Virginia-Carolina Peanut Picker Co., Inc. v. Benthall Mach. Co., Inc.

• Citation: 241 F. 89
• Decision Date: 23 November 1916
• Docket Number: 1440.
• Parties: VIRGINIA-CAROLINA PEANUT PICKER CO., Inc., v. BENTHALL MACH. CO., Inc. [1]
• Court: United States Courts of Appeals. United States Court of Appeals (4th Circuit)

241 F. 89

VIRGINIA-CAROLINA PEANUT PICKER CO., Inc., v. BENTHALL MACH. CO., Inc. ^[1]

No. 1440.

United States Court of Appeals, Fourth Circuit.

November 23, 1916

Menalcus Lankford, of Norfolk, Va., Lee Britt, of Suffolk, Va., and Harry K. Wolcott, of Norfolk, Va. (Wolcott, Wolcott, Lankford & Kear, of Norfolk, Va., on the brief), for appellant.

T. Hart Anderson, of New York City (Munn & Munn, of New York City and Tazewell Taylor, of Norfolk, Va., on the brief) for appellee.

Before PRITCHARD, KNAPP, and WOODS, Circuit Judges.

PRITCHARD Circuit Judge.

The Benthall Machine Company, a corporation doing business in the city of Suffolk, Va., instituted suit in the District Court of the United States for the Eastern District of Virginia on August 7, 1912, against the Virginia-Carolina Peanut Picker Company, a corporation. The bill alleges infringement of certain claims of its peanut picking patent and peanut stemming patent, combined in a machine known as the Benthall machine. The appellee will hereinafter be referred to as complainant, and the appellant as defendant, such being the respective positions occupied by the parties in the court below.

The court below decreed in favor of complainant, and entered a perpetual injunction against the defendant restraining it from using any 'peanut picking machines or any peanut stemming machines embodying the invention as set out in claim 1 of said letters patent No. 808,442, and as to claims 1 and 3 of said letters patent No. 890,401. * * * ' This case comes here on appeal in pursuance of section 129 of the Judicial Code (Act March 3, 1911, c. 231, 36 Stat. 1134 (Comp. St. 1913, Sec. 1121)).

The Benthall Machine Company is the owner of two patents combined in their machine known as the Benthall machine. The first patent is for a peanut picking machine designed to separate the peanuts from the vines to which is attached a slender tendril known as the stem. This patent is known as the Ferguson &amp Benthall patent, issued to F. F. Ferguson and J. T. Benthall on December 26, 1905, and later acquired by the Benthall Company. The second machine is known as a peanut stemmer designed to separate the slender tendril or stem from the nut. The patent was issued to Jessie T. Benthall on this machine June 9, 1908, and later acquired by the Benthall Company.

We will first consider the Benthall patent, which, as we have stated, is for a peanut stemmer. It is insisted by defendant that this patent is invalid in that it was shown that there had been a prior use of what is known as the Ben Hicks machine.

There were some very interesting historical facts developed in the discussion of this case. While it is not at all material to a determination of the question now before us, nevertheless it is interesting to note that peanuts were first brought to this country by negro slaves, and for a number of years this product was considered of no value, being only grown and eaten by them. However, in the course of time the white people began to appreciate the merits of the peanut, and finally through candy and fruit venders they were roasted and sold in almost every section, and in this way the demand for peanuts became so great that it is now one of the great industries of the South, and used for many purposes, such as peanut butter, peanut brittle, roasted and salted peanuts, etc. Among other things, it is contended by counsel for complainant that:

'The production of peanuts throughout the state of Virginia, and other Southern states has constantly increased, so that now it constitutes a large and growing industry, and the demand for your orator's machines is large and is constantly increasing, so that your orator will realize and receive large gains, and constantly increasing profits therefrom if infringement by said defendant and others shall be prevented.'

The inventor of what is known as the Ben Hicks machine is an old colored man by the name of Ben Hicks, residing on a farm in Southampton county, Va., near Suffolk. It was stated in the argument that this old colored man was also first to invent a peanut planter, which is in use to-day. Hicks is a man of fine native intellect and mechanical genius, but possesses no education, and one who reads his testimony might get the impression that he is a very ignorant negro, and this is undoubtedly true in so far as a knowledge of books is concerned. Living in a section where peanuts were grown to a great extent, and, being engaged in the cultivation of the same, he no doubt appreciated the importance of a machine that would separate the peanuts from the vines. It is insisted by defendant that it has established the fact that this old negro was the first to evolve the principle upon which a peanut picking machine could be constructed; that in the year 1900 he constructed and used a peanut picking and stemming machine which embodies in detail every principle as shown in the alleged infringing machine of the defendant; that this fact was established by the testimony of many credible witnesses, and is uncontradicted; that on the 10th day of December, 1901, Ben Hicks secured a patent on his machine which embodies every detail of the Benthall patent save two: (1) The saw, on which no infringement is claimed; and (2) the vibration of the stemmer, on which infringement is claimed. Indeed, this is the chief point in controversy.

The defendant says that it attaches no particular importance to this patent as to the prior art, 'and claims no rights under it other than the evidence it offers as to the construction of certain elements which it plainly shows of the original Ben Hicks machine. ' It is insisted that an examination of the patent itself will show every feature of the machine upon which Benthal secured a patent eight years after the patent (save that of the movement or vibration) had been granted to Ben Hicks. The evidence is silent as to why Ben Hicks at the time he secured his patent in 1901 omitted this feature, but when we take into consideration the fact that Ben Hicks could neither read nor write, and therefore had to rely upon the patent attorney, who prepared the application for him, we can well see how a mistake of this kind could have occurred. The following is taken from the testimony of Ben Hicks:

'Q. Ben, can you read? A. No. sir. Q. Can you understand mechanical drawings? A. No, sir. Q. Do you know what was in the patent that you have spoken of? A. No, sir; I can't tell you.'

It would not be an easy task for even a well-educated layman to give an accurate description in detail of a piece of complicated machinery so as to convey to another an intelligent idea as to its construction and the principle upon which a claim for patent is made. When we consider the fact that Ben Hicks, as we have already stated, was uneducated, and therefore unable to describe with accuracy the mechanism of the invention which he had evolved in his own mind, we marvel that his attorney secured even the information he did upon which to base an application for the patent in question, and, further, we should consider the fact that all general practitioners at times are liable to make mistakes of this character, and we are sure that a patent attorney is not exempt from this human frailty. Therefore it may be that the mistake was due in part to the fault of the patent attorney. The theory that a mistake was made by some one is strengthened by the uncontradicted evidence of a number of witnesses who testified that the original machine, with the movement or vibration embraced therein, was used for a number of years publicly and practically; that Ben Hicks constructed and operated successfully the machine containing the principles of the Benthall patent; that this machine was built in 1900, and was used for the purpose of stemming peanuts until the year 1908. This fact is well established.

It is insisted by complainant that, inasmuch as the movement was left out of the patent, it was not, therefore, in the original machine. A number of witnesses were introduced who testified that Ben Hicks did not at any time have a stationary stemmer. Hicks, while testifying as to this point, said:

'Q. Did you ever use a stemmer with a stationary trough? A. A stationary trough; no, sir. Q. Did you ever use a stemmer that did not move? A. No, sir; I never used one that didn't move. The peas wouldn't come out.' However, it is insisted by counsel for complainant that Ben Hicks secured his ideas from the Benthall machine. In view of the fact that Hicks constructed his machine in 1900, which is established by the uncontradicted evidence of many witnesses, we must confess that we fail to appreciate the ground upon which this contention is based. Hicks' testimony is corroborated by documentary evidence from the Patent Office to the effect that he made a machine in 1901 precisely like that of the Benthall patent except the movement therein. In addition we have the Hundley machine, constructed by Ben Hicks in 1901, which contains this movement. This machine was one of the exhibits introduced to which reference will be made later on in the opinion. The following evidence relating to the Ben Hicks machine was introduced in the court below:

Ben Hicks testified:

'Q. When did you first build that machine you have just pointed to? A. 1900. * * * Q. Is there anything you can say about the trough? A. Nothing no more'n de trough had swings, four little pieces, swung, so that it moved back and forth. Q. Are you sure the machine in 1900 had the trough on swings so that it would move back and forth? A. Yes, sir.'

Witness J. T. Johnson also testified that he had seen the Hicks machine in 1900 or 1901:

'Q. How did the buying peanuts from this machine cause you to see the machine? A. The reason

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