United States Gypsum Co. v. CONSOLIDATED EXP. MET. COMPANIES

• Decision Date: 06 October 1942
• Docket Number: No. 8788.,8788.
• Citation: 130 F.2d 888
• Parties: UNITED STATES GYPSUM CO. v. CONSOLIDATED EXPANDED METAL COMPANIES.
• Court: U.S. Court of Appeals — Sixth Circuit

130 F.2d 888 (1942)

UNITED STATES GYPSUM CO. v. CONSOLIDATED EXPANDED METAL COMPANIES.

No. 8788.

Circuit Court of Appeals, Sixth Circuit.

October 6, 1942.

Arthur A. Olson, of Chicago, Ill. (Arthur C. Denison, of Cleveland, Ohio, Albert H. Pendleton, Arthur B. Seibold, Jr., and Thiess, Olson & Mecklenburger, all of Chicago, Ill., and Wood, Arey, Herron & Evans. of Cincinnati, Ohio, on the brief), for appellant.

Walter J. Blenko, of Pittsburgh, Pa. (Kwis, Hudson & Kent, of Cleveland, Ohio, and Stebbins & Blenko, of Pittsburgh, Pa., on the brief), for appellee.

Before HICKS, SIMONS, and MARTIN, Circuit Judges.

SIMONS, Circuit Judge.

Involved in this appeal from a decree adjudicating patent validity and infringement, are certain of the claims of patent 1,950,372 granted March 6, 1934, to L. W. Cross for "expanded metal and method and apparatus for manufacturing the same." The claims in suit are Nos. 10, 11, 12, 13, and 14, for a method of removing rough edges and burrs from expanded metal fabric and smoothing the diamond shaped openings therein by brushing it with metallic bristled brushes at high velocity, claim 16 for the product having its edges and corners throughout the expanded metal body brushed smooth, and claim 18 for the apparatus with which to practice the method and produce the product.

No issue of infringement is presented, the controversy being solely with respect to the validity of the claims. The special master, in an exhaustive and painstaking report, concluded that all of the claims were invalid, including claim 15, in respect to which a disclaimer has been filed so that it is no longer in controversy. The court reversed as to all claims still in suit, and the alleged infringer has appealed. To what extent the court's decision may have been influenced by the assumption that the defendant's adoption of the patent disclosures is a tribute to the validity of its claims, we are unable to say. That it did so assume is made clear by the comment that such adoption speaks (for validity) "with undeniable force." This observation requires and makes appropriate some general observations.

Though it be elementary to do so at this late date in the development of the patent law, it is necessary to recall that three elements are requisite to validity, to-wit: novelty, utility, and invention. It has been held in adjudications without number, that one who appropriates the teachings of a patent may not deny the utility of the invention. This is, of course, both reasonable and logical. It does not follow, however, that one who is foreclosed from denying the usefulness of a concept is likewise foreclosed from questioning its novelty or the exercise of invention in the development of product, method, or machine. It is illogical to base a presumption of patent validity upon the unauthorized adoption of patent disclosures, since all controversies as to validity arise through infringement, and may not otherwise arise. One who reproduces a patented device proclaims to the world his disbelief in the validity of the patent, his purpose not to be circumscribed by it, and invites a suit for infringement so that validity may be adjudged, and the closer the reproduction the plainer is his challenge to validity. It is only by becoming an infringer that one gains opportunity to assail a patent in his own interest and that of the public. To base a presumption of validity upon such course is as though one were to say that open and adverse possession of land is an admission of a claimant's title. We therefore approach the issue of validity without adding to the usual presumption attaching to the grant of the patent, a presumption of validity based on the absence of an issue of infringement.

The present invention has to do with so-called expanded metal. This is the product of an old art dating back to 1862. The process of manufacture was greatly improved, however, by the disclosure of Golding in his patent 527,242, adjudicated in Expanded Metal Co. v. Bradford, 214 U.S. 366, 29 S.Ct. 652, 53 L.Ed. 1034. There it is sufficiently explained that expanded metal is made by the use of knives making series of slits across the sheet, while at the same time partially severed portions of the metal are carried downward in a stretching operation. The slitting and stretching is repeated in such manner that expansion is obtained by the distension, or elongation of the severed strand. The first operation produces a series of stretched loops or half diamonds, while the second converts them into a series of full diamonds. As the knife of the machine first penetrates the steel sheet it has a cutting action, but its further penetration causes a rupturing or fracturing of the metal through the remainder of its thickness, in consequence of which the fractured surface of the strand is left in condition of dangerous sharpness. As the knives wear and become dull the tearing action becomes more pronounced, and ragged burrs are left upon the edge of the fractured surfaces which frequently cause injury to persons handling the fabricated product.

It is with the elimination of such sharp edges and burrs that Cross was concerned. It is urged upon us that the problem dates back to 1885, and that it remained unsolved for more than forty years, until Cross, after long search for a solution, in 1928 perfected the method and machine disclosed in his patent.

It must be understood that the burrs and sharp edges which it was desirable to remove, do not lie in the surface planes of expanded metal, but between those planes and within the diamonds which constitute the mesh work. Consequently, one's hand may be moved over the surface of expanded metal without injury. It is only when the fingers are thrust into the diamonds that there is danger of laceration to those who handle the material. The problem which Cross claims to have envisioned was the removal of the burrs and edges between the top and bottom planes of the sheet, and his solution was to brush them away with wire bristled brushes. Such brushes are concededly old as shown, for example, in the patent to Wooster, 82,780, as far back as 1868. The plaintiff seeks adjudication of validity as for an inventive concept on the ground that Cross used the brushes on a material never before so treated and in a new way, so that the brush bristles function differently than do those of the prior art and thereby produce a new result. The new mode of using wire brushes resides, it is contended, in the use of their side action instead of the tip action of the prior art. In the Cross machine the bristle projects past the bottom plane of the sheet and into the diamond. As the bristle moves forward its side engages the sharp edges of the strand, and, by reason of its high speed, there is a process of attrition which results in removal of metal from the edge and innumerable repetitions of this attrition effect a rounding and smoothing of the inner edges of the diamonds. Moreover, it is said that Cross teaches that the brush bristles should move in a direction lengthwise of the diamonds, and that this teaching is contrary to what seemed obvious. He also taught a four-fold brushing longitudinally of the diamonds, and that by utilizing the side action of the bristles a thorough rounding of the sharp and burred strand edges is achieved with the result, it is now claimed, that there was produced for the first time in the expanded metal art a safe product which has greatly increased the usefulness of expanded metal to the end that the processed fabric has enjoyed an outstanding commercial success.

The art of brushing sheet metal by machines to remove scale and roughness, is quite old, and the record is replete with patent references and prior uses. Buckman, Nos. 451,263 and 451,264, in 1891, disclosed apparatus for cleaning sheet metal plates; Broderick, No. 869,478 was a machine for scouring and scratch-processing metal ware; Carpenter, No. 884,313, in 1908, was for a machine for scouring sheet metal with roller brushes, preferably of wire; Lakeman, No. 1,633,216, in 1927, had a machine for cleaning electrotype plates by brushing; Welser, No. 1,643,866, in 1927, was a mechanism for operating cleaning brushes and similar apparatus; and Hagen, No. 1,687,201, in 1928, also disclosed a brushing machine. There were many others, although a precise anticipation of the Cross apparatus does not appear. It is quite clear, however, from an examination of the prior art, that one having the concept of removing sharp edges or burrs from flat surfaces by means of brushing, would have found little difficulty in organizing a machine to accomplish the result.

Our problem is to determine whether Cross, in his apparatus, and in the light of the problem he sought to solve, exercised invention in designing an apparatus for brushing perforated surfaces. His apparatus claim 18 is printed in the margin.¹ The Buckman patents, concededly the most pertinent references, disclose a machine having all of the essential elements of Cross, and there is little doubt that Buckman could have been made to do the work of Cross. True, some adaptation would have been required, but in the main it would have consisted merely of adjustments quite obviously within the skill of the art. This requires the application of the principle that where the adaptation involves no inventive thought the patentee has found but a new use for the old device, and this is not invention. Perfect Circle Co. v. Hastings Mfg. Co., 6 Cir., 88 F.2d 813; Weir Frog Co. v. Porter, 6 Cir., 206 F. 670; Detroit Stoker Co. v. Brownell, 6 Cir., 89 F.2d 422, 423. In the last cited reference we said: "However meritorious may be the inventor's thought in terms of result, unless the means adopted in attaining such result are novel and denote invention, either separately or in combination, he may not have a valid patent, for we are dealing with a machine and not a method." Citing Reo Motor Car Co. v....