Keystone Driller Co. v. Byers Mach. Co.

JONES, District Judge.

This cause was tried and submitted to the Honorable D. C. Westenhaver in September, 1927. Due to his siekness and subsequent death, it was not decided. By written stipulation of counsel for the parties, it was agreed that the matter should be submitted without retrial to one of the judges of this court; and, upon oral argument had January 9, 1929, the matter was submitted on the record and briefs.

This is a patent infringement suit involving pull-stroke ditchers or excavating scoops and machines. They are distinguished from the ordinary steam shovel in that they dig inwardly, toward the operating machine, as a pick or hoe, rather than away from the machine, as a shovel. The pull-stroke or inwardly digging shovel has an outstanding advantage over the ordinary steam shovel, in that the ditch or trench is cut the width of the bucket only, and the machine always remains on solid ground as the excavation progresses, rather than astride or over the wall of the ditch or trench. Another advantage urged for this type of machine is its interchangeable character; that is, construction for other uses may be applied to the same operating machinery. The patents claimed to be infringed are, generally speaking, combinations of old elements producing improvements-and advantages over prior conceptions and embodying many of the functional elements of earlier invention. Plaintiffs contend that claim 4 of Clutter patent 1,317,431, claims 5, 6, 7, and 9, of Wagner, 1,476,121, and all claims of the two Downie patents, 1,511,114 and 1,543,250, are infringed by the defendants’ construction. It is the plaintiff’s claim that the infringing use of these inventions is disclosed by Plaintiff’s Exhibits 16, 17, and 18, which are to be found in the defendants’ advertising catalogues and referred to as, “Byers’ Bear Cat.”

One of the chief advantages claimed for the plaintiff’s machine is its ability to break through, with a hammerlike blow, rock, shale, sandstone, and the like, found near the ground surface, thus doing away with considerable blasting. Another advantage being its control by two lines, or two control members; and, further, that it has the advantage of exact spotting in a wdde area or range for the discharge of the spoil or contents of the scoop, having the falling bottom which may be closed by momentum produced by manipulation of the scoop, thus accomplishing, perhaps, old results in a new and useful manner, as well as obtaining new and better results by reason of a novel combination of some old elements. Sueh a result has been repeatedly held to require inventive faculty and produce invention.

Without going into detail or discussing technical means, I think the plaintiff’s patents have initiated and accomplished, in a practical, commercial, and economical way, an advance in the field of mechanical digging, and that through its efforts and developments have produced a better and, in substantial respects, a new result out of old elements in the art of trenching and ditching.

It is not thought necessary here to review the extensive reference to the prior art, since from an examination thereof nothing suggests or anticipates the novel operative control and other commercial advantages found in the claims in suit. It seems to me that the plaintiff, through the successive steps of Clutter, Wagner, and Downie, has developed the art over the earlier disclosures. I am satisfied, from a reading of the transcript of the testimony and the evidence in the ease, that the defendants’ construction was the result of the study of plaintiff’s conceptions, Clutter, Wagner, and Downie, and the copying of the plaintiff’s construction and mechanism.

John M. Zane, Harold W. Norman, and Zane, Morse & Norman, all of Chicago, Ill., and Horace B. Pay, Robert W. Wilson, and Pay, Oberlin & Pay, all of Cleveland, Ohio,, for appellants. P. O. Richey and Richey & Watts, all of Cleveland, Ohio, and Charles R. May and May & Bradshaw, all of Beaver, Pa., for appellee.

The parts of the defendant’s machines are combined and function in precisely the same way as the plaintiff’s commercial machine. ' The defendants have taken substantially the plaintiff’s patents. I find no substantial variation in the construction of the defendants’ machine whieh is not within the scope of the claims relied upon or the result of mechanical suggestion and change. One of the most important accomplishments claimed by the plaintiff for its commercial machine, that of the two-member control, appears to have been stressed in the “Byers’ Bear Cat” catalogue by the legend appearing in Plaintiff’s Exhibit 17, “The All-Purpose One-Man Crane,” and as appears in Plaintiff’s Exhibit 18, “The All-Purpose One-Man Crane-Shovel.”

Defendants’ machines, as appear in Plaintiff’s Exhibits 16 and 17 (defendants’ catalogues), though functionally differing in respect of the link or pivotal means, would seem to substantially embody the construction found in claim 4 of Clutter, 1,317,431. It is the defendants’ third construction, as illustrated by Plaintiff’s Exhibit 18 (defendants’ catalogue), whieh it is contended infringes Wagner, 1,476,121. Any difference in positioning or attaching the hauling line to the ditcher stick, rather than to the open end of the scoop, is not, as I see it, a distinction sufficient to avoid infringement; no more than the difference with respect to the scoop attachment or mounting being centrally pivoted in the plaintiff’s machine and flexibly mounted in the defendants’. They appear to me to embody substantially the same idea and to serve the same purpose. While the liberal treatment accorded the many claims of the Downie patents might not be extended to the various elements as units, yet the combination of admittedly old elements perform additional functions and accomplish additional results. Any weakness in that respect, it seems to me, is overcome by their novel and useful combination and commercial success.

Some question as to notice was also raised, but I find no omission in that respect to warrant a finding of failure or neglect upon whieh to base a denial of relief to the plaintiff.

The patents are valid and infringed as to the claims relied upon. A decree may be entered for the plaintiff, with injunction and accounting.