Zip Mfg. Co. v. Pusch

• Decision Date: 05 November 1924
• Docket Number: No. 6592.,6592.
• Citation: Zip Mfg. Co. v. Pusch, 2 F.2d 828 (8th Cir. 1924)
• Parties: ZIP MFG. CO. v. PUSCH.
• Court: U.S. Court of Appeals — Eighth Circuit

2 F.2d 828 (1924)

ZIP MFG. CO. v. PUSCH.^*

No. 6592.

Circuit Court of Appeals, Eighth Circuit.

November 5, 1924.

Richard S. Fillius and Platt Rogers, both of Denver, Colo. (Edmund Rogers, of Denver, Colo., on the brief), for appellant.

William W. Garwood, of Denver, Colo. (Omar E. Garwood and Everett Bell, both of Denver, Colo., on the brief), for appellee.

Before STONE, Circuit Judge, and MUNGER and MILLER, District Judges.

STONE, Circuit Judge.

This is a bill for infringement of letters patent No. 1,353,197, dated September 21, 1920, issued to John F. Werder for a compound used in grinding or smoothing metal surfaces. From a decree dismissing the bill on the merits, plaintiff brings this appeal.

The answer in this case is a general denial and that the idea for this invention was secured from a grinding compound known as "Volcano Abrasive" made and marketed by David R. Hawes. At the trial, over objection of plaintiff, evidence was introduced of prior patents in the same general field and of similar substances used in the trade. There was also introduced evidence as to the contents of the "Volcano Abrasive" and of Werder's familiarity with and use of that compound. The evidence tended to show the following facts:

In grinding automobile and other valves, engine throttles and other machinery where accurate contact is desired, an abrasive is used. The abrasive most commonly employed is carborundum. However, the abrasive cannot be successfully used by itself. To permit the greatest amount of evenly distributed friction it is necessary to mix the abrasive with other ingredients to hold it evenly in suspension. The "binder" most commonly used is any kind of lubricant. It was a common practice for mechanics, in the shop, to mix carborundum and emery or other abrasive with such lubricants as might be available to them and thus form a grinding compound. Such a compound would accomplish the purposes but required much time in the operation because the lubricating qualities in the "binder," to a certain extent, retarded and nullified the effect of the abrasive. The virtue claimed by Werder for his compound, and which seems to be abundantly established in the evidence, is that it required much less time to secure the same results. This he accomplished through the use of starch, instead of lubricants, as a "binder." This compound, when used with water, accomplished the same results as other binders and, lacking the retarding effect of lubricants, did so in a fraction of the time necessary for others.

As to the Volcano mixture, the evidence was that it contained starch as a "binder"; that Werder had been familiar with this product and sold it, as an agent, for a short while. The period during which Werder knew and handled Volcano was between the dates when he claims to have made his discovery and when he applied for his patent. He testifies positively that he had no knowledge of the constituents of the Volcano mixture except that a drug clerk had examined it, smelling and dipping some of it upon a pencil end, and had told him it contained gelatine, graphite and citronella oil (the latter having no value except as an odorizer). He says he knows nothing of chemistry and never had an analysis made of the Volcano mixture. Both he and one other witness testified to the use of his own mixture antedating his connection with or knowledge of the Volcano compound. There was no testimony, beyond that just narrated, that he had knowledge of the elements in the Volcano mixture, unless such an inference should be drawn from his having used and sold that mixture and having stated, as one witness testifies, that it was the best mixture he had ever used.

The basis of the court's determination is stated as follows:

"I am of the opinion that the Werder patent does not show a sufficient advancement in the art to say that its discovery involved the inventive genius as distinguished from a mere advance in mechanical skill. All mechanics who had occasion to use a grinding compound, have for many years been experimenting and making up various mixtures — some of them containing carborundum and free from oil, which is the chief advantage claimed from this invention. This view is also strengthened by the undisputed evidence that the plaintiff had the agency for, and sold, a considerable quantity of `Volcano,' a similar preparation, previous to his making application for this patent, and the language of the specification, particularly lines 74-94."

The part of the specifications referred to in the above quotation is as follows:

"In the ordinary compounds upon the market it is found that most of them employ oil as the ingredient for mixing, and the greatest amount of friction cannot be obtained by the character of the oil itself, whereas with water as the mixing ingredient, the greatest amount of friction will be obtained.

"This compound, by reason of the starch, or other glutinous binder, easily soluble in water, by the combined action of the friction and water releases more evenly the powdered grains of carborundum so as to accomplish in use, what you might call a cushioning and more even and ready distribution with greater freedom from the sticking or adhering in one place by the abrasive grains, as in the case of abrasives employing oil, thereby avoiding the making of grooves and uneven surfaces, and with greater rapidity producing a more evenly ground surface."

Appellant contends that the evidence concerning prior patents was not proper under the issues in this case, and could not be considered in connection with the validity of the patent. He makes the same contention concerning the evidence of common usage of other compounds in the art. In this contention he is only partially correct. Under the pleadings here, the issues were limited by the statute (Rev. St. § 4920, as amended by Act March 3, 1897, § 2 Comp. St. § 9466), in so far as challenge of the validity of the patent on the basis of lack of novelty is concerned, to what might be shown regarding the Volcano mixture and what might be revealed by his knowledge in his own statement in his patent here in suit. While evidence of prior patents and of prior use was properly introduced in evidence for the purpose of construction of the patent, it was not competent to show invalidity. The rule is stated in Grier v. Wilt, 120 U. S. 412, 429, 7 S. Ct. 718, 729 (30 L. Ed. 712), where the defendant sought to introduce earlier patents, the court said:

"Their introduction was objected to...