Torrey v. Hancock

• Decision Date: 26 November 1910
• Docket Number: 3,311.
• Citation: Torrey v. Hancock, 184 F. 61 (8th Cir. 1910)
• Parties: TORREY et al. v. HANCOCK.
• Court: U.S. Court of Appeals — Eighth Circuit

184 F. 61

TORREY et al. v. HANCOCK.

No. 3,311.

United States Court of Appeals, Eighth Circuit.

November 26, 1910

Thomas A. Banning and H. H. Bliss (John H. Atwood, on the brief) for appellants.

Chester Bradford and Charles C. Linthicum (S. B. Cantey, Houston &amp Brooks, Sluss & Wall, Offield, Towle & Linthicum, and Bradford & Hood, on the brief), for appellee.

This was a suit to restrain infringement of United States patent No. 556,972, issued March 24, 1896, upon the application of Clement A. Hardy, filed July 31, 1895, to his assignee C. A Keating for alleged new and useful improvements in rotary disk plows. The suit was originally brought by Milton T Hancock as assignee of the rights of Keating in some designated territory, and was subsequently after his death revived in the name of Nina L. Hancock, his administratrix, the present appellee and complainant. It was originally brought against George Torrey, a user of the alleged infringing device, but subsequently, it is claimed, manufacturers of the device so adopted the defense of the case as to make them parties to the suit and liable for whatever decree might be rendered. That the patent was invalid for want of novelty was the main defense. The trial below resulted in a decree enjoining the defendant user and the manufacturers from further infringement and awarding an accounting for damages and profits.

Before HOOK and ADAMS, Circuit Judges, and REED, District Judge.

ADAMS Circuit Judge.

The second claim of the patent in suit is the only one in controversy. It reads as follows:

'In a rotary plow, the combination with a plow-beam, of a box-bearing arranged on the plow-beam, an axle rotatable in the box-bearing, a plowing-disk secured to the said axle, rotated solely by the natural draft thereof and the friction of the soil, set diagonally to the line of draft and inclined out of a vertical plane for cutting the furrow and turning the soil therefrom, a furrow-wheel mounted on an axle at the same side of the plow-beam as the plowing-disk and arranged in advance thereof, an arm pivoted to the rear portion of the plow-beam and provided with a caster-wheel arranged in rear of the plowing-disk, and a stop device for limiting the swinging motion in one direction of the arm carrying the caster-wheel, said furrow-wheel and caster-wheel being inclined for resisting the side pressure of the plowing-disk, substantially as described.'

The description of the invention in the specification discloses that, while the claim is for a combination of many elements, the patentable novelty, if any, resides in certain specified means by which the disk of a well-known class of plows, in the operation of plowing works itself by suction, and without much weighting, into the ground, thereby cutting a wider furrow and doing more satisfactory work, especially in hard, wet, and sticky ground. The means for accomplishing this result which alone are patentable, are stated in the specification to be a concave disk or disks 'arranged diagonally to the line of draft and having an adjustable inclination to the vertical whereby said disk or disks are inclined rearwardly and across the line of draft at such an angle as will effect,' etc., and these means are specified broadly in the claim just quoted, as disks 'set diagonally to the line of draft and inclined out of the vertical plane. ' The arrangement of the disk diagonally across the line of draft necessarily determines the width of the furrow. The more acute the angle the narrower the furrow; the more obtuse the wider. The nearer the disk crosses the line of draft at right angles so as to cut a wide furrow the greater the resistance and the more it operates like a scraper rather than a plow. From this necessary operation of the elements sprung the desirability of some device to produce a suction of the operating disk into the ground, less scraping, more cutting, and correspondingly wider furrows. If we except the one element of the inclination of the disk out of a vertical plane, the other elements of the second claim of the patent, including the disk itself and its diagonal arrangement across the line of draft, had been combined together in single organized structures, notably the Harcourt and Bartlett plows manufactured and sold by the Hancock Rotary Plow Company of Indianapolis, Ind. Plows of their type had been in practical daily use long before Hardy's invention. Whether the introduction of this excepted element constitutes patentable novelty for the combination as a whole, or, limiting our inquiry to the necessities of the present case, whether Hardy 'invented' a 'new' machine or a 'new' improvement of an old machine, within the meaning of section 4886 of the Revised Statutes (U.S. Comp. St. 1901, p. 3382), is the important and controlling question for decision. In other words, conceding, without admitting, the original patentability of the combination, the question is whether Hardy invented it, or whether he was anticipated in that respect by others. No novel question of law or intricate question of fact is presented. While the record, consisting of patents, patented and unpatented structures, oral testimony of users, manufacturers, dealers, and experts, is voluminous, the controlling question of fact is in a narrow compass and the law applicable to it is not difficult.

It may be admitted that the disk of the Harcourt and Bartlett type of plow stood in a vertical position, but with fairness to the art, and as a possible explanation of the degree of efficiency attained, it should be said that it had a concave anterior side so dished as to form a curvilinear backwardly inclined part for doing the actual cutting into the ground in the process of plowing.

The Goembel patent, No. 453,183, issued June 2, 1891, was for improvements in rotary disk cultivators, in which disks similar to those of the patent in suit were employed, to perform similar service. The specification of that patent contains directions how to position the disk so it 'can readily be set at any angle,' and so it 'when placed in position will have the upper half of its concave face in line with the standard-bearing, while the lower half will be thrown out as shown in figure 10,' thus:

(Image Omitted)

The testimony shows without contradiction that this arrangement would give an inclination on a 24-inch disk of a little over 4 1/2 inches from the vertical.

The Brown patent, No. 496,850, issued May 9, 1893, also discloses means for setting the disks in cultivators at an angle inclining backwardly from the vertical.

The Lane patent, No. 208,246, issued September 24, 1878, for improvements in rotary plows discloses disks with wide rims at all times inclined out of a vertical plane. These disks were unlike those of the Hardy patent in this, that their rims instead of being integral with the body of the disks were connected with the hubs by spokes. These rims were so flared or bent backwardly and upwardly as to have a constant inclination from the vertical plane. They produced the suction and performed the cutting in lieu of the scraping action claimed for the Hardy patent; and although they stood, speaking of them as an entirety, in a vertical plane, their operating part-- that which performed the work-- had a constant position of considerable inclination away from the vertical.

The Rolph patent, No. 531,566, issued December 25, 1894, for improvement in cultivators, shows disks inclining backwardly from the vertical, and describes their advantages. In his specification, after referring to the different provisions for adjusting the inclination and movement of the disks, Rolph said by reason of the adjustable bearings, the disks 'may be given a greater or less diagonal inclination * * * or they may be given more or less of a vertical pitch inward or outward by simply adjusting the bearings upon the sleeves. * * * The difficulty ordinarily experienced in ordinary disk cultivators-- that of running them to proper depth in hard ground-- is overcome by reason of the adjustable connection between the bearings of the disks, their sleeves and the crank arms of the arch, whereby the disks may be brought more or less directly under the weight of the driver, and given more or less of a forward inclination; that is to say, the lower edge of the disk can be set forward, making a light draft, at the same time insuring the disk traveling to a proper depth even though the ground be very hard. * * * It will be observed that but little weight will be required to maintain them in the ground.'

The fourth claim itself in the Rolph patent is for a combination 'whereby the vertical pitch inward or outward of the said disks may likewise be varied substantially as shown and described.'

This patent seems to have had for its object the accomplishment in a kindred department of the same art, the purposes of Hardy's patent and to have pointed to the advisability of adjusting the disks out of the vertical in order to more effectually accomplish those purposes. Other patents, notably the Richardson, No. 264,763, issued September 19, 1882, and the Garst, No. 273,508, issued March 6, 1883, for three wheeled sulky moldboard plows exhibiting the interchangeability in similar combinations of the disk and moldboard, as the cutting elements of a plow, were introduced in evidence as a part of the prior art.

So much for patents and patented structures. Attention will now be given to certain unpatented structures disclosed in the prior art.

Hancock under whose patent and direction the Hancock Rotary Plow Company of Indianapolis had manufactured plows of the Hancock and Bartlett type, in the spring of 1893 took a shipment of these plows to Dallas, Tex., with a view of working up a trade...