Edison v. Allis-Chalmers Co.

• Decision Date: 06 June 1911
• Docket Number: 383.
• Citation: 191 F. 837
• Parties: EDISON v. ALLIS-CHALMERS CO. et al.
• Court: U.S. District Court — Western District of New York

191 F. 837

EDISON v. ALLIS-CHALMERS CO. et al.

No. 383.

United States Circuit Court, W.D. New York.

June 6, 1911

Louis Hicks, for complainant.

Edwards Sager & Wooster, Thomas F. Sheridan, and George L. Wilkinson for defendants.

HAZEL District Judge.

This is a bill in equity based on two letters patent granted on April 23, 1901, to Thomas A. Edison, for method of breaking rock and for apparatus for breaking rock, numbered respectively 672,616 and 672,617. The method patent was issued on application dated July 6, 1897, and the apparatus patent on divisional application dated August 9, 1900. The defendants are charged in the bill with joint infringement of the patents in this district. The answers allege invalidity of the patents because of prior public use and sale more than two years before they were granted and want of novelty and noninfringement. At the hearing the jurisdiction of the court was challenged on the ground that a completed act of infringement prior to the commencement of the action was not proven. This objection will now be considered.

The Empire Limestone Company is an inhabitant of the Western district of New York, and the Allis-Chalmers Company and the Casparis Stone Company inhabitants of the states of New Jersey and Ohio, respectively. It is claimed that the Allis-Chalmers Company and the Casparis Stone Company have not committed any act of infringement here. Pursuant to the Act of March 3, 1897, c. 395, 29 Stat. 695 (U.S. Comp. St. 1901, p. 589), a defendant, not an inhabitant of the district where a suit is instituted, must affirmatively be shown to have committed an act of infringement and have a regularly established place of business therein. That the Allis-Chalmers Company and the Casparis Stone Company each has an established place of business in this jurisdiction is admitted, and the question submitted for decision on this phase is whether they have manufactured, used, or sold the infringing machine within this district, or entered into contracts for such use, manufacture, or sale. The stipulations of record relating to this subject fairly show that the infringing apparatus was completed and installed within this district prior to June 18, 1909, and before this action was commenced, and that the Allis-Chalmers Company contracted to sell and deliver such machine to the Casparis Stone Company within said district, which company had agreed to erect such machinery for the Empire Limestone Company at Pekin, N.Y. It is proven that the Allis-Chalmers Company in the latter part of the year 1908 assisted in the erection of the rollers by inspecting and approving the work of installation by the Casparis Stone Company. Accordingly, it is fairly shown that there was something more than the mere manufacture of the apparatus by the Allis-Chalmers Company within this district; there was a delivery and acceptance and approval of the work of installation and sale within the jurisdiction of this court. National Cash Register Co. v. American Cash Register Co., 178 F. 79-83, 101 C.C.A. 569. It is claimed as to the Empire Limestone Company that the plant was not in actual operation at the time the bill was filed; but this, assuming it to be true, is immaterial in view of the fact that prior thereto said company threatened to infringe the patents in suit. Chester Forging & E. Co. v. Tindel-Morris Co., 165 F. 899, 91 C.C.A. 577.

Another question may here be decided before passing to the merits. The complainant gave testimony in rebuttal tending to establish that the Allis-Chalmers Company had installed an alleged infringing apparatus at Detroit, Mich., subsequent to the commencement of this action, and complainant claims to have the right to recover herein for such infringement. This claim is thought untenable. How a separate and wholly independent infringement in another district by one of the three defendants who are jointly charged with infringement has any relevancy in this action is difficult to understand, and such testimony, in the absence of controlling authority requiring its consideration, will be disregarded.

Proceeding to a description of the patents and claims in suit, both of which are so closely allied that a consideration of one necessarily includes the other: As indicated by their titles both patents relate to crushing or breaking rock and ore, and in its accomplishment two massive revolving rolls, weighing 167,000 pounds, six feet in diameter and five feet long and secured to a shaft, are used. The mandrels are provided with extraordinarily heavy plates, which have on their outer surfaces large projections or sledging knobs. The rolls are mounted side by side on a frame having a gap between them.

The frame has pulleys attached, around which runs a driving belt, so arranged as to cause the rolls to revolve toward each other and downward through the gap or space between them. The pulleys are yieldingly connected to the shaft by means of slipping friction clutches, so that when the rolls revolve the friction clutches yield or slip without greatly lessening their speed. The rolls are separately and independently driven; the friction clutches being separate and disconnected to permit the rolls to diminish or accelerate their speed independently of one another. Mr. Edison's object was to devise a method by which massive rock or boulder when taken from its bed could be instantaneously crushed or broken to pieces at the least possible expense by the blows of large projections on the rollers, and thus to eliminate the hand sledging or blasting of the prior art. To accomplish his object it was necessary that the rollers correspond in weight and strength to the size of the material to be broken up. He believed it possible to use the energy and force generated by the inertia of revolving objects. The problem was how to apply such energy to assist in the crushing operation. Kinetic energy is the term by which such force and power is technically known. The skilled engineer knew that a heavy rotating object contained stored power and energy component with it, and in the adaptation of such force and power for breaking and crushing large rock it will be comprehended that, if such energy could be practically used, an achievement of great economic value and benefit in this art would result. It was necessary to design and construct machinery and rollers of a peculiar kind, together with facilities for placing and using them in accordance with the modus operandi specified in the patent in suit. The patentee surmounted all obstacles, and the record shows there were many. He was the first to evolve a crusher by which kinetic energy became a potential factor in the method of crushing and breaking rock by blows from the knobs on the rollers. It scarcely can be doubted that his inventions are meritorious and involve in their origination and perfection patentable skill of a high order.

The claims of the method patent read as follows:

'1. The method of breaking rock consisting in causing two independently-driven and disconnected massive bodies to travel toward each other at a high speed, partially arresting the motion of such bodies by successively and periodically introducing charges of rock between them, thereby breaking the rock by kinetic energy, and restoring the speed of such bodies during the intervals, substantially as set forth.

'2. The method of breaking rock consisting in driving a pair of independently-driven and disconnected massive rolls at a high speed by means of a small power capable of running the rolls up to speed when no work is being done, partially arresting the motion of the rolls by successively and periodically delivering charges of rock to them, thereby breaking the rock by kinetic energy and restoring the speed of the rolls during the intervals, substantially as set forth.'

The claims of the apparatus patent which are involved, except the fifth and sixth, read:

'1. In apparatus for breaking rock by kinetic energy, the combination of a pair of independently-driven and disconnected massive rolls having roughened or irregular surfaces, a power connection delivering power to both the rolls insufficient to break the rock by the direct application of the power, and means for periodically delivering charges of rock to such rolls at sufficiently infrequent intervals to permit the rolls to recover sufficient speed to effect the successively breaking operations, substantially as set forth.

'2. In apparatus for breaking rock by kinetic energy, the combination of a pair of independently-driven and disconnected massive rolls having roughened or irregular surfaces, a power connection delivering power to both the rolls insufficient to start the rolls from a state of rest, and means for periodically delivering charges of rock to such rolls at sufficiently infrequent intervals to permit the rolls to recover sufficient speed to effect the successive breaking operations, substantially as set forth.

'3. In apparatus for breaking rock by kinetic energy, the combination of a pair of independently-driven and disconnected massive rolls, knobs of substantially uniform height on the rolls for catching the rock and subjecting it to a rolling action, larger and higher knobs disposed in a longitudinal row on one of the rolls for sledging large pieces of rock and reducing them to a size small enough to be subjected to the rolling action, a power connection delivering power to both the rolls insufficient to break the rock by the direct application of the power, and means for periodically delivering charges of rock to such rolls at sufficiently infrequent intervals to permit the rolls to recover sufficient speed to effect the successive breaking operations, substantially as set forth.

'4. In apparatus

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