Appeal from the District Court of the United States for the Northern District of Illinois, Eastern Division; John P. Barnes, Judge.
Before MAJOR and KERNER, Circuit Judges, and LINDLEY, District Judge.
This is an appeal from a decree in a patent suit entered in the District Court February 5, 1940. The patents and claims involved are, Claim 5 of Patent 1,948,395, an apparatus patent, filed January 16, 1928, and issued February 20, 1934; Claims 7 and 8 of Reissue Patent 19,627 (reissue of 1,899,056) a method patent, filed February 27, 1935, and issued June 25, 1935; Claims 1 and 7 of Patent 1,928,264, a product patent, filed January 16, 1928, and issued September 26, 1933; and Claims 1, 3, 5, 6 and 7 of Patent 2,055,446, a product patent, filed October 10, 1933, and issued September 22, 1936. These patents were issued to Edward R. Powell and are now owned by plaintiff. All of the claims were held valid and infringed except Claim 7 of the last described patent, which was held valid but not infringed.
The contested issues here, as in the court below, are validity and infringement.
The first three named patents, defining an apparatus, a method and a product, have much in common, and will be considered together as they have been by counsel in their briefs.
The general nature of the subject matter of these patents is described in plaintiff's brief as follows:
"These patents relate to an improved mineral wool batt for insulating purposes, and the process and apparatus for manufacturing the same. In manufacturing, the batt, rock or slag is melted in a cupola and the material is continuously withdrawn in the form of a molten stream. Superheated steam under relatively hgih pressure is discharged through a nozzle so positioned that the steam jet strikes the molten stream and projects it as minute droplets which traved at high velocity into the blow chamber or settling chamber. During their travel and before they solidify they are in part drawn out as very fine filaments or fibers which are temporarily spaced from each other in suspension in the steam, and in the air which is drawn into the settling chamber by the injector action of the steam jet.
"A binder material which is solid at ordinary temperature is delivered in liquid form (either in solution or in melted condition) at a point in proximity to that at which the steam jet strikes the molten stream, and the binder material, in a state of very fine subdivision, enters the settling chamber along with the mineral wool fibers, the steam and the induced air current. The binder material while in this fine state of subdivision collects on the fibers after they are formed and while they are in aeriform suspension. The fibers individually or in flocks, and bearing the binder material, settle to the bottom of the chamber, while the steam and air carrying most of the solvent for the binder pass out through an exhaust port at the top of the chamber.
"Extending along the bottom of the settling chamber, and traveling in the same general direction as that in which the blast of fibers and binder enters the chamber, is a flat surface conveyor in the general form of a belt, on which the fibers, carrying the binder, settle from the aeriform suspension. The conveyor is operated at a relatively slow speed, which is such that at the time any particular portion of the conveyor leaves the end of the chamber it will have had accumulated thereon binder-bearing-fiber to the required thickness, and in accordance with the thickness and density of the batt which is to be produced. The conveyor upon leaving the chamber passes beneath a roller which is adjustable in height, and is spaced from the conveyor to a distance determined by the desired thickness and density of the batt. This roller gently and progressively rolls down and decreases the chickness of the mat on the conveyor, and insures a uniform thickness regardless of any possible lack of uniformity of the depth of the accumulated mass of fibers on the conveyor.
"After leaving the settling chamber the layer progressively colls and is cut into batts of the desired width and length. The batts may then be directly packed into cartons, or further cooled or otherwise treated before packing, as may be desired.
"The final product is a batt of very low density, which may be only a few pounds per cubic foot. It is readily handleable as a unit, and is composed primarily of the mineral wool fibers connected to a sufficient extent by a small amount of binder which serves not only to hold the fibers together so that they are not readily separated and do not fall apart during handling, but at the same time holds the fibers apart as a sort of skeleton to form an extremely open and light porous body with a uniform distribution of dead air cells, and prevents the fibers from slipping on each other and settling or matting down or being readily compressed to a dense mass after the binding material has once hardened.
"The mass of fibers united by the binder constitutes a felted mineral wool product which is of predetermined dimensions, flexible, self-sustaining and form-retaining, and which is of very great economic value and commercial usefulness as a cheap, highly efficient, easily applied, uniform insulating material.
"Such a batt was broadly new in this industry, and Defendant has failed to show where in anyone had ever succeeded in making or even attempted to make such a product prior to Powell's original filing date. The production of this new article of manufacture is the result of an equally broadly new process, which involves as its main novel and important step the bringing together of the binder material and the hot mineral wool fibers while both are in aeriform suspension, so that they settle down together and the binder solidifies to hold and space the fibers.
"The appartus is likewise broadly new in that no one had ever proposed the combination of suitable apparatus parts for delivering the binder to the blow chamber along with the hot mineral wool fibers, for collecting the fibers and binder and conveying them as a mat from the blow chamber, and for compacting them to the required density and uniform thickness as they leave the chamber."
Defendant does not dispute the advantage or success of plaintiff's commercial product, but in connection with its contention of invalidity and non-infringement, points out that plaintiff's commercial product is not manufactured in conformity with the principles taught either in the apparatus, method, or product claims in suit.
Powell Apparatus Patent 1,948,395.
This patent is entitled "Apparatus for Producing Rock Wool Products." Figure 1, illustrative of the patent device, follows:
This figure discloses a blow room 35, into which the mineral wool fibers, formed by projecting a blast of steam from the nozzle 33 across a stream of molten mineral 11, are blown. The fibers are collected at the bottom of the chamber upon a continuous moving conveyor 48, where they are successfully compacted by a plurality of rollers 53 within the chamber, and a roller 57, outside the chamber. The rollers are set at successively higher elevations so that the fiber sheet, when delivered, is composed of superimposed compressed strata. The specification states: "For purpoes of improving the final product, under certain circumstances, a binder material is introduced into the nozzle 33 by means of a secondary jet 34 to be projected with the jet 31." It is further stated: "From the conveyor the material is preferably fed to a cutting plate 67 and cut into suitable lengths by shears 69 or other means. Before the plate 67 is reached the sheet of wool is further impreganted with binder material issuing in jets 71, 73. The binders described herein may comprise such substances as asphalt, sodium silicate, casein, glue, wax or similar materials."
Claim 5 (the one in suit) is as follows: "In a machine of the class described the combination with a settling chamber, of means for forming mineral wool fibres and projecting them into said chamber, a conveyor arranged to receive the fibres as they fall in the chamber to form a layer, means for treating the fibres with a binder, and means to compact the layer of fibres during the advance of the latter to form a bat."
Defendant contends that the only element of this claim which is not completely anticipted by Woolbestos prior use is "means for treating the fibers with a binder," and that this means is old in the art. In support of this contention, defendant relies upon the Woolbestos prior use, Weiss Patent 1,336,403, and Jackson (British) 12,179, not cited in the patent office; Fay 1,242,537 and Parkinson 945,583.
We think it is of some significance to note that of the nine claims of this patent, the one in suit is the only one which makes any claim to the "means for treating fibers with a binder" and that this claim was inserted by amendment June 24, 1933, more than five years after the patent was applied for and subsequent to the time of its final allowance. It may or may not be pertinent to also point out that of the numerous claims in suit, all were withdrawn except Claim 5 after the taking of depositions relative to the Woolbestos prior use. We do not understand that plaintiff seriously contends but that all the elements of this claim ...