Penfield v. C. & A. Potts & Co.

• Citation: 126 F. 475
• Decision Date: 03 November 1903
• Docket Number: 1,179.
• Parties: PENFIELD et al. v. C. & A. POTTS & CO.
• Court: U.S. Court of Appeals — Sixth Circuit

126 F. 475

PENFIELD et al. v. C. & A. POTTS & CO.

No. 1,179.

United States Court of Appeals, Sixth Circuit.

November 3, 1903

This is a bill to restrain infringement of letters patent No 332,393, granted C. and A. Potts, July 14, 1885, and letters patent, No. 369,898, granted to same parties August 23, 1897. Both patents are for improvements in clay disintegrators.

The specifications of patent No. 322,393, so far as deemed useful to a consideration of the questions to be decided, are as follows:

'Our invention relates to an improved machine for finely dividing and tempering clay.

'The object of our improvement is to disintegrate the clay by means of a revolving cylinder, which shall remove successive portions from a mass of clay which is automatically pressed against the cylinder, as hereinafter fully described.

'Fig. 4 of the drawing best shows the invention, and is here set out.

(Image Omitted)

'A is a cylinder mounted on a shaft, b, having suitable bearings on the frame, B. Said cylinder is of such length as to nearly fill the space between the sides of the frame. A series of steel bars, cc, are fitted into longitudinal grooves in the periphery of the cylinder, where they are secured by flush screws at each end, or other suitable means, whereby they are adjusted so as to present a sharp corner, d, Fig. 1, projecting above the surface of the cylinder. Opposite cylinder A a stong plate, D, is mounted on a shaft e, so as to swing in bearings on the frame, B. The central part, f, of said plate is cylindrical in outline, the upper portion, g, presents a straight surface, and the lower portion, h, presents to the cylinder a curved surface corresponding to the periphery of the cylinder. Plate D is caused to oscillate in its bearings by means of an eccentric wheel, i, on a shaft, j, mounted in suitable bearings on the frame, and connected by a yoke, k, with an arm, 1, secured to shaft e. Motion is given to shaft b by a belt running over driving pulley, m, and shaft j is revolved by means of friction gearing, consisting of a wheel, n, secured to a shaft, b, a wheel, o, secured to shaft j, and an intermediate wheel p, mounted on a short shaft having bearings in a swinging adjustable frame, r. The opposed sides of cylinder A, and the upper and central portions of plate D, form, together with sheet-metal end plates, ss, which are secured to the frame, a trough, one side of which approaches and recedes from the other at intervals, and which has at the bottom a narrow opening, t, of constant width.

'The operation of our machine is as follows: Plate D being swung back to the position shown in dotted lines, Fig. 4, the moist, untempered clay is thrown into the trough above mentioned. Cylinder A revolving rapidly, successive portions are removed from the mass of clay and carried through the opening, t, by the scraping bars, c, at the same time the upper portion of the plate, D, moves slowly toward the cylinder, thus keeping the mass of clay in close contact with the cylinder as successive portions are removed. The force with which plate D is removed toward the cylinder is regulated by drawing the intermediate friction wheel, p, more or less closely in contact with the wheels n and o by means of the screw-nut, u, thus lengthening or shortening the framer, r, the purpose being to cause friction between the wheels to move plate D sufficiently to keep the clay in contact with the cylinder, and also to slip when necessary to prevent undue pressure against the cylinder. The finely divided clay, after passing through opening t, falls upon the lower curved portion of plate D, and from thence to the incline w. If the clay is quite moist, some of it will adhere to the curved portion of the plate, and will again be brought in contact with the cylinder as the upper portion of the plate recedes to receive a new supply of clay, and will thus be removed.

'It is desirable at times, in disintegrating dry or nearly dry clay or other like substance, to feed the mass to the cylinder without great pressure. For this purpose we disconnect the yoke, k, and arm, 1, and throw wheel p out of engagement with the wheel o. By turning wheel o by hand, plate D may now be set at a suitable angle, as that shown in dotted lines, Fig. 4, or any intermediate angle between that and the position shown in full lines, so that the mass is fed to the cylinder by force of gravitation alone.'

The claims are as follows:

'(1) In a clay disintegrator, a supporting frame, a cylinder arranged to revolve, and a swinging plate, both mounted in said frame, and forming opposite sides of a trough for the reception of clay, and means for swinging said plate alternately toward and from said cylinder, all combined substantially as specified.

'(2) In a clay disintegrator, a supporting frame, a cylinder arranged to revolve, and having scraping bars attached to its periphery, and a swinging plate, both mounted in said frame, and forming opposite sides of a trough for the reception of clay, and means for swinging said plate alternately toward and from said cylinder, all combined substantially as specified.

'(3) In a clay disintegrator, a supporting frame, a cylinder arranged to revolve, and having scraping bars attached to its periphery, and an inclined plate, both mounted in said frame, and forming opposite sides of a trough for the reception of clay, all combined substantially as specified.

'(4) In a clay disintegrator, the combination, with the revolving cylinder, of the swinging plate, consisting of a central cylindrical portion, an upper straight portion, and a lower curved portion, all substantially as specified.

'(5) The combination, with the supporting frame, the revolving cylinder, and the swinging plate, of the shaft j, eccentric i, yoke k, and arm l, and wheels n, o, and p, substantially as and for the purpose specified.

'(6) In a clay disintegrator, the combination, with cylinder A, having a series of longitudinal grooves, of the scraping bars, c, adjustably secured in said grooves, for the purposes specified.'

Patent No. 368,898 covered a substitution of a smooth cylinder for the swinging or inclined plate of the first patent. This patent was withdrawn from the consideration of the court before a final hearing, and the cause heard only upon an alleged infringement of claims 3 and 6. These claims the court below held valid and infringed, and referred the cause to a master to report damages and profits. The master reported the net profits of defendants to be $13,964.65. Exceptions filed by both parties were overruled, the report confirmed, and a decree in accordance was allowed. From the decree only the defendants have appealed.

E. E. Wood and Edward Wetmore, for appellants.

Charles Martindale, for appellees.

Before LURTON, SEVERENS, and RICHARDS, Circuit Judges.

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

The validity of the sixth claim of the first Potts patent was adjudged in Potts v. Creager, 155 U.S. 597, 15 Sup.Ct. 194, 39 L.Ed. 275. In the opinion of that court the validity of the second Potts patent was doubted, though the point was not decided, Justice Brown saying:

'It is at least open to doubt whether, in view of the first patent, there is any novelty in substituting a smooth faced roller for the swinging plate of the first patent.' Subsequently, upon newly discovered evidence, the decree sustaining the patent was set aside, and both patents held void for want of novelty. Upon an appeal to this court we upheld the sixth claim as valid and infringed, that being the only claim of the first patent which was involved. The second Potts patent we held invalid, as anticipated by the first patent to Potts. Potts v. Creager, 97 F. 78, 38 C.C.A. 47.

The present suit is upon the third and sixth claims of the patent thus sustained. The evidence is identical with that upon which we heard the second appeal in Potts v. Creager, except as to the precise device alleged to be an infringement. Technically, the present appellants may not be concluded by our former decision, nor by that of the Supreme Court, because not parties or privies in the case of Potts v. Creager. But a decent respect for the stability of judicial decision, and a proper regard for the security of property in patents, requires that we shall not reverse our original holding in respect of the same patent, unless convinced of a very palpable error in law or fact. We are not convinced of error in the present case, and see no reason for disregarding the rule of star decisis. We must therefore affirm the decree of the court below, so far as it held the sixth claim of the original Potts patent valid, leaving open only the question of infringement.

Passing for the present any question as to the scope of this claim and the question of its infringement, we shall first dispose of the appeal so far as the third claim is concerned. That claim was not directly involved in the case of Potts v Creager, and the only bearing that the opinion of either the Supreme Court or this court has upon that claim grows out of the fact that in the Creager Case the suit was also upon the claims of the second Potts patent. The Supreme Court, as we have already stated, expressed a doubt as to whether the mere substitution of a smooth cylinder in place of the inclined or swinging plate of the first patent as the member opposite the barred cylinder of that patent embodied a patentable novelty, and this court, upon an even fuller record, expressly held that the second patent embodied 'no patentable improvement over the first. ' Whether this conclusion was based upon a construction of the sixth claim which would entitle the patentee to the use of a smooth roller as the abutting member of a clay...