angles and the care to be given to the elastic limit of the strip. Nowhere does he suggest any such back pull as defendants' unwinding reel exerts. At line 35 of his specifications he says: "Thus as demonstrated by me, when a high tension is in one direction and a large compression is at substantially right angles thereto there is produced a greater resultant force within the steel. * * *"
Steckel No. '017.
This patent was issued on an application filed shortly after the application in Steckel No. '195; to wit, on September 13, 1923. It is not concerned with the pull mill or antifriction backing features dealt with in the patents hereinbefore considered. It deals with the lateral flow of widening of the strip. Claims 6, 8, 9, and 10 are in suit. Claim 10 will be used as an example claim.
Claim 10. "The process of making metal strip which includes subjecting the metal to cold rolling in a plurality of passes, embodying small supported rolls, and subjecting the metal to tension during the rolling operation, thus reducing the metal to materially less than half its original thickness, the rolls being of sufficiently small diameter to substantially eliminate widening of the material while rolled under such tension."
A reading of the claims in suit discloses that the gist of this patent resides in the use of small supported rolls for the purpose of reducing the material or strip to "materially less than half its original thickness, the rolls being of sufficiently small diameter to substantially eliminate widening of the material." There was nothing new in this. In the year 1875, one Lauth, in dealing with an improvement in a hoop rolling mill in patent No. 172,457, disclosed the same idea in his specifications, when he said: "For some reason or other a small roll will spread the hoop less than a large one. * * *"
Moreover, the use of small rolls is a feature in the Steckel No. '195 patent hereinbefore considered and found invalid. Coryell taught the use of small rolls before Steckel. He said at line 25 of his patent: "Somewhat greater elongations can be made, * * * if small diameters of rolls are used."
This patent is invalid because its disclosure was old in the art at the time the patent was issued.
Steckel No. '018.
This patent, after providing the use of small work rolls as hereinbefore considered, provides for "passing the material back and forth" between said rolls. This amounts to no more than reversing the action of the mill and does not constitute patentable invention.
McBain No. '056.
This is a combination patent dealing with a reversing rolling mill with a reel in front and a reel in back thereof, alternately acting as winding up and paying out reels, having combined therewith any mechanism whether electrical or mechanical for utilizing the energy created by the pull on the unwinding reel to assist in advancing the strip being worked through the mill. An example claim reads as follows:
Claim 12. "The combination with working means adapted to progressively treat an elongated piece of work, of holding means on opposite sides of said rolls for moving the piece while under tension to and fro relative to said working means, one holding means pulling and the other holding back during one direction of travel of the piece and reversely the former holding back and the latter pulling during the opposite direction of travel, and means for supplying energy during each direction of travel from the holding means holding back on the piece to the holding means pulling on the piece."
The gist of this patent resides in the means for supplying energy as above described. The defendants assert that the same was anticipated by an article appearing in the Journal of the Union of German Engineers for July 2, 1927, and prior to the application for the patent in suit, which bears date July 5, 1928. A translation from the article, after mentioning a mill driven by a reversing motor and a setup of reels substantially as above outlined, reads: "The pay-out reel motor is so controlled that it acts as a generator and pumps the energy back into the Ward-Leonard circuit, while the winding reel motor takes an equivalent current from the Ward-Leonard circuit. Neglecting the insignificant losses in the reel motors, the tension maintenance is obtained without loss of power. The voltage of the generator and, therefore, the strip speed remain constant during a given pass. As the reel motors are controlled to maintain a constant current input or output, respectively, which means that these motors operate with a constant KW output. The ammeter in the reel motor circuit serves therefore as an indication of the strip tension."
This clearly anticipates the McBain claims in so far as they relate to the means for supplying energy from the unwinding reel. But the plaintiff, replying to this, says McBain is entitled to an earlier date than that of his application because he conceived the idea of his invention in November of 1920, and sketches made by him on May 22, 1922, show that as of the latter date he did reduce his invention to graphic form. Before the plaintiff may be given the benefit of this prior date, however, it must be shown that he was reasonably diligent in reducing his invention to practice or in applying for a patent thereon. Christie v. Seybold, 6 Cir., 55 F. 69; Automatic Weighing Machine Co. v. Pneumatic Scale Corp., 1 Cir., 166 F. 288. During the years that passed between 1922, when McBain put his idea of 1920 in the form of a drawing, and 1928, when he finally applied for a patent, it is said that he was in straitened circumstances so he could not reduce his invention to use within this period. This may be true, but there is nothing in the evidence which will permit a reasonable conclusion that he was, during this time, so pinched for money that he could not afford to apply for a patent. In fact, he financed the purchase of a $10,000 home during this period.
My conclusion is that McBain, not having proceeded with due diligence in applying for his patent, is limited to the date of his application, and the German publication, being an anticipation dating upwards of a year before him, this patent is invalid.
The close cooperation which existed between the two defendants in many of the enterprises of the American Sheet & Tin Plate Company, particularly with relation to the installations complained of in this suit, leads to the conclusion that the Tin Plate Company is, in effect, a department of the Steel Corporation. The motion to dismiss as to the United States Steel Corporation is therefore denied.
A decree will be entered in conformity with the foregoing conclusions.
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