Paraffine Companies v. McEverlast, Inc.

• Decision Date: 08 June 1936
• Docket Number: No. 7720.,7720.
• Citation: 84 F.2d 335
• Parties: PARAFFINE COMPANIES, Inc., v. McEVERLAST, Inc., et al.
• Court: U.S. Court of Appeals — Ninth Circuit

84 F.2d 335 (1936)

PARAFFINE COMPANIES, Inc., v. McEVERLAST, Inc., et al.

No. 7720.

Circuit Court of Appeals, Ninth Circuit.

June 8, 1936.

Miller & Boyken, Charles S. Evans, and Hugh N. Orr, all of San Francisco, Cal., for appellant.

Lyon & Lyon, Frederick S. Lyon, and Irwin L. Fuller, all of Los Angeles, Cal., for appellees.

Before WILBUR, DENMAN, and MATHEWS, Circuit Judges.

DENMAN, Circuit Judge.

This is an appeal from a decree dismissing a bill charging infringement of certain claims of two patents. The issues raised by the answer were invalidity by reason of prior public use and noninfringement. The trial court found that of the claims in suit all but four were invalid, and that of the four valid claims none was infringed.

The first patent in suit, Rosener & Doane, No. 1,500,769, describes a machine for wrapping pipe which is to be laid underground. The covering of underground metal pipes with a protective sheaf is necessary to prevent corrosion. A most satisfactory material appears to be felt paper impregnated with an asphalt compound. Formerly the wrapping was done by hand, a process unsatisfactory because such wrapping had to be done in the factory rather than in the field; because it was slow and cumbersome; and because the hand process cannot achieve that smoothness of spiral wrapping essential to uniform protection throughout the length of the pipe.

In 1913 a so-called lathe type of pipe-wrapping machine was perfected (French patent No. 1,151,096). The pipe to be wrapped was held at each end in a stationary frame, in such a manner that the pipe could revolve on its axis at any desired speed. A short distance from the revolving pipe was a traveling carriage bearing a roll of wrapping material. The carriage traveled in either direction parallel to the pipe's axis of revolution, feeding the wrapping material to the pipe as the latter revolved. The roll of material could be adjusted on the carriage to feed the strip to the pipe at the desired angle to the latter's axis to achieve the proper degree of spiral in the wrapping.

The lathe type of machine was unsatisfactory, in that each length of pipe had to be wrapped and taken out of the machine before another could be put in; and, a more serious defect, in that the smaller diameter pipes would sag from their own weight between the ends at which they were supported. Thus the wrapping would not be uniform throughout the pipe's length.

The Rosener & Doane machine (1,500,769), patented July 8, 1924, obviated the difficulties of both hand wrapping and the lathe type machine. It provided a means whereby pipe could be continuously wrapped, a second length being inserted in the machine before the first was finished. It also provided a means whereby the spiral wrapping could be made even throughout the length of the pipe.

The central feature of this patent is that the pipe, when placed in the machine, does not merely revolve. It also moves axially or longitudinally. It is fed forward into the machine the while it turns on its axis. Passing out the other side of the apparatus, it is wrapped from a roll of material adjusted at the angle to the pipe to give the desired degree of spiral to the wrapping. The pitch of the spiral is regulated by relative variations of the axial and rotary speeds of the pipe.

This adjustability between the two movements is accomplished by three feed rollers which engage the pipe and propel it forward through the machine at the same time they are causing it to revolve. The feed rollers are driven simultaneously through gearing to the central source of power. The feed rollers are adjustable about axes perpendicular to their axes of revolution. This means that the rollers can be turned into a position where their edges will strike the pipe transversely, imparting to it a purely rotary motion; likewise, by turning the rollers to an angle 90 degrees from the position just described, the roller edge will engage the pipe longitudinally, giving it a purely forward movement with no rotation. The rollers can be set at any angle between the two extremes. The angle will determine the relative rotary and longitudinal motions of the pipe and so determine the pitch of the spiral wrapping.

The shafts bearing the rollers are fixed on coiled springs in such fashion that each shaft will bear down on the pipe, holding it in position for its journey through the machine; but, by means of the resilient spring, will move radially away from the pipe to accommodate couplings or other unevenness in the pipe's surface. An outstanding feature of the Rosener & Doane machine is the means provided for simultaneous adjustment of the three feed rollers to give the proper relative motions to the pipe. Each roller shaft carries a small gear which is meshed with a single gear carried on a large circular wheel. This wheel is adjusted to be turned manually by means of a hand screw. Passing through the machine, the pipe is engaged by the strip of wrapping material which in the meantime has been led from a roll down into and through a tank of hot asphalt material and thence led up to and onto the pipe by means of guide rollers.

The claims of the Rosener and Doane patent alleged to be infringed are 1, 4, 5, 13, 14, 15, 18, 19, and 20. Claim 1 reads: "In a machine for wrapping cylindrical objects, a feed roller, means for adjusting said feed roller about an axis perpendicular to its axis of rotation, and means independent of said objects for rotating said feed roller."

Claim 4 adds to the above a means for adjusting the position of the feed roller radially to the pipe, to hold the pipe in position. Claim 5 adds means for resiliently holding the pipe in such position (the coiled spring). Claims 13, 14, 15, and 20, so far as here material, describe means for simultaneously adjusting the three feed rollers about axes perpendicular to their axes of rotation. Claims 18 and 19 describe the means for feeding a strip of wrapping material through a body of fluid and onto the pipe.

The second patent in suit, Rosener No. 1, 1,686,929, patented October 9, 1928, describes an apparatus for simultaneously rotating and longitudinally moving a pipe through the machine with means to vary relative to each other the rotary and forward movements to attain the desired spiral. So far as moving the pipe is concerned, the second patent discloses nothing differing in principle from the first. The novelty is in the means by which the wrapping is fed to the pipe. In the Rosener and Doane machine the guide rollers which carry the strip of material from the roll through the tank of asphalt compound and onto the pipe are fixed to the tank, and separate from the frame of the machine proper. To vary the angle at which the strip is fed to the pipe, it is necessary to shift the entire tank. In the second patent, to borrow the words of appellant's brief, the utility is "somewhat improved by providing a strip guiding means structurally integral with the wrapping machine itself and movable to vary the angle at which the strip of wrapping material could be fed to the pipe. This made a more compact and dependable commercial machine." Claims 19, 20, and 21, the only claims of the second patent now in issue, describe this means for adjusting the roll and strip of wrapping material relative to the axis of the pipe.

In the McEverlast machine, the alleged infringing device, the pipe moves longitudinally through the apparatus the while it is being rotated; over a tank of asphalt compound through which passes the wrapping material before it engages the pipe. The pipe is rotated and propelled, not by feed rollers, but by two driving disks, one above and one below the pipe. The pipe engages an edge of each disk, and is thus rotated and propelled forward at the same time. Adjustment between the rotary and longitudinal movements is not made by varying the positions of the disks which are stationary except that they can move radially away from the pipe and hold it in position by means of resilient springs. Adjustment of rotary and longitudinal movement is made by moving a frame holding the pipe as it is driven forward and rotated by the disks. By thus moving the pipe up or down, its position relative to the edges of the disks is altered. Relative rotary and longitudinal movement is determined by the direction of the tangents of the disks at the point where the pipe touches them.

One defense interposed at the trial was prior public use of the claims in suit under both patents under Rev.St. § 4920 (35 U.S.C.A. § 69). This provides that it is a defense to a suit for infringement if the patented article "had been in public use or on sale in this country for more than two years before his the inventor's application for a patent, or had been abandoned to the public."

The claimed anticipation was alleged to be effected by a so-called "cross-roll" machine used to wrap pipe commercially from 1912 until 1926 at the plant of the National Tube Company, a subsidiary of United States Steel, in Versailles, Pa. That such a machine was constructed and used is amply shown by depositions of one Buckingham, master mechanic at Versailles for 30 years, who constructed it; J. W. Ross, also an employee of National Tube, who tended the machine until 1913; Lynch, superintendent of the galvanizing plant, who was familiar with the operations of the cross-roll device; Max Rosencranz, at the time of testifying, superintendent at the National Tube plant, and, at the time he observed the alleged anticipatory device, a mechanical engineer on the staff of a concern affiliated with National Tube; and R. H. Brendle, machinist at the Versailles plant.

The cross-roll machine went out of operation about 1926. That year, and the following, photographs of it were made which have been introduced in evidence. The witnesses just mentioned testified that the pictures were accurate reproductions of the cross-roll machine. From these photographic...