Hartford-Empire Co. v. Nivison-Weiskopf Co.

• Decision Date: 12 May 1932
• Docket Number: 5997-6000.,No. 5752,5753,5752
• Citation: 58 F.2d 701
• Parties: HARTFORD-EMPIRE CO. v. NIVISON-WEISKOPF CO., and five other cases.
• Court: U.S. Court of Appeals — Sixth Circuit

58 F.2d 701 (1932)

HARTFORD-EMPIRE CO. v. NIVISON-WEISKOPF CO., and five other cases.

Nos. 5752, 5753, 5997-6000.

Circuit Court of Appeals, Sixth Circuit.

May 12, 1932.

W. J. Belknap, of Detroit, Mich., and R. D. Brown, of Hartford, Conn. (Daniel H. Armstrong, of Columbus, Ohio, and Vernon M. Dorsey, of Washington, D. C., on the brief), for Hartford-Empire Co.

William R. Wood, of Cincinnati, Ohio (Edmund P. Wood, of Cincinnati, Ohio, on the brief), for Nivison-Weiskopf Co.

Charles Neave, of New York City (Stephen H. Philbin, of New York City, and Howard R. Eccleston, of Washington, D. C., on the brief), for Kearns-Gorsuch Bottle Co.

Drury W. Cooper, of New York City (Allan C. Bakewell, of New York City, on the brief), for Lamb Glass Co.

Before MOORMAN, HICKS, and SIMONS, Circuit Judges.

MOORMAN, Circuit Judge.

The Hartford-Empire Company brought suit against the Nivison-Weiskopf Company in the District Court for infringement of the Steimer patent, 1,564,909, the Peiler patent, 1,573,742, known as the "phase change" patent, and Peiler patent, 1,589,304, referred to as the "shear-height" patent. Subsequently it brought suit against the Kearns-Gorsuch Bottle Company for infringement of the same three patents and another Peiler patent, 1,631,107, referred to as the "whittling" patent. Suit was also brought by the Hartford Company against the Lamb Glass Company on the Steimer patent, the Peiler "phase change" patent, the Peiler "whittling" patent, and two other patents, Soubier, 1,574,709, and Ferngren, 1,574,739. The Steimer patent was held invalid in the District Court in each of the three cases. The suits on the Peiler "phase change" patent were based on method claims 1 to 10 and apparatus claims 15 to 30, inclusive, and 33, 34, 36, and 37. In the Nivison-Weiskopf Case both the method and the apparatus claims in suit were sustained and held infringed. The injunction against infringement issued, however, only on method claims 1 to 5, inclusive, and 8, 9, and 10, and on apparatus claims 18, 22, 27, 28, 33, 34, 36, and 37. In the Kearns-Gorsuch and Lamb Cases the method claims were held invalid, but apparatus claims 18, 26, 27, 28, 34, 36, and 37 were held valid and infringed. The court did not pass upon the other apparatus claims involved in the suit. The Peiler "shear-height" patent was held invalid for want of invention in the two cases in which it was in suit. The "whittling" patent involved in the Kearns-Gorsuch and the Lamb Cases was held in each case to be invalid, and the Soubier and Ferngren patents, which were sued upon only in the Lamb Case, were held invalid. Appeals were taken by the plaintiff in each case where the claims sued upon were declared invalid, and by the defendants from so much of the decrees as adjudged the Peiler "phase change" patent valid and infringed.

All the patents relate to feeding gobs or charges of molten glass into molds for the manufacture of bottles or other blown or pressed glassware. The Steimer patent, the first of the several patents to issue, contains six claims, all of which are relied upon. Claim 2 is printed in the margin as typical.¹ Steimer's original application disclosed a furnace to melt the glass ingredients, an "interrupter" chamber to receive the molten glass, a "conical" orifice in the bottom of the chamber, and a stopper plunger with a "conical end" reciprocating vertically in the chamber. The method of operation was to tilt the furnace and permit the glass to flow into the chamber, while at regular and determinable intervals the plunger would be brought to seat against the outlet and "stop the flow of glass therethrough by constricting the passage."

The original Steimer application was filed February 12, 1910, but the patent did not issue until December 8, 1925. In 1918 Steimer died, and some time prior to 1920 the plaintiff purchased the Steimer application. On February 4, 1920, plaintiff filed an amended application, and contemporaneously therewith or shortly thereafter added the claims in suit. Up to that time there was no disclosure in Steimer of a purpose to claim suspended gob feeding or severing in suspension. Steimer's concept, as evidenced by the claims filed prior to the plaintiff's purchase of the application, was to utilize the plunger as a stopper to close the orifice in the bottom of the chamber. This was shown, not only by the original claims, but also by the original specifications, which repeatedly characterized the plunger as a "stopper" or "interrupter stopper." It is true that the specifications casually mentioned the screw 53a as so positioned that it might be caused to strike a projection on the frame of the machine and thus stop the downward stroke of the plunger, but it is obvious that this screw was regarded as having no other useful function than to prevent the seating of the plunger too violently against the bottom of the chamber in cutting off the flow of the glass through the orifice.

Steimer was not the first to conceive, if indeed he ever conceived, suspended gob feeding by means of coaction between accelerating means and a shearing operation. This conception was disclosed in Hitchcock, No. 805,068, November 21, 1905 see Hartford-Fairmont Co. v. United States Glass Co. (D. C.) 2 F.(2d) 109, Brookfield, No. 883,779, and other earlier devices. In some of these devices, at least Hitchcock and Lott, No. 1,382,994, the shaping of the depending gob was inherent in the device. Steimer did not attempt to shape mold charges, but used his plunger to stop or interrupt the flow of the glass through the orifice. The jets of flame which he provided were not intended to sever the extruded glass, but to burn off the adhering strings after the plunger had severed the gob by closing the orifice. It was not until after the Hartford Company acquired the Steimer application that any attempt was made to claim for Steimer the concept or disclosure of shaping mold charges by suspended feeding and severing in suspension. We need not trace the history of these many attempts in the Patent Office, all of which were unsuccessful. It suffices that through a maze of disallowed claims, provoked interferences, and Patent Office contests prosecuted in some instances as bona fide contests, after the Hartford Company had acquired its adversary's rights, there finally emerged a patent containing six claims out of more than one hundred that had been sought. Some of these allowed claims, such as claims 2 and 3, call for "means for adjusting the extent" of the plunger projection into the orifice during the operation; others for means for adjusting "the nearest position" of the plunger to the orifice during the operation. None of them discloses or claims shaping by suspended gob feeding and severing in suspension. Considered in the light of the specifications, they are to be interpreted as calling for a mechanism in which there is a plunger that stops the flow of the glass either by coming to seat over the orifice on the bottom of the chamber or by projecting into the orifice and closing it. Plainly there was nothing new in these claims as against the earlier patents. Nor was Steimer, as is now contended, the first to perceive the desirability of a feeder having an orifice through which the glass might flow by gravity and a reciprocating element which by its downward movement impels the flow of glass and which does not contact with the orifice. We cannot agree that Steimer's plunger did not contact with the orifice, but, even if it did not, these elements of his claims, in like combination, were disclosed in the prior art, even the element of adjusting the end of the downward stroke of the plunger. Whether this adjustment in the plunger stroke in the earlier devices could be effected while the plunger was in motion does not seem to us to be important, for in our view it was not invention to devise stop means for a plunger adjustable while the plunger is in action, but an expedient that any skilled mechanic could devise had he in view an object that made it desirable.

The Peiler "phase change" patent was issued February 16, 1926, on an application filed November 25, 1925. The application states that it is a continuation in part of application No. 713,143, filed August 3, 1912, application No. 157,943, filed March 28, 1917 (it in itself being a continuation of application No. 856,548, filed August 13, 1914), and applications Nos. 294,792 and 294,793, both filed May 5, 1919, the former of the two last-mentioned applications being referred to in argument as the "paddle needle" application and the latter as the "single plunger" application. The specifications are made up of excerpts from these several former applications, with such new matter as Peiler presumably considered necessary "for the purpose of claiming" what he calls "phase changing." The first ten claims are for a method. The remaining claims are for an apparatus. We deal first with the method claims.

"Phase change" is an artificial term invented, or at least used, by Peiler to define the shaping of mold charges by time change between feeding and shearing. Thus any apparatus which by adjustment of its parts is capable of accomplishing this result must practice phase changing in this sense. It is essential to the practice in all of the known devices that there be suspended molten glass, impelling means for accelerating the flow of glass from the outlet, means for severing, and means for varying the operating relation of the impelling means to the severing means. Long before Peiler there was in common use a type of feeder comprising a container having a submerged discharge orifice, a periodically reciprocating plunger above the orifice, shears below the orifice, and mechanism actuating the shears in timed relation to the plunger. These devices were capable of adjustment so as to vary the time of the shearing operation in relation to the cycle of the plunger stroke. Any variation in the relation...