Dixon-Woods Co. v. Pfeifer

SHIPMAN, Circuit Judge. This is an appeal from a. decree of the circuit court for the northern district of New York, upon, a bill in equity which was founded upon Hie alleged infringement by the defendant of letters patent No. 238,156, dated May 16, 1882, to Cleon Tondeur, for itaproveraents in glass-annealing furnaces. The circuit; court rendered, upon final hearing, an interlocutory decree against, the defendant, for on injunction and an accounting. This patent has been twice the subject of adjudication by Lite circuit court for the western district of Pennsylvania. Judge AehesonV. opinions, sustaining its validity, are contained in 28 Fed. Rep. 561 and 37 Fed. Rep. 333. Judge Wallace doubtingly followed, in this caoo, flic decisions of Judge Acheson. 51 Fed. Rep. 292. The three opinions in the? circuit courts fully explain the mechanical character of the iinpi-ovemexiL upon pre-existing machines. The invention relates to an annealing glass furnace, which is generally called a “leer,” and it a. long, arched tunnel into one end of which the sheets of glass are placed as they leave the flattening furnace, through -which they are convoyed, and are gradually cooled in. Ilseir transportation. In order to properly temper the glass, and prevent breakage or warping, or undue hardness or unequal ¿elision of its particle?, the cooling procesa should he gradual, and equally distributed. To ihio end the glass should not be subjected to alternations of hea>. and cold, but the temperature should be uniformly deceeantag, and uniformity fe found in the same horizontal plane and above the floor. Frees radiation and an equal distribution of heal; should take place from both sides of the glass, ami therefore it should not real, upon the floor or upon a broad surface. Formerly, the glass was carried from the flattening furnace through the annoaling leer upon loaded cars, which was obviously a slow and unsafe method. The state of the art before the Toudeur invention, as manifested by the patented inventions which substituted transportado» of sheets placed side by side for transportation upon loaded cars, is described as follows by Judge Wallace: The two types of Jets whirl, were said to have been used “are shown, fax the patents to Bievez and to Bouvy, The Bievez leer is of the usual rectangular form, with the usual tile or stone floor. The floor is divided longitudinally by a eg of channels. Located in these channels, and connected together so as collectively to form a frame, are a. series of iron bars, resting on a series or grooved wheels. The wheels are supported by axles located in transverse channel!? beneath the floor. Goading mechanism is employed for actuating the — 392 — frame, whereby the series of Iron bars are raised, advanced, lowered, and pushed backward. In operation a plate of glass from the flattening oven is placed upon the floor of the leer, and the mechanism is actuated to elevate the frame and lift the glass from the floor, carry the glass forward, and deposit it upon the floor. The frame is then lowered, pushed back to its original position, and the operation repeated until the glass is transported through the leer. The Bouvy leer, in general construction, resembles that of Bievez, but differs in the devices for transporting the glass through it. The frame which is supported in the longitudinal channels consists of two series of iron shelves, which reciprocate each between the other, each having a vertical and longitudinal motion, which is coincident and equal, and also continuous. Mechanism is employed which actuates one series of the shelves downward and forward, and the other at the same time upward and backward. In operation the glass is placed upon one of the series of shelves, the mechanism is actuated, and, as the two series pass each other, the ascending series removes the glass from the descending series, and carries it forward until it is in like manner removed again by the other series, and thus is transported through the leer. “To summarize: In the Bievez patent the frame has a free vertical and longitudinal movement. Its function is to lift a sheet of glass by its vertical movement frdm the floor of the leer, and by its longitudinal movement carry it .to an advanced position cn the floor. In the Bouvy patent one series of shelves moved vertically and longitudinally, while the other set'is moving vertically and longitudinally in an opposite direction. The function performed by the shelves is to transfer a sheet of glass from one set to the other, and advance it through the leer. In the Bievez leer the sheet of glass rests upon the bottom of the leer throughout its passage, except while being advanced at each elevation of the frame. In the Bouvy leer the glass does not rest, at any time in its passage through the leer, upon the floor, but it is not advanced in the same horizontal plane, and in its movement describes a circle, which varies the longitudinal plane about eight inches. “Besides the patents introduced in the former litigation to show the prior state of the art, the defendant has introduced others in the present case, of which those relied on in the argument at bar are the French patent to Leveme of 1868, and the Belgian patent to Bouillet of 1878. The Belgian patent to Gugnon, set up in the answer, cannot be considered, because it was not introduced in evidence. Neither of these patents is of any value as impeaching the novelty of the claim as it has been construed. Bach of them belongs to the Bievez type, but, in Bouillet’s, two sets of parallel bars cooperate to lift the glass from the floor and advance it along the leer, instead of the single set of Bievez.” The improvement contained in the Tondenr leer consisted in a successful attempt to simplify the machinery, and lessen the large amount of breakage which had been the result of former annealing processes. The patentee says in his specification: “My device for removing the glass out of the furnace consists of two sets of bars of iron', one of which reciprocates between the other. By this reciprocating motion the glass is carried through the annealing tunnel of the furnace, the bars of each set being one elevated, while the other is lowered, between the movements of the glass, by means of a lever attached to one of several transverse shafts that support the bars. Sets of arms are attached to each shaft, — one set of arms with rollers for the reciprocating bars, and the other set of arms with hinge joints for the other set of bars.” The vital part of the improvement resides in the two sets of bars, one set reciprocating, and called “d',” the other set supporting, and called “d,” in the patent. The following description of the- operation of the double bars is condensed from the description in the specification: Both sets are parallel to each other, and are placed alternately. When a sheet of glass is in readiness, it is taken from — 393 — the flattening furnace, and placed ott the ends of the reciprocating bars, four in number and parallel to each other, and by the aid of wheels having a motion backward and. forward of about four feet. The operator, vilio stands at the further end of the leer, then pulls these bars towards himself, which causes their ends to move, with the sheet of glass in them, until the ends coincide with the ends of the supporting bars, and the sheet is also over the ends of these bare, d. The movement of a lever, which is fast to the end of a shaft, lowers the bars, d', and raises the bars, d, simultaneously, to the extent of about one inch, which Lakes the sheet from the bars, d', and leaves it on the bars, d. The bars, d', are then pushed backward for another sheet The bars”, d, are fast to the arm of the shaft, and their motion is very small, since they can move only the distance the level1 mover» the arm, which has no effect on the progress of the glass Ihrough the tunnel, “but by the motion of the bars, d', together with the elevation and lowering of both sets of bar;,, a. gentle change of the sheets is had from one set of the barf» to the ether, and the glass moves onward through the annealing tunnel, miiil a series of sheets ill! fin* tunnel, after which ike operator, at each, reciprocal movement of the bars, d', removes from the exit a sheet of ghtss. This he repeals as long as the furnace is In opera lion. The specification says, also: “A space of about one foot, deep is desirable beneath the bars.” The drawings of the pa.tent, and the leer as made and presented to ¡he public, show that, as a matter of fact, the supporting bare wmt* at soiue distance above Hie levifl of the floor, and that the movement of the sheets vat: ?u she same horizontal plane. The in voption., as a TacL ceasis'cel in rub,dituting a pair of supporting bare., raised above the floor of the leer, for the floor or the floor ribs of the: .Bievez type, and to ao airaugi/ig the reciprocating bare vJth the nupporting bars (hat tree sheets are pushed forward through the leer in I he came horizontal plane, instead of through different degrees of toMperetivv, in the oneffiniing or lumping ikunement «1 bare of the IBenyy type. The glass is continua¡1/ r.upporled above ihc ¡loor, mid 1s, both supported and carried forward In the samo horáomial plane. The advantages of the leer, and the reasons why It was an improvement, are abundan fly proved, not ftidy by the testimony of mechanics and manufacturers, but by its history. It has well-nigh displaced other systems, and is in almost universal use in glass furnaces in this country. The claims of the patent are as follows: "(1) The combination of the bare, <1, d'. arranged side by side, and alternately between each other, the set, d, supporting the sheets of glass while the bars, <!', are pushed toward the Jeer or flattening wheel, a, and the set, d', supporting the sheets of glass, and moving them onward and through the tunnel, subsfaníially as .set forth. ‘•(2) The transmitting bars, d', reciprocating between the alternate bars, d, which, receive the glass at the times described, in combination with the arms, e', e’", which by the lever, h", and shafts, f, change simultaneously the elevation of the sets of bars, d, d', and the glass supported by each, as set forth. “(A) The furnace, x, and tunnel, h', made with a continuous and straight chamber from the section, c", of the flattening wheel, a, in combination with — 394 — the bars, d, d', so constructed that the bars, d’, shall enter the leer furnace over the section, e", of the wheel, as set forth. “(4) A furnace and tunnel made with a draft through both from the fuel chamber, a', and with a draft flue, m, and dampers, n, in combination with the bars, d, d', the several parts being constructed as set forth. “(5) The furnace, x, with flattening whéel, a, and tunnel, h', constructed and adapted to the two sets of bars, d, d', the bars, d', being made by the wheels, e, to reciprocate and project alternately into the furnace over the segment, c", and.out of the exit, h, whereby the sheets of glass are received by the furnace ends of said bars, and discharged by their exit ends out of the tunnel, without opening the furnace or tunnel, as set forth.” The case depends upon the construction which shall be given to the bars, d, and d', in the several claims of the patent. The first claim is the broadest and most important one, beiDg for the two sets of bars, irrespective of the particular mechanism by which they are operated. The second is for the two sets of bars with the described operative mchanism. The third, fourth, and fifth are for the two sets of bars, in combination with the furnace and tunnel, and specified details of construction mentioned in the respective claims. The defendant’s theory of the invention as it existed in Tondeur’s mind, and as he presented it in his specification, is that it was a modified construction of the bars so as to avoid violent movement, and consequent breakage; that its intended Tesult. was a gentle change of the sheets from one set to the other; that, so far as appears from the specification, the supporting bars could be on a level with the floor, and the reciprocating bars could move in a variable plane; and that it was a mere mechanical change, and not an improvement in the art of annealing. If this theory is correct, there was no patentable invention in the improved leer. The defendant’s argument relies upon the fact that the alleged distinctive features of the bars, viz. their elevation above the floor, and the forward movement in the same horizontal plane, are not mentioned in the specification or in the claims as patentable features or patentable improvements, or as the causes by which breakage is avoided, and that elevation above the floor is only alluded to as desirable. ■ It is perfectly true that the description in the specification is confined to the purely mechanical features of construction of the bars and the other operative mechanisms, and that the patentee nowhere told why his improvement diminished breakage, or pointed out as a part of his invention that the movement was in the same horizontal plane, and that the supporting bars must be above the floor, although he does mention the amount of space beneath the bars which would be desirable. The specification closely, and altogether too closely, adheres to mere mechanical features, and creates doubt as to whether Tondeur thoroughly understood his invention. It indicates that the patentee did not understand the philosophical principles which caused his mechanism to produce an improved annealing. If he had known, they would have been alluded to in the patent; but an examination of the specification and its drawings leaves little doubt that the patentee meant, and that the specification means, to describe bars in such relation to each — 395 — «her Hint the glass Id carried forward constantly in the same horizontal plane. He meant to ins ¡.root the public that the glass was to 'be carried through llie tunnel on a level, though he might not have known why it was to he so conveyed. A very slight vertical movement transfers the glass from one set of bars to another, and It is, during its entire progress through the tunnel, in substantially the same horizontal plane. The motion of the bars, d', is called a backward and forward one, and the specification says that the operator draws the exit, ends oí the bare, d', out with a sheet of glass on them when the bars, d', are up or elevated, and he pushes them in when, they are lowered, and the bars, d, are up or elevated. The bars, d\ are pushed backward and palled forward on wheels which are mounted on shafts whose journals are either made fast to the sides oí the tunnel, or set in them, all at one level. Any other motion than one in a horizontal plane would not, seem to be practicable. The fact that the supporting bars an; raised above the floor fa not so clearly found in the written parts of' the specification. It is plainly implied, because the distinctive feature of these bars is that they are supporting, and the glass passes through, the leer upou a grating-, and die plan of movement is inconsistent with a rest upon, ox* contact with, the ilooi*. Moreover, Fig. 1 of the drawings clearly shows that the bars are above the floor. In addition, the fact ihac the advantages arising from the elevation of the supporting bars above the surface of the floor, over the old hearth-leer construction, were Immediately understood by practical glass man uiacturers, is suggestive that they understood tin; real nature of the invention as described in the patent. The patentee told the trade of which be wan a member by what .mechanical means breakage of glass in the process of annealing could be saved; in other words, how to anneal glass better and more economically. His patent described clearly enough the way in which bars and the operative mechanism should be constructed and operated, and the glass should be conveyed through the leer. He did not know, ox he did not tell, why the new method would produce better results. He simply iold how to construct a. machine which carried the glass through the leer on a level, and saved much breakage; but he ought not to lose the statutory benefits which would certainly belong to him if he had seen and described the philosophy of his machine accurately. Our conclusion is, in accordance; with that of Judge Ache sox. that the bars, d', d, are two sets, arranged alternately, side by side sit some distance above the floor of the leer, so that the sheets of glass are supported by one set, and moved onward by the other through the tunnel, in practically the same horizontal plane, when coacting mechanism is applied. The defendant is a builder of leers, and constructs them substantially in accordance with the description shown and described in letters patent .No. 400,708, which were issued to Mm, and dated April 2, 1889. In the opinion of the circuit court it is said “the combinations wMch are the subject of the several claims [of the — 396 — Tondeur patent] are each, employed in the furnaces or leers of the defendant.” The questions which were actually in controversy before the circuit court, aud are before this court, relate to the construction of the patent and to patentable novelty. If the validity of the claims is sustained, infringement is not controverted. The decree of the circuit court is affirmed, with costs.