Jones v. Sykes Metal Lath & Roofing Co.

• Decision Date: 04 June 1918
• Docket Number: 3032.
• Citation: Jones v. Sykes Metal Lath & Roofing Co., 254 F. 91 (6th Cir. 1918)
• Parties: JONES et al. v. SYKES METAL LATH & ROOFING CO.
• Court: U.S. Court of Appeals — Sixth Circuit

254 F. 91

JONES et al. v. SYKES METAL LATH & ROOFING CO.

No. 3032.

United States Court of Appeals, Sixth Circuit.

June 4, 1918

2. The slitting-rolls for cutting expanded metal, provided with spaced and countering rings having sharp corners for cutting the metal, such corners being interrupted by notching out the side faces of the rings for a portion of the thickness of the rings, substantially as specified.

The court below held the patent invalid.

Dyrenforth Lee, Chritton & Wiles and Russell Wiles, all of Chicago Ill., and Bates & Macklin, of Cleveland, Ohio, for appellants.

Whittemore Hulbert & Whittemore and James Whittemore, all of Detroit, Mich., for appellee.

Before KNAPPEN and DENISON, Circuit Judges, and SESSIONS, District judge.

DENISON Circuit Judge (after stating the facts as above).

Infringement of both claims is alleged; and, if they receive the construction which we think they must have, infringement is conceded.

Several earlier uses are set up in order to anticipate or otherwise invalidate the second and broader claim. We agree with the District Judge that the claim is invalid; but we think this conclusion is most safely based upon the earlier so-called segmental cutter. Curtis made his constructive reduction to practice by filing his application in October, 1900. He claims to have conceived the invention in June of that year; but the evidence of any definite early conception of the invention embodied in these claims is vague, and there was no disclosure until in the course of preparing the application. The defendant's predecessor experimented in the summer of 1899 with a machine of this general class, and in December of that year let a contract for the building of a commercial machine. This commercial machine was completed in the spring of 1900 and operated by hand sufficiently to demonstrate its effectiveness. This is proved with all the certainty necessary to establish a claim of anticipation. The rolls were not operated by power at that time, because they were intended to be only a part of the complete machine which should cut and expand, and the expanding part was not ready; but there was no necessary connection between the two parts, and we consider what was done to be a sufficient reduction to practice of the idea involved. It was the same as that later developed by Curtis, with two exceptions: (a) The notches were placed upon the corresponding (say left-hand) edges of each cutting roll, upper and lower, instead of upon both edges of the upper rolls only, as in Curtis' preferred form; (b) instead of cutting notches in the edges of the body of the roll, defendant's predecessor made the roll of less diameter than the adjacent spacing disc, and then built it out with a series of so-called segments until it was of the larger diameter required for the cutting roll. Each segment contained a portion of the cutting edge having one notch (two half notches) therein, and was bolted fast to the body of the roll. When they were all in place, they constitute a continuous roll-cutting edge interrupted by notches. This awkward arrangement was adopted because it was thought the cutting edge must be of harder steel than was advisable for the body of the roll, and because it was thought that separable parts would facilitate sharpening and repairs. It was anticipated that notches would break down and wear out, and in this way one part could be replaced without affecting the rest of the roll. When the entire machine was later completed, it was employed for some time to produce the commercial result. It was finally discarded and replaced by the Curtis construction, because the making in this segmental way and the necessary replacements and repairs proved to be too expensive.

This segmental cutter, although it had never been patented or described in any printed publication and was not known to Curtis, yet was a part of the prior art, with reference to which the character of his variation therefrom must be judged. If some one else had completely invented and used this segmental cutter, and if what Curtis did involved no invention over what had thus been done, certainly Curtis was not entitled to a patent as the first inventor of the thing which he produced. One cannot be an inventor, if there is no invention. See Package Co. v. Johnson Co. (C.C.A. 6) 246 F. 598, 601, 159 C.C.A. 568; Lemley v. Dobson (C.C.A. 6) 243 F. 391, 395, 156 C.C.A. 171; and see Buser v. Novelty Co. (C.C.A. 6) 151 F. 478, 492, et seq., 81 C.C.A. 16. This is not a case where a prior use, exact or suggestive, had been abandoned, and so perhaps should go into oblivion instead of into the prior art; the segmental cutter was in complete and active existence, when Curtis made his conception, and in commercial use when he filed his application. If the segmental cutter is not generally different from Curtis' form, then it follows that the substance of claim 2-- a square-edged cutting roll notched on one edge only-- has been in continuous use by defendant and its predecessor ever since a date earlier than Curtis' invention, for change in form within the limits of the claim would not interrupt the continuity of the use.

We find thus presented the controlling question whether Curtis' integral square-edged cutting roll with notches on the edge involved...