The opinion of the court was delivered by: FAKE
This is a patent suit in which questions of validity and infringement are directed to five patents, all of which are now owned by the plaintiff corporation. Four of these patents were originally issued to Agram F. Steckel; to wit, No. 1,779,195, No. 1,744,016, No. 1,744,017, and No. 1,744,018, and the fifth was issued to William C. McBain; to wit, No. 1,881,056. They will be considered here in the order above set out, and references thereto will be by use of their last three numbers only.
This patent discloses that the original application therefor was filed on June 30, 1923, and thereafter on December 9, 1929, a divisional application was filed upon which the patent was allowed on October 21, 1930. Divers questions are raised based upon alleged differences between the original application and the patent as finally issued. It will not be necessary for present purposes to pass upon the questions thus raised, since taking the patent as granted, which includes all that was contained in the original application, my conclusion is that the patent is invalid.
To the end that the reasoning which leads to invalidity may be more easily followed, an example claim of the patent will be considered as the premise upon which the reasoning is based.
"A mill for rolling sheet or striplike material of substantially uniform thickness, comprising a working roll of substantially uniform diameter in the body portion, backing rolls of larger diameter and antifriction mounting for said backing rolls, the backing rolls having diameters more than twice the diameter of the working rolls, whereby excessive 'crown' in the product is avoided, and the backing rolls being also of sufficient diameter to permit of using an antifriction mounting of a character to withstand the rolling pressures encountered and to operate for extended periods of time at speeds which are on the order of multiples of speeds commonly employed in the rolling of such material."
This patent was held valid in Cold Metal Process Co. v. United Engineering & Foundry Co., D.C., 3 F.Supp. 120, 129, the court there being convinced that "Steckel's combination of old elements, working rolls, backing rolls, and anti-friction spaced roller bearings, adjusted and apportioned in size, produced a new and useful result in the rolling of strip steel of high ratio at high speeds which required an exercise of the inventive skill." An examination of the state of the prior art as carefully considered in the Cold Metal Process Case, supra, and as well an examination of the additional evidence produced in this trial, leads me to agree that Steckel's combination was made up entirely of old elements, but I cannot agree that the combining of these old elements called for anything more than an exercise of the skill of one versed in the art. The success which Steckel attained in rolling out extremely thin strips of steel with this mill is largely dependent upon the coming into the market of properly constructed roller bearings intended and designed for the particular use to which he put them. In 1902 Mossberg & Granville issued a catalogue in which they offered roller bearings for sale. A reading of this catalogue discloses the teaching that an "* * * important difficulty overcome by roller bearings is the overheating of bearings under a heavy load or high speed." This strikes at the gist of Steckel's patent.
It was well known before Steckel that friction at the necks and bearings of rolling mills, occasioned either by speed or pressure or both, resulted in the heating of the operating surfaces of the rollers as used in rolling mills, and this heat further resulted in the faulty alignment and retardation of the working rolls which culminated in the turning out of defective material. What more simple, then, than the installation of roller bearings which would eliminate the friction in the mills and speed up their production? It is my opinion that this amounts to no more than the use of the best-known implement designed for a specific purpose, and one skilled in an art is called upon to know the separate items found among the implements of his trade and the reasonable uses to which they may be applied. The Standard Machinery Company (successors to Mossberg & Granville) issued a catalogue in 1920 in which they said:
"The roller bearings on the roll journals eliminate practically all of the friction that exists in a plain bearing housing, and further there is no heating of the rolls, which sometimes involves frequent delays to cool them."
This again strikes at the gist of Steckel's patent teaching specifically the use to which Steckel put such patented roller bearings. Moreover, the use of roller bearings, whether placed in a two, three, or four high rolling mill, amounts to the same thing in the last analysis, and nothing more than the skill incident to the art is required to suggest their use in either setup. See Northern Trailer Co. v. La Plant, 8 Cir., 21 F.2d 696, at page 698.
I am not unmindful that Steckel may have been the first to use the roller or antifriction bearings in a mill of the exact proporitional dimensions as that set out in his patent, but, since the use was no more than that expected of a skilled mechanic, he must rest content with the thought that he was the first mechanic who happened on the scene with a full equipment of the proper implements to smooth out or thin down strip steel. He did not make the implements. He merely used them skillfully for the purposes intended. The major cause of his success, in so far as this patent is concerned, was not his inventive talent but the inventive talent of the father of the roller bearing, and, as was said in the Cold Metal Case, all the elements he chose to employ were old and well known. It will serve no useful purpose here to cite the teachings of the prior art as separately applied to each of the minor elements which went into Steckel's combination. The fact that they were old is conceded.
In thus concluding that this patent is invalid for want of invention, I am not unmindful that I view the whole combination after the event and that some of our greatest inventions are extremely simple after the inventor has explained them. Nor am I forgetful that in close cases the measure of success has tipped the scales in favor of validity, but I have found nothing in the record here which weakens the conclusion that mere skill was involved. Moreover, I cannot agree with the opinion in the Cold Metal Case, supra, wherein it is held that Steckel's combination "produced a new and useful result." It is my opinion that Steckel produced no new result. He did produce an old result quicker, to wit, thin strip at greater speed, but in doing so ...