[Trade Journal]
Publication: American Glass Review
Pittsburgh, PA, United States
vol. 50, no. 15, p. 15-16,21-22,30-32,34,36, col. 1-2
Decision In Hartford-Empire Patent Suits
Against Kearns-Gorsuch and Lamb Glass Co.
THE recent decision of Judge Benson W. Hough, of United States District Court at Columbus, O., in the patent infringement suits of the Hartford-Empire Co. against the Kearns-Gorsuch Bottle Co., Zanesville, O., and the Lamb Glass Co., Mt. Vernon, O., is given in full here-with. The court's decision affirms the Master's findings that certain claims of Hartford-Empire patents, relating to phase changing, are valid and infringed. Concerning one of the patents in suit (Soubier patent No. 1,574,709) the decision reverses the Master's findings, however, and holds it invalid. Judge Hough's opinion follows:
These are patent suits brought by the same plaintiff against two separate defendants, and bring under discussion the following patents, namely:
1. Steimer Patent, No. 1,564,909 (hereafter called Steimer patent).
2. Peiler Patent, No. 1,573,742 (hereafter called Phase Changing Patent).
3. Peiler Patent, No. 1,589,304 (hereafter called Shear Height Patent).
4. Peiler Patent, No. 1,631,107 (hereafter called Whittling Patent).
5. Ferngren Patent, No. 1,574,739 (hereafter called Glass Rotation Patent).
6. Soubier Patent, No. 1,574,709 (hereafter called Rotary Plunger Patent).
The Steimer, Phase Changing, and Whittling patents are common to both suits. The Shear Height patent is found only in the Kearns-Gorsuch case, and the Glass Rotation and Rotary Plunger patents are found only in the Lamb Glass case.
The defendants deny infringement and assail the validity of all the patents in suit for lack of invention, broadening of claims of original applications, intervention of private rights, prior art, and prior public use. The plaintiff pleads estoppel against the defendant Kearns-Gorsuch, claiming that because of a license contract that existed between them, the defendant was estopped from contesting the validity of plaintiff's patents. The defendant, The Lamb Glass Company, pleads an estoppel in bar against the plaintiff, setting up, first, a certain settlement of a litigation lately pending in the Western District of Pennsylvania; and, second, certain contracts of purchase by the defendant of specific glass feeding machines from parties who subsequently conveyed substantial rights to the plaintiff company. Both defendants claim laches against the plaintiff and its predecessors in interest in the prosecution of the applications before the Patent Office, which finally culminated in the issue of the Steimer and Phase Changing patents.
Reference to a special master was heretofore had, who has filed his report. The report has carefully and painstakingly covered in detail the numerous issues raised by the pleadings. To this report and the findings and conclusions of the master, all parties have filed their exceptions, under which has been submitted to the court all the questions contended for by the litigants. In fact, it may be remarked that it would seem that no possible question or claim that might be directly or indirectly made by the pleadings and before the master and again through copious exceptions, has escaped the attention of counsel.
The master found that neither of the claims of estoppel were well taken, and that the laches defense was not maintainable. He found the six claims of the Steimer patent limiting the claims to the details shown, to be valid and not maintainable. He found the six claims of the Steimer patent limiting the claims to the details shown, to be valid and not infringed by either defendant. The Phase Changing Patent, as far as claims 1 to 10, inclusive, were concerned, were invalid, being functional only, and the plunger apparatus claims of that patent (claims 18, 26, 27, 28, 34, 36 and 37) were valid and infringed by both defendants. The Shear Height patent (claim 1), under a limited interpretation, was held valid and not infringed. The Whittling patent was said to be invalid, and even if valid, was uninfringed by the defendant, The Lamb Glass Company. The Glass Rotation patent, with limited interpretation, was sustained, and not infringed. The Rotary Plunger patent, as to claims 14, 15, 16, 24, 25 , 26, 27, 28, 29 and 30 was found to be valid and infringed by the defendant, The Lamb Glass Company, and claim No. 22 of that patent was inapplicable.
Since the pendency of the cases in this court, the Steimer and the Phase Changing patents were tested as to validity and on other questions in the Eastern District of Missouri, and the very able opinion of Judge Faris was substantially adopted by the Court of Appeals of the Eighth Circuit in affirming that case (Hartford-Empire Co., vs. Obear-Nester Glass Co., and Obear-Nester Glass Co. vs. Hartford-Empire Co.), 39 F., (2), 769. It finds the claims of the Steimer patent to be valid, with laches non-intervening. In the Phase Changing patent, it finds claims from 1 to 10, inclusive, to be invalid, as functional, and apparatus claims 15, 16, 18, 19, 21 , 22, 23, 26, 27, 28 , 29 ,33 and 36 to be valid and infringed, and the remaining apparatus claims not infringed. Also the Steimer, the Phase Changing and the Shear Height patents have been tested before Judge Hickenlooper, in the Western Division of this District, since the pendency of these cases in this court, in the case of Hartford-Empire Co. vs. The Nivison-Weiskopf Co. This case is now pending in our own Court of Appeals. In that case, all claims of the Steimer patent were held to be invalid for lack of invention, and subject to dismissal through laches. In the Phase Changing patent, claims 1 to 10, inclusive, and claims 18, 22, 27, 28, 33 ,34, 36 and 37, were held to be valid and infringed. The Shear Height patent (claim 1), was held to be invalid for anticipation and lack of invention.
The doctrine of estoppel is said to operate against the defendant, Gearns [sic] Kearns-Gorsuch Bottle Company, because of a license contract entered into some years before by that defendant with plaintiff's predecessor in title, covering five specific automatic glass feeding machines. The license contract contained provisions whereby the licensee covenanted against contesting the validity of the patents covering the machines. There is no merit in this claim. The license contract was executed on the part of the defendant, according to its terms, and the royalties were paid through-out the term of the contract, although the machines themselves had been laid aside and not used for some period of time before the expiration of the license contract. Certainly the covenant against contest is to be interpreted in its direct application to the contract itself, its subject matter and provisions. To place upon it construction that the defendant so bound was precluded from forever protesting the validity of plaintiff's patents, would result in such an extravagant conclusion as would not be upheld from the standpoint of public policy.
The estoppel in bar urged by the defendant, The Lamb Glass Company, against the plaintiff, is grounded upon the relationship that is said to have been produced by it with the plaintiff by reason of certain contracts, assignments, bills of sale, etc., identified in the record as defendant's exhibit G and plaintiff's exhibit 32. Defendant's alleged infringing machines had been purchased from one Miller, and The Miller Glass Engineering Company. In those contracts the defendant was protected from liability of suit. The plaintiff subsequently succeeded to the rights of Miller and The Miller Glass Engineering Company, and acquired various other patent and license rights which were in no way connected with the patents in suit in these cases. Many of the documents included in the above mention exhibit numbers have nothing whatsoever to do with the question of estoppel. In acquiring the rights from Miller and The Miller Glass Engineering Company, the plaintiff company became obligated for a specified limit of any recovery that might be had against The Lamb Glass Company. This, however, is not a matter that influences the litigation at this time to the advantage of the defendant, The Lamb Glass Company. The plea of the defendant of estoppel in bar cannot be maintained as such.
Both defendants allege laches, occurring in the proceedings before the Patent Office, which finally culminated in the issuance of the patents in suit, particularly in the Steimer and Phase Changing patents.
It should be remembered as in away reflecting upon this question, or at least in approaching the question with proper background, that until about the year 1900, and for subsequent years thereafter to a lesser degree, the glass feeding in the industry was performed by hand, and that about that time, inventive genius began its work to substitute for the old hand feeding system, that of machine feeding. Such an innovation of course offered tremendous advantages in the elements of labor saving as well as accuracy and precision in the size, shape, and composition of the mold charges or gobs. The new era attracted the inventive mind, urged on by the various interests making up the competitive glass industry. The natural result of this condition was to surfeit the Patent Office with applications and what not, in the strife between contending forces in the acquirement of monopolies in the business.
In examining the history of both Steimer and Phase Changing patents in the Patent Office, and as disclosed by the file records, one can see the intricate and complex courses travelled and experienced by the subject matter offered in the applications, the alterations and changes necessitated by interferences predicated upon prior art and otherwise, before there culminated anything definite and concrete as developed in the patents issued. Many of the interferences, it is apparent, were brought about by the action of the Patent Office itself. The fault for delay would seem to be with the Patent Office; that is the impression gained in reading the details. The belief, how-ever, is entertained that by no means all the fault should be laid at the door of the Patent Office. It was largely due to the general condition and the urgent desire of many to be the recipients of the vast advantages to be gained in securing the monopoly.
As is pointed out by Judge Faris in the Obear-Nester case, supra, there has not as yet developed a judicial rule of limitation which precludes the filing of a divisional application or an amendement [sic] amendment. As he says, "The law is yet seemingly in the process of crystallization as to what shall be the final rule."
Under the facts and the situation as it is thus presented, it cannot be said that the plainiff [sic] plaintiff be charged with laches committed by the applicants during the process and procedure adopted in procuring the issuance of the patents.
The alleged infringing machines may be classified as Device No. 1 and Device No. 2 of the defendant Kearns-Gorsuch Company, and Device No. 3, of The Lamb Glass Company. They are all automatic glass feeding devices or apparatuses.
Device No. 1 consists of a forehearth projecting from the glass melting furnace, and having at its outer end an outlet for the discharge of molten glass. This outlet is at the lower end of a well formed in the bottom of the forehearth. Operating vertically above the outlet and projecting into the well is a plunger mounted on a frame attached to an arm, which in turn is attached to a piston. The molten glass from the furnace runs into the forehearth and fills that receptacle to the same level as that in the furnace, submerging the well and the outlet. The plunger, regulated and adjusted in accurate alignment with the axis of the outlet, is projected vertically downward and upward into the well of molten glass, and on the downward movement its lower projection fills the orifice and halts the flow of glass through the orifice. The plunger is operated by means of a piston rod attached to a piston which reciprocates in a cylinder. On the rod are threaded two stop nuts, one above and one below an extended shoulder or abutment through which the piston rod works, and the adjustment of these nuts on the threaded rod regulate the length of the plunger stroke the upper nut controlling the lowermost position of the plunger, and the lower nut likewise controlling the upper end of the plunger stroke. These adjustments can be made as well while the machinery is in motion as not. Another adjustment permits the plunger to be raised or lowered vertically relative to the piston rod. This is accomplished by the turning of two nuts, one above and one below the arm to which the plunger is attached. This may also be done while the machinery is in motion. The reciprocation of the piston in the cylinder is produced by air pulsations, the pressure being alternately admitted to either end of the cylinder. Immediately below the orifice and operating at right angles to the vertical plunger, are shear blades operated by a piston rod which moves in and out of an air cylinder. These blades are attached to the piston rod by an adjustment which causes them to open and close with the alternate motion of the piston rod. The shear blades are mounted on a frame in such a manner that the blades may be raised and lowered to any desired position with reference to the outlet. A timer or valve gear is provided for operating the plunger and shears in proper and desired time relations. The machine is motor driven by means of a camshaft on which are mounted a series of cams. In this manner the plunger cylinder and the shear cylinder is operated. The motor or driving power is regulated by a rheostat. Appropriate adjustments permit the timed relation of the plunger and shears to be varied with respect to each other, and this may be done while the machine is in operation. It is illustrated in plaintiff's exhibit No. 23.
The principles involved and the mechanical operation of Device No. 2, except for minor and inconsequential mechanical changes, is the same as in Device No. 1. There is introduced in Device No. 2, however, an additional adjustment of the stroke of the plunger. In this device, the piston operating the plunger is constructed in two screw-threaded parts. The upper piston portion is threaded with a right-hand thread, and the lower piston portion with a left-hand thread-so that by turning the two parts of the rod upon these threads, the piston itself can be lengthened and shortened at will. This is accomplished by a handwheel, which turned in one direction will shorten the rod, and when turned in the other direction will lengthen it. Thus to shorten stroke, the wheel is turned in the direction that will force the two parts of the piston further apart, and to lengthen the stroke, the two parts of the piston, by the threading arrangement, are brought closer together. The shear mechanism is also the same as in Device No. 1.
In Device No. 3, the principles of operation and mechanical construction are very similar to that in Device No. 1. The arm or rod, however, to which the plunger is attached, extends up beyond the operating rocker-arm and through the hub of a gearwheel. The rod where it passes through this hub is square, and the opening through the hub of the gear wheel is also square to fit the rod, leaving the rod free to move up and down through the hub. The gear wheel through which the rod passes is turned by means of a rack turning through a chain of gears and ratchets. The rack, which is at right angles to the hub of the gear wheel and the rod extending through it, is attached to a piston rod working in a cylinder and moving back and forth horizontally to the rod and plunger. The piston in the cylinder controlling the rod and rack is operated by air pulsations alternately admitted to either end of the cylinder. The horizontal reciprocating movement of the rack operating through the chain of gears and ratchets throws the gear wheel through the hub of which the ex-tended plunger rod passes, gives an intermittent revolving motion to the plunger, and the arrangement of the rack and gear is such as to cause the plunger to rotate in the same direction on the outstroke of the rack as upon the instroke. In this device the rotation of the plunger is adjusted to occur at the top of the stroke of the plunger, and just prior to its downward stroke. Adjustment means exists, however, to time this particular operation as desired. In this device, the shear mechanism is equipped with the "blow back" device of the Miller patent, No. 1,260,428. The vertical plunger movement, the rotary plunger movement, and shear and "blow back" operations, are all controlled and timed through the medium of air valves and cams, mounted on a cam shaft driven by a motor.
The Steimer Patent: The Steimer Patent in suit was finally issued on a divisional application filed in December of 1924. The Patent Office issued the patent a year later. Upon six claims out of a great number of claims that had been offered and urged, claim No. 2 may be regarded as typical and representative, as follows:
"The combination with a container for molten glass, having an outlet, of means adapted to be projected into and withdrawn from the said outlet, operating means for periodically projecting said first named means into said out-let, and means for adjusting the extent of projection into said outlet, while the first named means are moving."
The original application of Steimer was filed February 12th, 1910, and as heretofore intimated, its prosecution through the Patent Office was both tedious and complicated. But at this stage of the discussion, concern is had only with the final result accomplished under the six similar claims. These claims interpreted by the language used and by the accompanying designs and figures of illustration, include a furnace receptacle (not in issue here except as to its mechanical timing operation with the remainder of the device), a bowl or container for molten glass received in a supposedly steady stream from the furnace, with an outlet at the bottom, a plunger reciprocating toward and from the outlet, with means for adjusting the movement of the plunger toward the outlet without changing its movement away from the outlet, and having means of making adjustments of the plunger while the apparatus is in motion. The plunger operates vertically over the orifice, its lower extremity beveled to fit the orifice; the upper portion of the plunger is only semi-rigidly attached by means of springs which hold it in place. The mechanical means raises the plunger in its upward stroke — the force of gravity regulating the downward stroke. Both of these movements, however, are influenced and limited by a screw adjustment which arrests the stroke movement by striking a projection or shoulder on the frame of the machine. The features of the feeding device are therefore said to cover the pulsating reciprocating plunger and the ability of adjustment during operation, thus controlling the quantity and weight of the mold charges in suspension.
The defendants, among other defenses, plead prior art, as covered by a number of patents entitled to prior dates of application and issue. Among these are Brookfield, No. 883,779, and Morrison, No. 810,167. Brookfield was issued in 1908 upon application filed December 28th, 1903, and the object of that invention was: "To provide devices for automatically feeding molten glass from the furnace, to render such feeding certain and accurate, and to provide means for adjusting such feeding devices to vary the amount of feed as required." He says the plunger "controls the discharge of molten glass from the furnace, and this valve (plunger) may be raised from its seat or lowered upon it by any suitable means." And the means which he describes is to raise the plunger mechanically and lower it by gravity. The adjustment to regulate the length of the plunger stroke in Brookfield, is found to be within the bowl or chamber. This feature precludes the possibility of adjustment during the operation of the machine. In the Morrison patent, issued January 16th, 1906, upon application of February 16th, 1904, the reciprocating plunger is forced both upward and downward by mechanical means, and the length of the stroke of the plunger is regulated and limited by an adjustment capable of being operated while the machinery is moving. No sufficient reason or theory is discernible to furnish ground for not finding Brookfield and Morrison to be anticipations of Steimer. The mechanical substitute for gravity in the downstroke in Morrison can furnish no ground. The theory of seating or semi-seating of the plunger in the orifice during operation, seems to be a distinction without a difference. The "seating" position of the plunger at the culmination of the downward stroke, of necessity must result in the interruption of the flow of the viscous glass, and at the same time be gentle enough in its contact with the walls of the orifice to prevent damage to the walls and to the plunger. The descriptive terms "seating," "semi-seating " or "non-seating," as applied to these devices, hold no appreciable difference in meaning. The length of stroke adjustment in Steimer is different in feature and result from that of Brookfield, only that it permits adjustment while the machinery is in motion, but this is a mechanical innovation, well within the ability of the ordinary mechanic and his teachings.
We therefore have in the Steimer device, the plunger or interrupter, which was old; the bowl with the submerged orifice, which was old; the reciprocation of the plunger, which was old; the operation of these to produce the suspended gob or charge, the result of which was not new; and the stroke adjustment, which if new in any particular, was so only to the extent of permiting [sic] permiting adjustment during operation — and this only a simple mechanical addition.
Invention here must depend solely upon combination. Has the spark of inventive genius shown itself in arranging and combining old elements along with the element of mechanical skill, in creating an arrangement of elements in combination, that has produced and resulted in practical utility and spontaneous demand for it, in order that it may be placed in that classification of useful combinations up-held by the courts? It is believed not. Skill in arrangement does not necessarily result in the novelty of invention. Even novelty in relationship may be present without patentability. The conclusion reached here, thought to be in accord with our own Court of Appeals, is that the Steimer patent is to be classified under the other line of decisions, where the result is an aggregation, and devoid of invention. Troy Wagon Works, Co. vs. Ohio Trailer Co., 274 F. 612, 621; Houser vs. Starr, 203 F. 264; Wagenhorst vs. Hydraulic Steel Co., 27 F. (2nd), 27. This conclusion is at odds with that of the Circuit Court of Appeals of the Eighth Circuit, in Hartford-Empire Co. vs. Obear-Nester Glass Co., 39 F. (2nd), 769. This patent is now before our own Court of Appeals, and will again be presented to it in this case no doubt, so that the expression of my own independent conclusion herein, it is hoped will not be construed as any lack of respect to the holding of the Eighth Appeals Court. The Steimer patent is found to be invalid.
The Phase Changing Patent: This patent (No. 1,573,742), was issued February 16th, 1926, upon a divisional application for a consolidation and continuation of several prior applications, and was filed November 25th, 1925. It is composite in nature, including five types of apparatus, which are commonly known as the punty-feeder, the paddle-feeder, the paddle-bowl feeder, the paddle-needle feeder, and the single-needle feeder (patent in suit, sheet 18,figures 38, 39, 40, 41 aind [sic] and 42). The original application for the punty feeder was filed August 3, 1913; for the paddle-feeder, August 13th, 1914; for the paddle-bowl feeder, the paddle-needle feeder, and the single-needle feeder, May 5th, 1919. Certain claims previously allowed by the Patent Office in former applications were carried into and allowed as a part of this composite patent. The prosecution of the original application and the combined applications, which eventually led to the issue of the composite Peiler patent, was a part of the frenzied demand by the glass industry for the substitution of machinery for hand labor, and of the competitive activity among many to secure monopoly in the premises. The punty-feeder was among the first developments along this line, and it was an attempt to perform mechanically what previously had been performed by hand. It included a gather of molten glass on the head of the punty while the same was mechanically revolving periodically, and upon cessasion of the revolution, the gather separated by gravity, and when the proper gob was formed the same was severed by means of shears, thus producing the mold charges. The apparatus had further adjustments and refinements which were supposed to contribute to uniformity of size and weight of the mold charges. It is enough to say of this, that it failed in its accomplishment and did not become a commercial success.
The paddle-feeder had a fore-hearth, which received the molten glass from the furnace, and at the outer edge furthest from the furnace opening, had a spout or conduit similar to the spout of a water pitcher. Within the receptacle or fore-hearth, was what is termed a paddle, which was mechanically constructed so as to dip down in the molten glass at the inner end of the receptacle, and move forward toward the outer end of the spout, thus impelling successive waves of glass over the spout. At the end of the stroke, the paddle raised and moved backward, and then again dipped into the molten glass, and moved forward as before. The waves of glass thus pushed over the spout, settle down and take a more or less pear-shaped form, which at regular intervals are cut off by mechanically-operated shears. Separate and independent operation of the paddle and shears, both provided with adjustments, were intended to enable the operator to regulate the size and weight of the mold charges.
The paddle-bowl feeder was a practical duplicate of the paddle-feeder, with the addition of an outside or secondary receptacle or bowl into which the waves of glass coming over the spout were emptied. At its lowest level the bowl had an outlet or orifice through which the glass issued, after which it was separated by the shears. Some measure of success attended the entry of these feeders into the industry, but soon they were superseded by the reciprocating plunger feeder.
The paddle-needle feeder was a combination of the paddle-bowl feeder and the reciprocating plunger. It is to all intents and purposes a needle feeder, with the paddle termed "the primary impeller" working in combination with a reciprocating plunger, operating vertically toward and from the outlet and orifice in the bottom of the bowl. The reciprocating plunger is equipped with adjustments to regulate the length of the stroke — the plunger being known as the "secondary impeller." The paddle, plunger, and severing shears are so mechanically constructed and adjusted that they work in timed relation to each other independently. This apparatus found favor and attained considerable commercial success. Neither of the four feeders just briefly described need be further discussed, as neither of them seems to be infringed by defendants' machines, and besides, the first three named are obsolete and have been superseded generally by higher art and refinement.
The single-needle feeder eliminates the paddle or "primary impeller." In this there is a fore-hearth and container or bowl, having an outlet or orifice at the bottom, in which the molten glass is maintained at the desired level by a gate at the furnace end. Over the outlet or orifice and projecting into the bowl, is a plunger mounted for vertical reciprocation, in exact alignment with the outlet, and projecting downward into the glass, which submerges the outlet. The plunger is so attached that it may be readily moved or changed, and is provided with adjustments for controlling both the length and speed of the stroke. Its movement is attained by some appropriate motive power exercised by means of cams attached to a cam shaft. Underneath the outlet or orifice, and independent thereof, are provided severing shears, also automatically operated by means of cams, and regulable both as to speed and time of severance. The plunger on its downward stroke acts as an impulse on the glass issuing from the outlet, not only forcing it out, but increasing the rate of discharge. On its up-ward stroke, the plunger gives an upward or intrusion impulse to the glass, tending to retard its discharge, and depending upon the length and speed of the stroke may reverse the direction of the motion of the glass within and below the outlet. The downward movement results in production of a gob of molten glass suspended beneath the outlet, while the upward movement reduces the diameter of the gob and produces a necking of the same — after which the charge is severed by the shears and is ready for the mold. The adjustment for stroke length and speed, and the shear adjustment, may vary the timed relation of the several elements constituting the cycle, and in addition, the timed relation of the plunger and the shears may be varied as to each other. These adjustments also may be made as desired, at will, while the machine is in operation.
The type of machine just described, and which is believed to be covered in the specifications and illustrative diagrams of the patent and by the appropriate apparatus claims set out (claims 18, 26, 27, 28, 34, 36 and 37), has been accepted by the industry, and has attained a marked degree of success. The cycle of the operation, that is the acceleration of the molten body through the orifice by means of the plunger, and the reverse impulse exerted upon the forming gob by the upward stroke of the plunger, and the timing possibilities connected with the plunger action, and the influence that those considerations have upon the shape and weight of the gob formation, together with the timing relationship of the shears in co-operation with that of the plunger, all adjustable during operation, and with the ability for continued repetition of the cycle, produces what is termed "phase changing." The theory of phase changing is said to fit actual and general conditions, the variations of temperature, the uniformity or un-uniformity of temperature, the variation in viscosity and other varying conditions that must be contended with in glass manufacture. The phase changing theory thus put into practice is claimed to meet these troublesome questions, and exercises an influence toward accuracy and precision in weight of mold charge and of uniformity in the shape and contour of the mold charge. The single-needle feeder is made up of old elements, and it may even be said that the mechanical arrangement and adjustment to produce the time relationship termed phase changing, is the product of the siklled [sic] skilled mechanic. However, the combination of the elements has been such as to produce fairly from the evidence submitted, a new and useful result, and is therefore a true combination sustaining the patent. The designated apparatus claims are found to be valid.
Conceding then to Peiler invention in his embodiment in a glass feeding machine the element of phase changing by means of a combination, the monopoly which is due him must take rank as of the time he made known his contemplated plans. This so far as it appears from any developed and material accomplishment, is grounded up his application of May 5th, 1919.
Prior art exemplified by many patents is urged. An examination of these patents show many of them to bein no possible way connected. Harding and Morrison, and Brookfield, and perhaps a few others, may be said to have similarity. The French patent, Wilzin, has one or more elements in common. None of them, however, include the entire series of elements contributing to the time relations that result in the useful combination that has been conceded to Peiler. The only prior use offered having pertinency and entitled to consideration, is that connected with the Brockway machine (not patented). The analysis of the evidence in this respect by the master, fairly discloses it unproved by clear and satisfactory proof.
The first ten claims of the phase changing patent are purely method claims. They embody the idea of controlling and regulating the shape and weight of mold charges by the introduction and interposition of varied time relations. The "idea" is old as old as the glass gathering and molding art. The quantity and the shape of the mold charge of necessity had to be influenced and affected by the judgment and skill of the hand gatherer. The discussion of this subject by Judge Faris is full and compelling. His conclusion is at odds with that of Judge Hickenlooper, and with the greatest respect for the latter's opinion, it is believed that the other view is the logically correct one. The method claims (1 to 10, inc.), are held invalid for want of invention.
The Peiler apparatus as it is conceived to be under the teachings of the specifications, in llustrations [sic] illustrations and claims, is supposed to operate by its power, driving a horizontal cam shaft upon which is located a series of cams from which power transmission is communciated [sic] communicated by means of arm shafts to the various vital elements of the machine, regulated by establishing time relationship. The defendant's machines are similarly operated through the medium of a cam shaft, to which is attached a multiple of cams, but positioned vertically to the machine. The time relation-ship is accomplished by means of air lines and a system of valves, which appropriately and alternately feed or interrupt the transmission of the power as desired. The result to be accomplished is the same. The mechanical means employed for that accomplishment is different. Both means, however, at least in the main, is attained by the employment of mechanical skill. The conclusion reached, therefore, is that the defendants' machines infringe Peiler's specific apparatus claims under the combination patent to which he has been found entitled.
The Shear Height Patent: This patent (No. 1,589,304)was issued June 15th, 1926, upon a divisional application filed December 8th, 1925. The application was separated from the same applications involving the Phase Changing patent, and consists of one apparatus claim relied upon, for gathering glass, comprising a receptacle for molten glass, means for delivering formed lumps of viscous glass therefrom, and knives for severing each lump as formed — said knives being adjustable along the path of delivery of said lumps. Thus, by mechanical regulation, the glass ensuing from the mouth of hte [sic] the orifice may be severed at any desired distance below the orifice. This is exactly what the hand shearer did, although perhaps with not so much accuracy as the mechanical device. The idea is certainly not new. A mechanical device capable of regulattion [sic] regulation or "setting," so that the clip of the shears would take place at the desired distance below the orifice, would in-volve the use of only simple mechanical skill. No doubt various anticipations might be brought forth. There is no basis from which to start the imaginative bent, or at least the elasticity of the mind of the writer cannot transcend to such heights. The patent is invalid for want of invention.
The Whittling Patent: This patent (No. 1,631,107) was issued May 31st, 1927, on a divisional application of January 28th, 1926, and was based on the original application filed May 5th, 1919, the latter application later developing into the Phase Changing patent. The Whittling patent is based upon thirty-two method claims, and the method advanced is merely that resulting from a particular regulation and adjustment in the time relation between the operation of the plunger and the severing shears. The machine thus regulated permits the severing of the glass by the shears during the upward stroke of the plunger. It is thus claimed that the shearing operation takes places while the glass issuing through the orifice and below is being retracted by the upward stroke of the plunger, and this is claimed to result in the whittling effect on the stub left after cutting. Whether the glass is actually retracted upward by the upward stroke of the plunger, or whether it is the skin surrounding the mass that is pulled upward while the core of the glass continues its downward movement, or whether the whole is momentarily arrested in its downward flow, is not determinable from the evidence offered. Whether the whittling process is entirely theoretical, or whether there is some measure of reality, is not clear. Whatever result is actually obtained is brought about by the mechanical setting of the Phase Changing patent, and so far as apparatus is concerned, is covered by that patent. With nothing useful or practical apparent, and the method put into execution by a mere and particular regulation of a device covered by patent, would seem to preclude the granting of a monopoly on the idea involved. At high noon, if one sets his watch at 1:30, he canot [sic] cannot well expect to influence the position of the sun in the horizon. The patent is invalid.
The Soubier Patent: The patent (No. 1,574,709) was issued February 23rd, 1926, on application of December20th, 1920. Claims 14, 15, 16, 22 and 24 to 30, inclusive, are relied upon under the issue of infringement. The apparatus of Soubier, the descriptions in specifications and claims and illustrations, contain elements familiar in the prior discussions in this opinion — that is to say, there is a melting furnace from which molten glass flows into a fore-hearth extending from a melting tank, the fore-hearth including a container with an outlet or orifice in the bottom through which the glass issues, the flow of glass being controlled by a regulating device called a plug, which is no more or less than the familiar reciprocating plunger, shears for separating the glass into mold charges, to which is connected and made a part a mechanical means of rotating the reciprocal plunger or the receptacle or bowl containing the glass and in which the plunger operates, or a combination of both of these features. The rotation provided for is for the purpose of aiding and attaining uniform temperature and viscosity in the mass of glass while in the receptacle and as it leaves the receptacle through the orifice. The rotation or whirling of the plunger while it is performing its cycle or vertical movement, and the rotation and whirling of the bowl itself, whether these two actions take place together, or whether one or the other is employed alone, the attained effect is the "stirring" of the mass. There is nothing new or novel in the idea of revolving or rotating the bowl container to obtain a more or less thorough mixing of the contents of the bowl. Nor would the resort to machinery in the preparation and installation of a mechanism to cause that rotation call for more than the exercise of mechanical skill. The apparatus in this respect fails to rise to the dignity of invention. For the same reason, a method calling for the revolution of the plunger, which acts as an interrupter of the flow of the glass or plug of the orifice, while performing its up and down stroke, contains no requisite of invention. The question then presents itself as to whether Soubier's mechanism to produce the rotation of the plunger, in co-operation with the movement of the other machinery of the feeder, being at best an element of refinement working in complement with other elements in arrangement which are old, may possess that novelty to be called invention, and thereby vitalize the whole as a combination in fact, or whether the construction of the rotating plunger mechanism is to be interpreted as the result of mechanical skill, and the arrangement of the whole to be placed in the classification of an aggregation. It is believed the latter. The elements found in the Soubier device, with the exception of the rotary plunger, are found in the Peiler patent in suit (No. 1,573,742). Also, in the German patent (Cuber-1905-No. 166,049), a means exists for the rotation of the plug. The conclusion arrived at is that Soubier is not entitled to a finding of validity of a combination patent.
The Ferngren Patent: That patent (No. 1,574,739) was issued on February 23rd, 1926, and claimed to follow back to an original application of September 29th, 1913, which was renewed February 10th, 1919. From what has been said above, it will appear that this patent cannot be sustained. An examination of its claims fails to show invention in its mechanism and rotation method has been employed, and is as old as the law of physics.
A decree may be prepared in accordance with this opinion, and a finding of facts submitted, using as a basis the finds of facts reported by the Special Master, in so far as those findings maybe applicable and in accord with the conclusions arrived at in this opinion.
