J.L. Owens Co. v. Twin City Separator Co.

• Decision Date: 25 February 1909
• Docket Number: 2,525.
• Parties: J. L. OWENS CO. v. TWIN CITY SEPARATOR CO.
• Court: U.S. Court of Appeals — Eighth Circuit

168 F. 259

J. L. OWENS CO. v. TWIN CITY SEPARATOR CO.

No. 2,525.

United States Court of Appeals, Eighth Circuit.

February 25, 1909

(Syllabus by the Court.)

Where a patent contains a general claim for a combination of certain elements and a specific claim for a combination of a particular form, composition, or construction of an element of that combination with its other elements, the general claim is not limited to the particular form, composition, or construction of the element claimed in the specific claim but the general claim protects the element and its mechanical equivalents, although they may differ from the form composition, or construction claimed in the specific claim.

The description in a specification or drawing of a form, or a composition, or a construction of a mechanical element, when that form, composition, or construction is not essential to the combination or improvement claimed, is the mere pointing out of the best mode in which the patentee contemplated applying the principle of his invention pursuant to section 4888, Rev. St. (U.S. Comp. St. 1901, p. 3383), and it does not deprive him of protection against mechanical equivalents of the element, nor does it indicate that he intended to give up all other modes of application.

The specification and drawings of a patent described a lap deck composed of a rigid short deck and a flexible apron secured to its upper edge and extending beneath and beyond it. The patent had two claims, one general, for a combination of other elements with the lap deck, another specific, for a combination of the other elements with the lap deck, composed of a rigid deck and a flexible flap shown in the specification. The composition of the lap deck was not essential, and the flexible flap performed its function alone as efficiently as the rigid deck and the flap together.

Held The first claim was not limited to a lap deck composed of a rigid part and a flexible flap, but it protected the patentee against a lap deck made of the flexible flap alone, which was the mechanical equivalent of the lap deck of that claim.

It constitutes no anticipation and no defense to a claim of infringement that one or more elements of a patented combination, or one or more parts of a patented improvement, may be found in one old patent or publication, and others in another, and still others in a third. It is indispensable that all of them, or their mechanical equivalents, be found in the same description or machine, where they do substantially the same work by substantially the same means.

A patentee who acquiesces in the rejection of his claim on references is estopped from maintaining that an amended claim covers the combinations and devices shown in those references, or that it has the breadth of the rejected claim.

But he is not estopped from claiming and securing by an amended claim every improvement and combination he has invented that was not disclosed by the references on which his original claim was rejected.

Changes of the form, composition, or construction of parts of a device, or of some of the elements of a combination, will not avoid infringement, where the principle or mode of operation of the patentee is taken, and the changed form, composition, or construction is neither a distinguishing characteristic of the invention nor material to the device or combination, or its operation.

The substitution for the flexible dividing aprons of the combination of Froslid's patent No. 684,751, which are about four inches in length and which divide the stock, overlap at their delivery ends the receiving ends of the dividing aprons beneath them, and act as riders and carriers, of long flexible aprons with transverse slots whereby these aprons are in practical effect divided into sections about four inches long, which divide the stock, overlap at their delivery ends the receiving ends of the sections beneath them, act as riders and carriers, occupy the same relation to the other elements of the combination and perform the same functions as the dividing aprons of the patent, is the use of mechanical equivalents, and it will not avoid infringement.

Claim 1 of patent No. 668,175, issued February 10, 1901, to Anton S. Froslid, and claims 1, 2, and 3 of patent No. 684,751, issued October 15, 1901, to Anton S. Froslid, for improvements in grain separators, are valid, and were infringed by the defendant.

Claim 1 of patent No. 626,746, issued June 13, 1899, to Charles E. Bird, was not infringed.

Where a suit is brought upon several claims of one or more patents, and the complainant succeeds in obtaining relief upon some of the claims and fails to recover upon others, an equitable division of the costs proportioned to the expense of litigating the respective claims should be made, because the defendant is not justly liable for the costs of litigating those claims upon which the complainant was entitled to no relief.

A. C. Paul, for appellant.

James F. Williamson, for appellee.

Before SANBORN and HOOK, Circuit Judges, and PHILIPS, District Judge.

SANBORN Circuit Judge.

This appeal involves a decree for the usual injunction and accounting for the infringement of claim 1 of letters patent No. 626,746, issued June 13, 1899, to Charles E. Bird, claim 1, of letters patent No. 668,175, issued February 19, 1901, to Anton S. Froslid, and claims 1, 2, and 3, of letters patent No. 684,751, issued October 15, 1901, to Anton S. Froslid. These patents illustrate an advance in the art of separating oats from wheat, and disclose improvements in sieves and aprons, and in the arrangement of sieves and aprons in fanning mills, to accomplish such a separation. The fact that oats pass endwise but cannot pass sidewise through perforations no larger than required to permit the passage of wheat was obvious, and rigid and flexible aprons had been used as riders upon the mixed wheat and oats as they passed over vibrating sieves to prevent the oats from taking a vertical position, and thus passing through the perforations with the wheat, long before these patents were issued. The use of these aprons aided, but it failed to effect the separation satisfactorily. A fanning mill provided with a gang of sieves or screens inclining slightly downward from their receiving ends or heads and secured in a vibratory shoe was old in the art. A top sieve provided with a flexible apron resting upon the succotash upon it as a rider to keep the oats in a horizontal position, called a 'scalping sieve,' had been frequently used with an underlying gang of sieves, but these had proved ineffectual to accomplish well the result sought. Froslid attained that result in this way: He placed a gang of five sieves inclined downward from their receiving ends or heads in the vibratory shoe of a fanning mill, so that each underlying sieve extended farther to the rear than the sieve next above it. He hung upon a transverse bar over the head of the upper sieve by one end a long flexible apron or flap which extended the entire length of and served as a rider upon this uppermost or scalping sieve. When the succotash was fed to this sieve the kernels of wheat, which were smaller and heavier than the oats, commenced to rattle rapidly through it and through the screens beneath it near their heads, while the kernels of oats, which were lighter, tended to pass on toward the tails of the screens. Many of these oats, however, assumed a vertical position as they fell through the screens, and slipped through the parts of them more remote from their heads and then through the screens beneath, and mingled with the cleaner wheat which had dropped through near the heads of the screens. The problem he sought to solve was to find some way to keep the cleaner wheat that came through the head ends of the screens separate from the other parts of the stock until the latter could be completely cleaned, to deliver these other parts under aprons riding upon the screens which would keep the kernels of oats horizontal upon the screens below the scalping sieves, so that these parts of the stock might be separately subjected to the process until the wheat therein was completely extracted from the oats, and to prevent the stock from falling upon any parts of the screens not covered by imperforate aprons.

He conceived such a mode of operation and embodied it in these means. Beneath the scalping sieve and its single long imperforate flexible apron riding upon the succotash which was fed to this sieve near its head he placed four sieves so that the tail of each one extended a short distance beyond that of the screen next above it, and over each of these sieves he hung four short, dividing flexible imperforate aprons by their heads upon transverse wires so that the four transverse wires were about four inches apart, and the tail of each apron extended a short distance over the head of the corresponding apron beneath it between the screen on which it rode and the next screen below, and so that each of the aprons, except the four tail aprons, extended a short distance under the head of the next apron toward the tail of the sieve upon which it rested. The principle of this combination was (1) that the succotash which fell through the scalping sieve was immediately divided by these short aprons into parcels according to its grade, (2) that the cleaner parcel which fell through near the head of the scalping sieve was practically prevented from again mingling with the dirtier parcels until all the wheat had passed through the four screens and the process of separation was completed, (3) none of the oats or succotash fell upon any part of any of the four screens below the scalping sieve, but all of it fell upon imperforate aprons or imperforate heads of screens, and after...