Schaum & Uhlinger, Inc. v. Copley-Plaza Operating Co.

• Citation: 260 F. 197
• Decision Date: 08 August 1919
• Docket Number: 802.
• Parties: SCHAUM & UHLINGER, Inc., v. COPLEY-PLAZA OPERATING CO.
• Court: U.S. District Court — District of Massachusetts

260 F. 197

SCHAUM & UHLINGER, Inc., v. COPLEY-PLAZA OPERATING CO.

No. 802.

United States District Court, D. Massachusetts.

August 8, 1919

Van Everen, Fish & Hildreth, of Boston, Mass. (Alfred W. Kiddle and Henry T. Hornidge, both of New York City, and Alfred H Hildreth, of Boston, Mass., of counsel), for plaintiff.

Oliver Mitchell, of Boston, Mass., and Edwin F. Thayer, of Attleboro, Mass., for defendant.

ANDERSON Circuit Judge.

This is an infringement suit brought by the owner of patent No 1,063,478, dated June 3, 1913, against the Copley-Plaza Operating Company. The title of the patent is 'Process for Polishing Utensils.' Jean Uebersax, of Switzerland was the inventor and original applicant. The application was dated April 7, 1911.

The defendant is using in its hotel a polishing machine furnished it by the Smith-richardson Company of Attleboro, Mass., which is assisting the Copley-Plaza Company in the defense of this suit. The usual defenses are set up in the answer, including noninfringement; but the main reliance of the defense is the alleged invalidity of the patent.

The defense of noninfringement may conveniently and briefly be disposed of as a preliminary matter. The defendant's machine was sold it by one Young, who now has the exclusive selling agency of the Smith-Richardson machines for the hotel and restaurant trade. From January to October, 1915, Young was employed to sell machines adapted specially to the plaintiff's process, then called the Tahara machine. After his discharge by the Tahara Company, the plaintiff's predecessor in title, and his employment by the Smith-Richardson Company, certain changes were, at his suggestion, made in their machines so as to adapt them commercially for polishing in accordance with the plaintiff's process. It is clear, and I find, that Young became familiar with this process while with the Tahara Company, and later undertook to exploit it for the benefit of his new employer and himself as exclusive agent in the hotel and restaurant trade. The defendant is, as the evidence plainly shows, using a process indistinguishable in any material or legal aspect. If the patent is valid, the plaintiff is entitled to hold the defendant as an infringer.

The material parts of the patent are as follows:

'This invention relates to a process for polishing silver utensils, that is to say, for rendering silver plates and other silver utensils for table and culinary purposes brilliant by polishing. This process consists in placing those silver utensils to be polished which are very liable to get out of shape, such, for example, as teapots, plates, coffeepots, sauceboats, etc., with an aqueous soap solution of 2 to 4 per thousand for example, and with small steel balls and small steel pins, in a rotary drum, and in causing the drum, thus charged and closed as hermetically as possible, to revolve for a certain time in order that, under the combined action of the steel balls and pins and the soapy water upon the silver utensils, the latter may become polished, the steel balls and pins being employed in such quantities that they always completely cover the silver utensils during the rotation of the drum, for the purpose of avoiding almost the radial displacement of the said articles and consequently of preventing them from getting out of shape. Consequently the position of each utensil to be polished relatively to the longitudinal axis of the drum is not changed during the rotation of this latter, the steel balls and pins effecting only a restrained and slow displacement along the surfaces of the utensils to be polished.'

Then follows a description of a convenient but unpatented polishing device consisting of a rotary prismatic drum or tumbling barrel, with the requisite operating machinery so arranged as to be open at one side over a trough and sieve in order to separate the polishing mass from the articles polished. The patent then continues:

'During the rotation of the drum the silver utensils, which are liable easily to get out of shape, will remain always fully enveloped by the steel balls and pins, and, as these balls and pins are much more mobile than the said utensils, the latter will never become much displaced in the radial direction within the drum during the rotation of the latter, and will consequently not be subjected to deformation.

'The utensils have such relation to the polishing mass in specific gravity as to be kept approximately central of the drum in its rotation, and will neither fall to the bottom nor rise to the top in the rotation of the drum, and hence are kept from contact with the walls of the drum and prevented from being deformed in any way. The speed of rotation varies according to the character of the article; that is, a perfectly round article would still remain central whether the speed be high or low, but an article having projections, such as a water pitcher or the like, would be dislodged from an absolutely central position, due to the irregular action upon the projecting parts; and hence the rotation is adjusted to a comparatively low speed, which will not materially dislodge any articles which it is desired to clean from the approximately normal central position during rotation, the drum, besides, being capable of being subdivided by transverse partitions removably adapted to its part b, and serving to prevent the lateral displacement of the silver articles which are liable easily to get out of shape.

'What I claim is:

'The method herein described of polishing articles, consisting in subjecting the articles to rotation while suspended within a polishing mass, the relative specific gravity of the articles and polishing mass being such as to maintain the articles approximately central of the polishing medium during rotation, substantially as described.'

The plaintiff's expert witness, William A. Johnston, Professor of Theoretical and Applied Mechanics at the Massachusetts Institute of Technology, describes this process as follows:

'The process is one for polishing silver utensils; that is to say, for rendering silver plates and other table utensils for table and culinary purposes brilliant by polishing. The process consists of subjecting the articles to be polished to rotation within a polishing medium, and producing this rotation while the article is suspended in the polishing medium.'

'This means the article to be polished is actually rotated within the polishing mass, while suspended in that mass; that is to say, under such conditions that it is not substantially displaced radially from approximately the central position during rotation. Or, in other words, the article is rotated while continuously held approximately central of the mass; and excludes a condition where the article passes in and out of the mass; that is, where the article is sometimes within and sometimes without the mass.'

The polishing mass suggested by Uebersax consists of steel balls of various sizes, but all small, and steel pins or 'oats,' with soapy water enough to cover the mass in the tumbling barrel. Prof. Johnston continues his exposition of the process as follows:

'The inventor suggests as a preferred means the use of a polygonal drum which is subjected to rotation by some driving mechanism, the drum in turn subjecting the polishing mass therein to rotation, and the polishing mass in turn subjecting the article within it to rotation. The inventor discovered that it was possible to suspend the article within the polishing mass by applying certain laws of mechanics. Certain elements enter into this problem of suspending the body within the polishing mass as that expression is used in the patent:

'(a) Speed of rotation of the polishing mass relative to the size and shape of the article to be polished;

'(b) The relative specific gravity of the mass and of the article to be polished;

'(c) The relative quantity of the polishing mass to the size and shape of the article to be polished.

'As pointed out by Uebersax, the speed of rotation is relative to the size and shape of the article; the more irregular the article, the more tendency it has to be displaced radially from a central position, and hence the more irregular the article the more necessity for adjusting the speed.

'With reference to the relative specific gravity of the mass and article to be polished, and using specific gravity in its technical sense, the relation between the weight of the article and the weight of an equal volume of water, it is evident that a certain relation between the specific gravity of the article as it is in the mass, and of the mass, must be found present in order to preserve the suspension of the article within an approximately central position. Uebersax points out that this condition is present in the case of the articles and of the polishing mass with which he is concerned. In regard to the quantity of the polishing mass, in order that the process shall be carried out to

the best advantage, Uebersax states that it should be such that the article is substantially covered by the mass during rotation.'

Obviously the gist of the invention is that the article to be polished remains, during the process, suspended in the polishing mass instead of being thrown in and out of the mass and against the sides of the revolving drum as well as against other articles subjected at the same time to the polishing process. The plaintiff's claim is that by the Uebersax process the article polished is touched only by the polishing mass, consisting of smooth steel balls and pins and soapy water; that therefore awkwardly shaped articles, like coffeepots, ramekin dishes, platters, etc., are never scratched or deformed; and that the plate is not worn off, as in the...