Pennsylvania Crusher Co. v. Bethlehem Steel Co.

• Decision Date: 27 December 1951
• Docket Number: No. 10465.,10465.
• Citation: 193 F.2d 445
• Parties: PENNSYLVANIA CRUSHER CO. et al. v. BETHLEHEM STEEL CO. et al.
• Court: U.S. Court of Appeals — Third Circuit

193 F.2d 445 (1951)

PENNSYLVANIA CRUSHER CO. et al. v. BETHLEHEM STEEL CO. et al.

No. 10465.

United States Court of Appeals Third Circuit.

Argued November 15, 1951.

Decided December 27, 1951.

W. B. Morton, Frank A. Bower, New York City (Harry S. Dunmire, Pittsburgh, Pa., on the brief), for appellants.

Harker H. Hittson, Columbus, Ohio (Jo. Baily Brown, Julian Miller, Brown, Critchlow, Flick & Peckham, Pittsburgh, Pa., on the brief), for appellees.

Before MARIS, KALODNER and STALEY, Circuit Judges.

STALEY, Circuit Judge.

This is a patent infringement action. The Pennsylvania Crusher Company ("Pennsylvania") is assignee of Patent No. 2,149,571 (hereinafter caller the "Battey patent") and is licensee of Patent No. 2,155,151 issued to William H. Schacht. Pennsylvania has joined with Marguerite C. Schacht, administratrix of the estate of William H. Schacht, deceased, in bringing this suit against the Bethlehem Steel Company and The Jeffrey Manufacturing Company, alleging infringement by defendants of Claim 2 of the Schacht patent and Claims 4, 6, 9, and 10 of the Battey patent.¹

In April 1939, defendant Jeffrey sold to defendant Bethlehem two 42" × 82" Type B swing hammermills, which were placed in operation in Bethlehem's Johnstown, Pennsylvania, plant by March 1940. The operation of these two hammermills by Bethlehem constitutes the basis of the charge that Bethlehem has infringed both patents. Jeffrey is charged with contributory infringement of both patents and is alleged to be a direct infringer of the Battey patent.

Holding the patents to be invalid and not infringed, the district court entered a judgment dismissing the complaint and awarding costs and reasonable attorneys' fees to defendants. This appeal followed.

The subject of both patents is the hammermill crusher. Hammermills have been used for many years to crush coal, ore, stone and like materials. A typical crusher of the hammermill type consists of a horizontal rotating shaft carrying several rows of hammers which are projected radially from the shaft and are mounted for swinging movement. The hammers rotate at a very high velocity. For example, the alleged infringing devices, the Jeffrey-Bethlehem crushers, normally operate at 735 R.P.M. The hammers are enclosed by a casing or housing, the upper half of which is lined with heavy iron plates, known as breaker plates. Spaced grate bars line the lower half of the casing. The material to be crushed enters through a feed opening in the upper part of the casing and drops by gravity, some of it falling directly into the paths of the revolving hammers, where it is at least partially crushed by the impact of the hammers and is then impelled against the breaker plate for further crushing. The crushed particle then falls into the path of another hammer to be impacted again. The material finally falls into the bottom of the casing, where it is crushed by the hammers against the grate bars through which the material eventually falls.

It is easily understandable even to the layman that more efficient crushing results when the particles are not given glancing blows but are squarely impacted. Every lad who has stood at home plate anxiously awaiting the pitcher's delivery realizes that a foul ball will not bolster his batting average. It is plaintiff's contention that Schacht made an original contribution to the art of crushing by teaching how to obtain a square impact. The Schacht patent, a method patent, teaches the necessity of so correlating the feed velocity of the particles with the velocity of the hammers and the spacing of the hammers that substantially each particle of the stream is carried fully into the path of an impact member. A sufficiently high velocity of the feed is obtained by simply harnessing the law of gravity; hence the name "High Drop," which plaintiff Pennsylvania affixes to its hammermills.²

The district judge found Claim 2 of the Schacht patent invalid on the grounds of anticipation by the prior art, vagueness, and insufficient description and disclosure.

We are in agreement with the findings of the trial judge. The opinion written by that court was a comprehensive one and an excellent one.³ Indeed, there is really little that this court can add.

The standard of description to which the inventor must conform is clearly set out by statute. R.S. § 4888, 35 U.S.C.A. § 33. The inventor is directed to describe his invention in "such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which it appertains * * * to make, construct, compound, and use the same * * *." In return for the grant of a patent monopoly, the statute thus exacts a consideration. Specifically defined claims perform a dual function: the public is given adequate notice as to the bounds beyond which it cannot safely trespass, and specific teaching enables others to use the invention successfully when the period of monopoly ends. Further, unless the inventor clearly distinguishes between the prior art and his original contribution, it is difficult for the court to determine whether novelty and invention are genuine. United Carbon Co. v. Binney Co., 1942, 317 U.S. 228, 232, 63 S.Ct. 165, 87 L.Ed. 232; General Electric Co. v. Wabash Corp., 1938, 304 U.S. 364, 368-369, 58 S.Ct. 899, 82 L.Ed. 1402.

To meet the statutory standard of description for a method or process patent, the claim must include all necessary occurrences in the process. See 2 Walker on Patents § 171 (1937 Ed.) We agree with the trial judge in his conclusion that the Schacht claim is defective in this respect. The larger a given particle, the farther it must fall in order for it to be squarely impacted. Thus, the size of the particles is crucial. But, as the trial court well observed, the Schacht claim makes no mention of the importance of the size range of the material. In order to use the Schacht method effectively, a screen analysis of the material is a prerequisite, for the size range of the particles must be determined and the relative frequency of the larger size particles ascertained. Schacht also is silent with respect to the significance of the length of the hammers.⁴ The bare statement that the feed velocity must be sufficient to "carry substantially each particle of the stream fully into the path of the impact member" is not an adequate description; it is merely descriptive of the result desired — i. e., full impact. See General Electric Co. v. Wabash Corp., supra.

The Schacht claim is so vague as to make it virtually impossible for those skilled in the art to know where the scope of the patent monopoly ends. Even were we to assume that the patent gives adequate treatment to the importance of the size range of the material, how does the hammermill operator know when he has attained substantial penetration? As the trial court so ably pointed out, a hammermill operator who was not operating in accordance with the Schacht method might on any given day suddenly find himself infringing the patent merely because he commenced using materials of a smaller size range.

Since we are dealing with a stream of particles, it is elementary that, regardless of the velocity of the material, some of the particles must be given glancing blows. What percentage of glancing blows does the Schacht claim contemplate? If the best penetration attainable will vary with the size range and distribution of the material and the length of the hammers, then these limitations should be set forth in the claim. Moreover, some of the descending particles are destined to strike the tops of the hammers. What percentage of these will eventually fall into the path of a hammer and be squarely impacted?⁵ The patent offers no illumination as to this. Further, there is a space between each of the adjacent hammers in any one row. Since defendant's calculation reveals that in the Jeffrey-Bethlehem crusher 46% of the hammer cylinder is not traversed by hammers, a corresponding 46% of the particles are doomed to fall into these spaces, and thus not be impacted except possibly by side blows. Defendant's calculation, not contradicted by Pennsylvania, clearly shows that in the Jeffrey-Bethlehem hammermills only 42.5% of the particles are projected by gravity at such velocity as to be squarely impacted. If the "substantial penetration" in the Schacht patent is intended to mean substantial penetration only of those particles which fall into that part of the hammer cylinder traversed by hammers, then the Schacht claim should have been so narrowed.

The opinion of the trial court dealing with the anticipation of the Schacht patent by the prior art is thoroughly comprehensive and there is no need for us to elaborate on it. That court's findings of fact with respect to the Schacht patent are adequately supported by the record.

The Battey patent is an apparatus patent. The essential elements of the Battey machine are a feed inlet located centrally over the hammer system, a reversible rotor, and a crushing chamber having its opposite sides symmetrical with relation to a central longitudinal vertical...