261 F. 192 | 5th Cir. | 1919
This is an appeal from a decree of the District Court of the United States for the Southern District of Texas, Houston Division, in favor of the plaintiff (appellee), and against one of the defendants (appellant), establishing the validity of two certain patents sued on by the plaintiff, namely, patent No. 1,195,209, issued
The principal grounds upon which the validity of each of the two patents sued upon by the appellee were assailed by the appellant were that both had been anticipated by the prior art, and a number of prior patents were cited and relied upon by the appellant to show anticipation, and that the patents in suit had never been successfully and commercially exploited by appellee.
The appellant relied upon a number of prior patents, some of which covered stone-dressing tools, and some rock-boring drills. We have examined these patents, as bearing upon the state of the prior art at the time the patents in suit were applied for. Probably what is designated as the Ritaker patent comes nearer to anticipating the invention disclosed by the patents in suit than any of those cited and relied upon. An examination of the claims of that patent differentiates it from the Griffin and Hughes patents in suit, in that there is an absence in the Ritaker discs of any crushing surfaces, such as are present in the discs of the Griffin and Hughes patents, and also an absence of any provision for the disintegrating of the material that is cut away by the action of the cutting discs, so that it can be removed in suspension by the water used for flushing.
The patents in suit have the feature peculiar to them of rotary revolving discs, so placed, formed, and operated as to make a hole with a cup-shaped bottom, which is deepened by cutting or shearing or scraping material from the sides and grinding it up in the bottom so fine that it can be removed in suspension from the drill by a flushing stream of water. The Ritaker patent discloses a cutting disc that
We conclude, as did the District Judge, that either the Griffin or the Hughes patent on each of which the plaintiff sued, was a valid patent.
Coming to the question of infringement, we think that the Reed drill was substantially identical in structure and functions with the drills of the patents in suit. It has a cylindrical head, with two cutting discs housed in slots in the base of the head, and arranged with an offset in the same manner as the devices of the patent in suit. The cutting discs are substantially the same, except that the edge of the Reed cutter is beveled. The Reed drill has an improvement upon the drills disclosed by the patents in suit, consisting of the closing of the slot at the rear edge of each of the cutting discs, thus affording a restricted passage for the flushing water, thereby preventing a clogging of the discs. It is conceded that this constitutes an improvement upon the drills covered by both the Griffin and Hughes patents. It is also true that a patent has been issued to Reed to cover this improvement. The Reed bit, however, appropriates for the base of this improvement the invention of the patents in suit.
“Two patents may both be valid, when the second is an improvement on the first, in which event, if the second includes the first, neither of the two patentees can lawfully use the invention of the other without the other’s consent.”
In the case of Cochrane v. Deener, 94 U. S. 780, 787 (24 L. Ed. 139), the Supreme Court said:
*195 “The defendants admit that the process produced a revolution in the manufacture of flour, out they attribute that revolution to their improvements. It may bo as they say, that it is greatly due to those. But it cannot be seriously denied that Cochrane's invention lies at the bottom of these improvements, is involved in them, and was itself capable of beneficial use, and was put to such use. It had all the elements and circumstances necessary for sustaining the patent, and cannot be appropriated by the defendants, even though supplemented by and enveloped in very important and material improvements of their own.”.
In the case of Yancey v. Enright, 230 Fed. 641, 647, 145 C. C. A. 51, 57, this court said:
“The addition of an improving feature does not excuse the appropriation of the appellant’s invention, covered by the patent, since we have construed the appellant’s idea to be more than a mere improvement in form, and a distinct and valuable advance in the art.”
As we are of the opinion that the patents in suit are valid patents . and have been infringed by the appellant, the decree of the District Court appealed from is affirmed.
did not take part in the decision of this case.