs in opinion from the courts which made the earlier adjudications. There must be, in the later case, something which would not merely justify and support a different ruling, but something which compels it. The time when the found validity of letters patent should (within the limitation mentioned) no longer be regarded as an open question is at least when such an adjudication has been made by a Circuit Court of Appeals. If such an adjudication is properly to be questioned, it should be by a court of not less than like jurisdiction and equal authority.

These views call upon us to accept the finding of invention, and that the inventive thought embodied in plaintiff's appliance is absent from the patent applications cited for reference. This brings us to the question of anticipation evidenced by prior uses not before brought to judicial notice. The ruling which we deem to be authoritative disposes of the effect of the proceedings in the Patent Office affecting the applications as to which an interference was declared, because these proceedings were before the court which made the adjudications. Respecting the newly evidenced prior uses, they are not in themselves of the character which show that what Callahan has been found to have invented was anticipated by the invention of another. Indeed, anticipation in a construction of this kind can never be shown with that clearness which...