Gulf Smokeless Coal Co. v. Sutton, Steele & Steele

• Decision Date: 15 October 1929
• Docket Number: No. 2825.,2825.
• Citation: 35 F.2d 433
• Parties: GULF SMOKELESS COAL CO. et al. v. SUTTON, STEELE & STEELE et al.
• Court: U.S. Court of Appeals — Fourth Circuit

35 F.2d 433 (1929)

GULF SMOKELESS COAL CO. et al. v. SUTTON, STEELE & STEELE et al.

No. 2825.

Circuit Court of Appeals, Fourth Circuit.

October 15, 1929.

Donald M. Carter, of Chicago, Ill., and Russell S. Ritz, of Bluefield, W. Va. (Francis W. Parker, Jr., and Norman S. Parker, both of Chicago, Ill., on the brief), for appellants.

A. S. Pattison, of Washington, D. C., D. J. F. Strother, of Welch, W. Va., A. S. Pattison & Son, of Washington, D. C. (Strother, Sale, Curd & Tucker, of Welch, W. Va., and W. H. Pattison, of Washington, D. C., on the brief), for appellees.

Before WADDILL, PARKER, and NORTHCOTT, Circuit Judges.

PARKER, Circuit Judge.

This is an appeal in an infringement suit instituted by Sutton, Steele & Steele, the owners of patents 1,073,644 and 1,315,881, covering separating tables and processes of separation, and the American Coal Cleaning Company, licensee under the patents, against the Gulf Smokeless Coal Company. During the hearing of the case, an order was entered making Roberts & Schaefer Company, an Illinois corporation, a party defendant, on the ground that it had manufactured and installed the separating tables and process of separation in use by the coal company and had entered into a contract with that company to defend any suits for infringement which might be instituted on account thereof. The court below held the patents valid and infringed. It granted an injunction against Roberts & Schaefer Company, as well as the coal company, forbidding further infringement, and referred the case to a master for an accounting against both defendants. Three questions are presented by the appeal: (1) Whether the patents sued on are valid; (2) if so, whether the coal company has been guilty of infringement; and (3) whether the court acquired jurisdiction of the Roberts & Schaefer Company.

The patents in suit cover separating tables and processes for the separation of mixtures containing particles of different specific gravity, such as ores, minerals, coal, etc. The value of these tables and processes depends particularly upon their suitability for separating fine coal from slate; and it is for this purpose that they are used by the defendant coal company. The table covered by patent 1,073,644 may be described as a jig table with a previous top, inclined in such way that one corner, being the one at which the mixture to be separated is fed upon it, is higher than the corresponding corner of the opposite side and lower than the corresponding corner of the opposite end. Narrow metal strips, called riffles, are attached to the top extending longitudinally; and beyond the end of these is a bar, called a banking bar, designed to retard the longitudinal movement of the particles of the mixture. The table is agitated longitudinally, and at the same time air is forced under pressure through the pervious top, with the result that the heavier particles of the mixture are propelled along the riffles, pile up against the banking bar, and guided by it pass off the table, whereas the lighter particles rise to the top and, under the influence of gravity, acquire a movement transverse the longitudinal movement and pass over the riffles and then off of the table at a different place from the heavier particles. The table of patent 1,315,881 differs from that of the other patent, in that it is provided with a tailings riffle opposite the banking bar, which cuts off the lower corner of the table, and which is so low that the lighter particles flow over it just as they do over the other riffles, with the result that the lighter particles are more rapidly removed from the table and its capacity is increased. The following is a fair representation of the top of the table which is being constructed under the patents in suit:

It is the process of separation covered by the patents in suit, however, and not the tables themselves, which is claimed by complainants to have been infringed. The principle of the separating table is old; but complainants have devised a new process, which, with the aid of certain changes in the old separating tables, covered by their patents, has revolutionized the process of dry separation. This process may be described briefly as operating the tables in such way as to form an obstruction of the heavier particles beyond the strata of the particles containing tailings, to cause the lighter particles to move transversely and in a direction opposite the propelling movement of the heavier particles and to flow over the tailings riffle and escape from the machine. Claim 7 of patent No. 1,073,644 and claim 11 of No. 1,315,881 may be taken as typical of the process claims of the patents. They are as follows:

"7. The process of concentrating a mass of material, parts thereof having different characteristics, consisting in supporting the material upon a surface by a gaseous cushioning medium, gravitally feeding said material in one path, imparting a propelling movement in a direction across the movement of the material by gravity and forming an obstruction of said material across the line of travel of the propelling movement of said material until a substantially vertical stratum of concentrates is established beyond the strata of the material containing tailings."

"11. The process of concentrating a mass of material, parts thereof having different characteristics, consisting in gravitally feeding and supporting the material upon a transversely and longitudinally inclined previous support to cause the material to move longitudinally thereon by gravity, supporting the material by a gaseous cushioning medium to permit stratification thereof, imparting to the heavier particles of said material by a series of impacts a positive movement by gravity, forming an obstruction of concentrates beyond the strata of material, containing tailings across the imparted movement of said material to exert a back pressure against the mass of material on said surface, and obstructing the movement of the concentrates in their movement exerted by back pressure for exerting and maintaining a constant pressure thereon, and subjecting the overlying stratum of lighter particles to the action of gravity to cause said particles to move transversely of said table in a direction opposite to the propelling movement of the heavier particles."

It is argued that there is nothing new in forming an obstruction of the heavier particles of the mixture; that this is in effect nothing more than slowing up the transverse movement, which could be caused by elevating the end of one of the old separating tables; and that, at all events, the process is not patentable, being but the function of the tables themselves. But we think that there can be no doubt that the process of the patents is new. While the slowing up of the transverse movement of the heavier particles on one of the old separating tables might have been accomplished by elevating the end of the table as contended by defendants, no one thought of doing this as a means of accelerating the process of separation. On the contrary, it is shown to have been achieved as the result of experiments conducted by complainants. It has resulted in an increase of capacity until a table one-third the size of the old tables has a capacity nine times as great. It has revolutionized the process of dry separation and has made it available for the cleaning of fine coal, which is of great value to the coal mining industry. Knowledge after the event is always easy; but as said by Mr. Justice McKenna in the Grant Tire Case: "The law has other tests of the invention than subtle conjectures of what might have been seen and yet was not. It regards a change as evidence of novelty, the acceptance and utility of change as a further evidence, even as demonstration." Diamond Rubber Co. v. Consol. Tire Co., 220 U. S. 428, 435, 31 S. Ct. 444, 447, 55 L. Ed. 527; U. S. Industrial Chemical Co. v. Theroz Co. (C. C. A. 4th) 25 F.(2d) 387; Frick Co. v. Lindsay (C. C. A. 4th) 27 F.(2d) 59.

The principles laid down in the case of Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U. S. 45, 43 S. Ct. 322, 330, 67 L. Ed. 523, seem to us to be controlling here on the question of novelty. In that case the invention involved merely the elevation of the breast roll end of the paper making wire of a Fourdrinier paper making machine, with the result that the liquid stock discharged upon the machine acquired, through the force of gravity, an additional speed, enabling it to keep pace with the machine at the critical paper-forming point, and making possible a much speedier production of good paper than had been theretofore obtained from the use of the machine. The court sustained the patent and held that a previous slight elevation of the wire for another and distinct purpose did not constitute anticipation. It held, also, that a patent for a meritorious improvement on an old machine was entitled to a liberal construction, and, in disposing of the contention that what had been accomplished did not rise to the dignity of patentable invention, said: "We can not agree with the Circuit Court of Appeals that the causal connection between the unequal speeds of the stock and the wire, and the disturbance and rippling of the stock, and between the latter and the defective quality of the paper in high speeds of the machine, was so obvious that perception of it did not involve discovery which will support a patent. The fact that in a decade of an eager quest for higher speeds this important chain of circumstances had escaped observation, the fact that no one had applied a remedy for the consequent trouble until Eibel, and the final fact that, when he made known his discovery, all adopted his remedy, leave no doubt in our minds that what he saw and did was not obvious, and did involve discovery and invention."

As to the contention that the process is but the function of the tables and hence not patentable, it is well settled, of...