97 F. 950 | 7th Cir. | 1899
Lead Opinion
(after stating the facts as above). 1. The object of this invention, as outlined in the specification, was to provide a practical method of introducing wire-netting into glass used for translucent roofing, such as skylights, court yards, conservatories, etc., as well as for vaults, pavements, and floor lights, or any similar places where strength is required, or where the sash is in such position that, if the glass should break, it would be liable to injure persons beneath it. “For instance,” as stated in the specification, “if the glass is used in skylights in railway depots or train sheds, the wire embedded in the glass would prevent particles of glass from falling if it should crack, and at the same time the glass protects the wire netting from the action of gases, which corrode the wire.”
Defendants attack the novelty of this invention, and introduce in support of their defense several patents, none of which require special mention except the English patent of April 19, 1887, to John Armstrong. The apparatus described by Armstrong consists of a long table, such as is commonly used for rolling glass, with a large roller, B, and a small roller, in front of which the wire-gauze is delivered from a spindle standing above the rollers. One end of the wire-ganze is rigidly attached to one end of the table, and as the carriage travels along the table the gauze is delivered in front of the small roller, which travels along the table, and presses the wire-work against the incandescent glass, and partly enters it, the hot glass coming through the meshes to the upper side. The glass with the wire partly inserted is thus drawn under the large roller by the motion of the carriage along the table, thereby pressing the glass out to its requisite thickness.
The testimony upon the subject of this patent is somewhat unsatisfactory. Though Shuman went to Europe in 1894, and visited the large plate-glass factories in England, Belgium, France, and Germany for the purpose of obtaining all the information he could regarding the state of the art of making wire-glass, he found none for sale anywhere, although every one of the glass works men
Beyond this, there is a manifest difference in the mechanism of the two devices. In the Armstrong patent', one end of the sheet of wire-netting is fastened to the end of the table, the other end being wound around a spool suspended perpendicularly above the table. The progress of the roller from one end of the table to the other unwinds the spool, and delivers the netting in front of a smaller and secondary roller, against which the molten glass is banked up, wi thou t any effort to smooth the glass before the wire is delivered. It can scarcely be a matter of surprise that the wire-netting so delivered becomes so hot that it is unable to withstand the tension. Shuman, who experimented with it, states in this connection that he failed to produce a merchantable wire-glass of any kind with tMs machine. In operating the machine in the manner described in the specification:
"Wu found that the wire was made very hot by its contact with the molten glass, and could not stand the pull of the machine. It distorted, drew out into a thread, and in most cases broke. In the few cases where the wire was embedded in the glass it would be either on one side of the sheet or the other, and from the fact of being pulled in its white hot and weak condition the major portion of the sheet of the glass rolled had no wire in it at all. We rolled about thirty sheets, but failed to produce wire-glass.”
Another witness- — an expert- — testifies to practically the same effect, and gave it as Ms opinion that the machine was utterly impracticable. There was no testimony to contradict this.
In the Shuman device a roller is employed, to smooth the molten glass before it receives the wire, which is delivered from a chute immediately behind the first roller. The machine thus contains three rollers, the office of the first being to lay the glass of an even thickness; that of the second, which is preferably corrugated, to press the wire beneath the surface of the glass at greater or less depths according to the corrugations; and that of the third to close up the openings made by the ribbed roller and wire, and to leave the glass with a smooth upper surface. As the wire is dropped by the chute it is subject to no tension, and may be heated to a high temperature before delivery without the danger of the breaking or twisting encountered in the practical operation of the Armstrong patent.
In a copy of the Armstrong patent, certified by the commissioner of patents March 24, 1897, and introduced by the defendants, there
While the Shuman patent may be an infringement upon that of Armstrong, we think the introduction of the third roller for the purpose of smoothing the glass to a uniform thickness before the wire is delivered, and the improvement in embedding the wire-netting in the molten glass by a corrugated roller, are sucli an advance upon the Armstrong device as to entitle Shuman to his patent. We acquiesce the more readily in this conclusion from the fact that his device met with an immediate success, and appears to have supplanted entirely the previously known methods of manufacturing wire-glass. This fact, though by no means decisive of novelty, may properly he considered. The Shuman patent was evidently the first practicable method of making wire-glass, and appears to have attracted a good deal of attention in this and other countries, and various medals were awarded to the inventor. Indeed, Byon himself, the patentee of defendants’ machine, visited complainants’ manufactory in the spring of 1894, and endeavored to secure the right to use the Shuman machine.
Patent No. 521,570, granted December 25, 1894, to Francis M. Byon, under which defendants are manufacturing, exhibits the same features of a roller for smoothing the glass, a corrugated roller for the introduction of the wire-netting into the molten glass, and a similar and almost identical method of unwinding the netting from a spool, and allowing it to fall immediately in front of the corrugated roller. The guiding and feeding device for delivering the wire is practically the same. The structural difference on which appellants appear to lay most stress is that between the ribbed roll of complainants’ patent and wbat appellants call the “axle of disks” of their machine. The differences are, in brief, that defendants’ axle of disks is not a solid ribbed roll, in which the ribs are integral with the roll, but consists of rotating disks strung on a stationary axle; and, second, that these disks are thinner than the ribs shown in complainants’ drawings, and the spaces between said disks are wider than the spaces between the ribs as shown by complainants’ drawings. But in point of fact both devices act with a rolling pressure upon the glass, and the wire-netting to be embedded therein, with the result of embedding the netting, and in doing so of forming longitudinal ribs and furrows in the glass.
2. But little need be said regarding the process patent, the claims of which are, as stated above, for a process consisting — First, of rolling the glass into a sheet; second, mounting thereon the wire or wire-gauze by means of the corrugated roller; and, finally, rolling the glass, and thus closing the openings made by the wire. Plaintiffs’ experts describe the process as consisting essentially in preparing a smooth, homogeneous plate of glass upon a suitable hard and level surface. Upon this sheet of glass, while still in a hot and plastic condition, is placed wire gauze or netting, or simply wire. This wire or wire-netting is then pressed down into the glass, while it is still hot and plastic, by some suitable means. Finally, the openings left by the wire as it goes down into the glass are closed up, and their sides are welded together, and the surface of the plate is smoothed over by some means adapted to the purpose. This process may obviously be carried out by the mechanism described in the first patent, but other machines may he devised for the same purpose.
As it involves not merely the function of a mechanical device, but certain elemental action, we think it the proper subject of a process patent. It is, in fact, a series of acts performed with molten glass and wire-gauze, by which they are transformed into a separate manufacture, within the definition of a process patent in Cochrane v. Deener, 94 U. S. 780, 24 L. Ed. 514.
Prior to the Armstrong patent, the only method, practiced for manufacturing wire-glass is disclosed in certain English patents, notably that granted to Lake in 1886, by which a layer of molten glass of half the 1 hickness which the finished plate is to have is spread upon a table. Upon this layer is placed a network of iron wires, or the like, previously polished, the thickness of which wires varies according to circumstances. This network is then covered with a fresh layer of glass, over which the roller is passed. The finished product is thus formed of two distinct layers of molten glass with a network of wire between them. The difficulty seems to be tbat these two layers may weld or they may not, and in either case the glass which covers the wire-gauze on one side is not of the same original or continuous mass which covers it on the oilier. Other English patents to Newton, 1855, to Hyatt, 1871, and to Sievert, 1891, disclose certain modifications of this process; but all contain the underlying feature of two layers of molten glass with a sheet of wire-gauze sandwiched between them. They obviously differ from the process described by Shuman, and do not seem to have been put in practice, or to have met with success.
The Armstrong patent is the only one seriously insisted upon as
That this patent is infringed by the defendants is not seriously questioned. Indeed, the description in the Kyon patent is a practical description of the Shuman process:
“As the sheet is formed, and passes under the first roller, the sheet of wire-netting which is attached to the spool, and which has previously been drawn to the table surface, is allowed to unwind from the spool, and. as the sheet of glass passes under the axle of disks, the disks force the wire-netting down into the soft glass about half way the thickness of the sheet. As the sheet passes under these disks, there are small creases and ridges on its surface, and it now passes under the second roller, Bi, which smooths it, and presses out all of the ridges caused by the action of the disks in the glass.”
Upon tke whole we are of opinion that both of these patents should be sustained, and the decree of the court below is therefore affirmed.
Concurrence Opinion
(concurring). I agree to the affirmance of this decree. I have doubted whether that which Shuman accomplished was not the result merely of mechanical skill. The line of demarkation between invention and mechanical skill is not well defined, and is often, especially in this age of improvement, difficult to follow. In case of doubt the law has wisely required the consideration of certain facts outside the question of invention or mechanical skill to resolve the doubt. The patent itself is, in a restricted sense, prima facie evidence of novelty and invention. J.
“Under smell circumstances courts liave not been, reluctant to sustain a patent to the man who has taken the final step which has turned a failure into a success. In the law of patents it is the last step that wins.”
Dissenting Opinion
(dissenting). The patents in suit were applied for on July 6, 1892, and issued on the 20th of September ensuing. An application was made at the same time for a patent on the wire-glass which the machine and process were designed to produce, but presumably was denied, since there is no evidence that it was granted, and the expert whose testimony is chiefly relied upon to support the patents granted concedes that the product, wire-glass, was not then new. The fact of that application having been made is important here as evidence that Shuman was either entirely ignorant or the prior art, and supposed himself to be the inventor of wired-glass of the kind in question, or was willing to seek a patent to which he knew him self not entitled. “During December, 1891, and January and February and also March and April, 1892,” he testified, “after conceiving the idea of making wire-glass, we inquired among the glass dealers of Philadelphia and New York, and at two large glass works in Pittsburg, and found no wire-glass on the market in this country.” It may or may not be fair to infer from this use of the plural that he had assistance in working out the conceptions for which he sought patents, but it is noteworthy that in his applications for patents no reference was made to the prior art, and his testimony contains nothing concerning his know!
“The patent of Armstrong * , * appears to come nearer to the practical solution of the problem than any which preceded those of Shuman. In Armstrong’s case a clever attempt is made to realize practically the plan of pressing a wire-netting, by means of a heavy roller, into the body of a sheet of glass, and then covering the wire up in the glass by a pressure of the second roller following up the first one. The mechanism by which it is attempted to carry out this idea, though embodying the elements of a useful invention, was seriously defective, and the in ventor does not appear to have made any effort to improve it.”
Whether Armstrong made any effort to improve his invention is a question concerning which there is no evidence in the record, and probably nothing was known to the committee of the institute, but their report is important, because it affords an explanation, not otherwise furnished, of the experiments which, six months later, Shuman made for the purpose of testing the Armstrong machine. His testimony is that during May and June. 1894, he supervised the construction of a machine according to the specification of the Armstrong patent, and attempted therewith to manufacture wire-glass “according to the description of the specification, but failed to produce a merchantable wire-glass of any kind with said machine. In operating the machine in the manner described in the specification, we found that the wire was made very hot by its contact with the molten glass, and could not stand the pull of the machine. It distorted, drew out into a thread, and in most cases broke. In the few places where the wire was embedded in the glass it would be either on one side of the sheet or the other, and from the fact of being pulled in its white hot and weak condition the major portion of the sheet of glass rolled had no wire in it at all. Yde rolled about thirty sheets, but failed to produce wire-glass.” This testimony is corroborated only by the superintendent of the glass works, who assisted in making the experiments. Shuman evidently believed or feared that the validity of his own patents depended upon showing that Armstrong’s was a failure. His wish, if not his purpose, was to demonstrate a failure. Complete corrobo
“In 1894 I was sent to Europe for the purpose of disposing of my European patents to some of tbe glass makers over there. In the course of my travels I visited most of the large glass works in England, Belgium, France, and Germany, — among others, the works of Pilkington Bros., at St. Helens, England; the St. Gobain Works at Paris, Franco; and the works of the Societe Anonyme des Glaces at Charleroi, in Belgium; and others, the names of which I cannot at present recall. * * * I made special efforts during my travels to find out all about the state of the art in making wire-glass, and whether any was on the market. I found no wire-glass for sale anywhere, although every one of the glass works mentioned had made experiments towards making wire-glass for some years hack. They were entirely unsuccessful in a commercial sense, and I had no difficulty in disposing of my European wire-glass patents there.”
This, so far as material, is hearsay, and not competent evidence. Was that journey abroad before or after tbe construction and experimental use of the Armstrong machine? It is not shown. What were the experiments that had been made, and what were the causes of failure? Were the experiments original and independent, or were they made in the direction of the patents to Hewton, Hyatt, Lake, and Sievert, and especially were they made with a knowledge and according to the specification of the Armstrong patent? These questions unanswered, there can be, in my opinion, no justification for finding in the fact that the Armstrong patent expired in 1891 through nonpayment of the renewal fee, or in any circumstance mentioned, “cogent evidence that the patent was found to be valueless and inoperative.” Excepting tbe experiments made under Shuman’s supervision, no test of the value or operativeness of that machine seems to have been made, and there is no evidence that experiments “towards making wire-glass” were attempted by competent men, possessed of an adequate knowledge of the prior art. Armstrong’s patent was in force for four years. It was confessedly a clever attempt, — the first attempt in a direction which Shuman followed, — and, as the experts of the Franklin Institute were able to see without the aid of experiments, came “nearer to the practical solution of the problem than any which preceded.” Why did not Armstrong keep his patent alive, and demonstrate its value? In the absence of evidence on the point, a number of inferences are possible, and quite as justifiable as that stated. He may have died, have been in ill health, or unable to pay tbe renewal fee; or, good as his conception was, be may have been absorbed in other things, and may not have suspected the possibilities of his invention. He was in advance of the market, and doubtless the publication of his patent tended to create for wire-glass the strenuous demand which, within a year after its lapse, gave assured success to the efforts of Shuman. That success, attributable primarily to the merits of wire-glass, and not to the means or manner of producing it, is amply accounted for by extensive advertising, by the sudden demand, for which there was no other supply, and by other causes, and therefore affords no ground for a more ready conclusion that the Shuman patents, which confessedly infringe the patent of Armstrong, contain patentable improvements because of the introduction of the third
Extrinsic and unessential considerations aside, what is the case on its merits? The art of making plate-glass was already well known, and the object which Armstrong proposed to accomplish was simply an addition to that art, stated in the specification of his patent to be “to insert wire-work into the interior of sheets of glass while being rolled,” and this he proposed to do by adding to the rolling table and the single roller already in use for rolling plate glass another small roller, with an apparatus for carrying it and a bundle of wire wound upon another roller, supported above, from which it should he delivered beneath the rollers below as they should pass over the molten metal on the table. The device is illustrated by the following cut:
The following cut presents a corresponding view of the Shuman devise:
It is obvious, as suggested by Dayton, that no gun can be employed with Armstrong’s apparatus, if arranged and operated in precise conformity with the specification of the patent, because the roller’ D, continually changes its distance from the table, and because that roller stands in the way of a gun in front of the rear roller; but the inclined tracks, F, which cause the continual change in the distance of the roller, D, from the table are adjustable, and, without change in the construction of the device, may be made horizontal, causing a horizontal movement of the roller, D, and so admitting of the use, if found desirable, of a gun in front of it. Another roller or bar might be adjusted in front of D, and the gun introduced in front of that. The gun being already a well-known adjunct of such devices, there could be no invention in introducing it into the Armstrong machine. The old machines were readily adjustable for the making of plates of different thicknesses, and it therefore seems entirely probable that they might have been employed for the production of wire-glass by first rolling a sheet of one-half the thickness desired, placing thereon the wire-netting, and then rolling thereon another sheet in time to fuse with the first. That would have been according to the “sandwich process,” so called, of the patents of Newton, Hyatt, and others; but only for its bearing upon the devices of Armstrong and Shuman‘need the old art of making ordinary plate-glass be considered here. In that art the roller, both smooth and ribbed, was familiar, and mani
The experts against him are agreed in condemning Armstrong because he “sought to take a quick cut to the end by passing the wire into the unformed glass, and then rolling it into a sheet”; while they point out that the'process of Shuman consists in four steps: “First, preparing a sheet of molten glass, which is rolled to a definite predetermined width and thickness; second, mounting or placing thereon wire-gauze, smoothly, evenly, and in a definite position; third, pressing the said wire-gauze or wire into the glass definitely into a predetermined depth; and, finally, closing over the glass and smoothing and finishing the plate to a definite predetermined thickness.” This is an attempt to give importance to distinctions which at most are improvements merely of form, and have no bearing upon the question of invention. When the “quick cut to the end” has been devised, it is not invention to construct a longer way out of the old materials, and over familiar ground. Especial stress, however, is laid upon the first step of Shuman.— the preparing of a sheet of molten metal on which to place the wire-ganze; but that is just what was done in the old art of making plate-glass. The first roller of Armstrong prepares such a sheet, and when it was found necessary to prevent the contact of the gauze with the piled-up metal in front of that roller it needed no new conception or extraordinary intelligence to place another roller, or bar, in position to smooth down the mass in front of the first roller. In the Shuman device and process, as I see them, there is nothing which is not embodied and clearly revealed in the patent to Armstrong, when intelligently considered in the light of the prior art, and I Cannot agree that either of the patents in suit is valid. “In the law of patents it is the la.st step that wins,” if it be an act of invention, but certainly not if it be an obvious correction of the defects of a known mechanism.