Micromatic Hone Corporation v. Mid-West Abrasive Co.

• Decision Date: 23 November 1949
• Docket Number: No. 10810.,10810.
• Citation: 177 F.2d 934
• Parties: MICROMATIC HONE CORPORATION v. MID-WEST ABRASIVE CO.
• Court: U.S. Court of Appeals — Sixth Circuit

177 F.2d 934 (1949)

MICROMATIC HONE CORPORATION v. MID-WEST ABRASIVE CO.

No. 10810.

United States Court of Appeals Sixth Circuit.

November 23, 1949.

Arthur W. Dickey, Detroit, Mich., Arthur W. Dickey, Detroit, Mich., on the brief; Harness, Dickey & Pierce, Detroit, Mich., of counsel, for appellant.

C. B. Zewadski, Detroit, Mich., Clarence B. Zewadski, Detroit, Mich., on the brief; Whittemore, Hulbert & Belknap, Detroit, Mich., of counsel, for appellee.

Before SIMONS, ALLEN and MILLER, Circuit Judges.

MILLER, Circuit Judge.

This action was brought by the appellant, Micromatic Hone Corporation, for alleged infringement by the appellee, Midwest Abrasive Company, of claim 1 of Calvert patent No. 1,908,218 for "Abrasive Stone Holder," issued May 9, 1933. The stone holder is used in conjunction with honing equipment for finishing internal cylindrical surfaces such as the cylinder bores of internal combustion engines. The District Judge dismissed the complaint.

Appellant is the owner of the Calvert patent, claim 1 of which is the only claim in suit, and which reads as follows: "A honing element for a grinding tool including, an abrasive element and a metal backing member therefor having upstanding sides which are flanged laterally at their upper ends outwardly from the element."

Appellant also manufactures and owns patent rights to a honing tool on which these abrasive stone holders are mounted and used. The honing tool is reciprocated and rotated in the cylinder bore with the honing elements in abrading contact with the walls of the cylinder bore for the purpose and with the result of grinding the bore to a finish size and providing a finished and polished surface.

The tool head is provided with honing element receiving shoes, which are long, narrow, channel-shaped steel members provided with outwardly presented channels to receive the honing elements. There are usually six of these receiving shoes in each tool head, which are spaced apart about the circumference of the tool head, and arranged so that they may be moved inwardly and outwardly radially with respect to the center of the tool head. These receiving shoes are permanent parts of the tool and are adapted to receive and hold the honing elements which are covered by the patent in suit.

The abrading stone which forms part of the honing element is a manufactured article composed of small particles of abrasive grit, secured together by a vitreous bond and pressed and molded in heat to the desired shape, which is usually long and rectangular. The stone is secured by an adhesive cement in a thin sheet-metal channel, the sides of which extend only part way up the sides of the stone. The ends of the backing member are provided with projections that form hooks by means of which the stone shell unit is secured in the steel receiving shoe which forms part of the honing tool.

The appellant also owns the Jeschke abrasive stone holder patent No. 1,821,518, in which the metal shell in which the abrasive stone is placed was a thin steel or backing member of channel shape with straight sides. Prior to the patent in suit, great care had to be taken to replace the stones in the honing elements before they became worn down to such an extent that the surface of the cylinder bore being ground would be engaged by the hardened and ground receiving shoe which would result in scoring the wall of the cylinder. Some stones wore faster than others and some parts of a single stone wore faster than other parts of the same stone. The Calvert patent relates to an improved holder of the abrasive stone in that the edges of the sides of the channel-shaped backing member are flanged outwardly, so that when the stone becomes worn or broken the stone holder will not score the interior of the bore, and is less subject to chatter or vibration.

Appellant does not manufacture abrasive stones, but purchases them from various companies and mounts them in its abrasive stone holders. The abrasive stones are not patented to appellant. Appellant's honing tools endure many years in operation, but the abrasive stones wear out in about six hours of continuous use and have to be replaced. Formerly, when the abrasive stone wore out, appellant would purchase back from the customer the abrasive stone holder with the used stone herein for two cents and would then refill the old stone holder with a new stone and again sell it to its customer. Later in view of the low cost of the metal stone holder, appellant adopted the practice of mounting each new abrasive stone in a new stone holder. The used stone holder was scrapped.

Appellee is a manufacturer of solid and coated abrasives, producing abrasive stones for use in honing operations and which can be used in conjunction with appellant's patented honing tool and patented abrasive stone holder. Appellee does not manufacture any abrasive stone holders for honing operations, but claims to manufacture superior abrasive stones. Some manufacturers who own and operate appellant's honing tools prefer to use appellee's stones rather than the stones provided by the appellant. At first, appellee furnished appellant with its stones and appellant would mount these stones in its abrasive stone holders in filling such customer's orders. This practice did not work out satisfactorily, and appellee adopted the policy of selling its stones directly to the owners of the honing tools who could refill appellant's stone holders with appellee's stones. This proved inconvenient to the manufacturers who later insisted that appellee mount its stones in stone holders if it desired the manufacturer to use its stones. Appellant would not sell its metal stone holders to appellee. Accordingly, appellee adopted the practice of having the customer ship to it the stone holder with the used stone therein, which the customer had previously purchased from appellant. Appellee then removed the used stone from the stone holder by placing the assembly in a solution which dissolved the adhesive which held the old stone in the metal holder. Appellee then replaced the used stone with a new stone of its own manufacture and returned the old stone holder with the new stone therein to the customer. If the hooks on either end of the holder, or if the body of the holder, was slightly bent, the appellee straightened the same by means of a hammer or pliers. If the old stone holder showed signs of rust, the appellee treated it with a rust resistant. Appellee's customers knew that they were receiving appellee's stones mounted in holders manufactured and sold by appellant. Appellee charged its customers a price which ranged from a price equal to appellant's price to a price 20% in excess of that.

The infringement charged by appellant in this section is the removing of the old stone from the metal backing member or shell, the reconditioning of the metal backing member, the placing of a new stone of appellee's manufacture in the old metal backing member, and the resale of the unit to the hone user. Appellee contended in the District Court that it was not infringing, because (1) it was merely replacing a perishable element, unpatented per se, in the combination of claim 1; (2) that reconditioning the stone holder was a repair of appellant's patented product and not reconstruction thereof; (3) that claim 1 of the Calvert patent was invalid because it was directed solely to the improvement of an element of an old patented combination and appellant had not limited his claim to the improved element, as required by law; (4) that claim 1 of the Calvert patent was invalid because it did not constitute invention; (5) that it was invalid in view of the prior art; and (6) that appellant came into Court with unclean hands because of its efforts to monopolize the sale of unpatented abrasive stones when used in connection with its patented honing tools and patented stone holders. The judgment as entered did not refer to the...