The opinion of the court was delivered by: CAMPBELL
CAMPBELL, District Judge.
This is a suit for the alleged infringement of patent No. 1,574,736, issued to Karl E. Peiler, assignor by mesne assignment, to Hartford-Empire Company for feeder for molten glass granted February 23, 1926, on application filed August 3, 1912.
The patent in suit issued to the plaintiff Hartford-Empire Company, and its title is not questioned.
By a license agreement executed June 26, 1928 (Ex. 4), the plaintiff Hartford-Empire Company granted to Corning Glass Works, an exclusive, assignable and divisible license to make and sell apparatus and to use or license others to make, sell, or use the invention covered by the patent, but provided that it "is restricted to the use of the apparatus made under this license and of the process hereby licensed for the manufacture of tubing and/or cane from molten glass."
The Corning Glass Works, the licensee in said license agreement, has, since its execution and since the filing of this suit, been merged under the laws of the state of New York, with the Macbeth-Evans Glass Company under the same corporate name, Corning Glass Works (Ex. 5), and the new corporation has been substituted for the old company, by a suppemental bill. This merger conveyed to the new corporation all the assets of the old company, including equitable rights, such as licenses under the patents, owned by the old corporation. Section 85 of the Stock Corporation Law of New York (Consol.Laws N.Y.c. 59); Edison Electric Light Co. v. New Haven Electric Co. (C.C.) 35 F. 233, 236; Edison Electric Light Co. v. United States Electric Lighting Co. (C.C.A.) 52 F. 300, 313, 314.
The Corning Glass Works (old corporation) granted an exclusive license for tubing and cane of certain kinds, but other than for electrical purposes, to Libbey Glass Company (Ex. 6).
As this suit is based on the sale by the defendant, of tubing and cane made on the alleged infringing machine for use for electrical purposes, the Libbey Glass Company has not been made a party. P.R. Mallory & Co., Inc. v. Automotive Mfrs' Outlet, Inc. (D.C.) 45 F.2d 810.
The alleged infringing act being the use of the patented device in the manufacture of tubing and cane, the Hartford-Empire Company is only a nominal plaintiff, the Corning Glass Works being the real plaintiff.
Defendant denies infringement, denies that its machine embodies any invention disclosed in the patent in suit as filed, or in the patent as issued, denies any equivalence between its machine and the patent in suit in structure, mode of operation or result, and denies that the machine of the patent in suit, if operable at all, could achieve the defendant's results. Defendant asserts that the patent in suit is a mere paper patent, that it has never been commercially used, and has contributed nothing of value to the practical art, that, if it is valid at all, it must be limited to the separate gob feeding device it describes, and is not infringed.
Defendant further asserts that, if the claims in suit are so broad, as to cover the Danner machine, they are invalid, (1) because broader than the disclosure of the patent in suit, (2) because they have been illegally broadened to cover the Danner machine by amendment filed more than two years, i.e., nearly nine years, after the issuance and publication of the Danner patents, and (3) because the assertion of a monopoly of such scope is unsupported by any supplemental oath by the patentee of the patent in suit.
Defendant further asserts that the bill should be dismissed because, (1) the claims in suit are not infringed, and (2) they are invalid if so broadly construed as to cover defendant's machine.
The defendant is a glass manufacturer located in the borough of Brooklyn in this district.
The machine alleged to infringe is a device for making glass tubing and glass rod, built and operated by the defendant since the expiration of certain Danner patents.
Prior to their expiration, the plaintiff was the owner of exclusive rights under those Danner patents.
Defendant further contends that this suit is an attempt to prolong the monopoly that plaintiff enjoyed under the Danner patents for the additional term of the patent in suit.
Glass melted in a furnace at a temperature of 2200 degrees F. or over (at which temperature it is very fluid) must for fabrication be taken therefrom to be worked outside the furnace at the much lower temperature at which it is fabricated. The old method of doing this was the hand punty method in which an iron called the punty is inserted in the furnace with its end just immersed in the molten glass and rotated to collect thereon a layer of glass, the glass sticking to the iron by adhesion. A sufficient quantity of glass having been collected, the iron with the adhering glass is withdrawn from the furnace, the iron during such withdrawal being rotated to hold the glass thereon.
The glass so withdrawn from the furnace may be fabricated in several ways, the iron being used to position it for such fabrication. If a hollow article is to be made, the punty is hollow.
The iron may be held in inclined position and its rotation stopped to permit the glass to run off the side of its end into a mold, after which the connecting strand of glass is cut, or the iron may be held erect to let the glass run down off its end, air being blown through the iron to expand the glass as it runs off the pipe into a hollow article.
A cane or tube can be produced by drawing the glass off the punty, air being admitted through the pipe, if tubing is to be produced, it being common practice to rotate the punty during this operation to produce uniform walls.
Whichever of these methods is followed, the punty method suffers from the serious fact that time must be consumed between successive fabricating operations in reloading the punty, requiring the service of a skilled workman.
Many attempts had been made prior to the filing in 1912 of the application for the Peiler patent in suit, to depart from this practice. Mr. Carter enumerated two methods which had gone into public use, that is, the flowing stream or Brooke method and the Owens suction method. Since 1912 the plunger feed method, invented by the patentee of the patent in suit, has gone into extensive use. See Hartford-Empire Co. v. Hazel-Atlas Glass Co. (C.C.A.) 59 F.2d 399.
The patentee of patent 1,574,736 in suit says, in his specification, "I * * * have invented new and useful improvements in Feeders for Molten Glass * * *," and further says "The invention to be claimed herein comprises an inclined rotating member, preferably contained in a heated chamber, on which glass is fed in a stream from a suitable source of supply, and from which it is delivered for subsequent working."
In his said invention the patentee utilizes the flowing stream feeding method to provide a continuous feeding of glass from the furnace, and like the hand punty method to collect the glass by winding it on a punty. This he accomplished by locating a rotating punty outside of the melting compartment and fed it by a stream of glass continuously flowing from the furnace upon the upper surface of the punty.
The operation is properly described by the witness Carter as follows:
"The glass is run out of the furnace in a continuous stream, but interposed between this stream and the parts which have to do with the fabrication of the glass is an instrumentality which is very similar to an ordinary hand punty, except that it is on a larger scale and it is in fixed position. It is inclined downwardly and has a head on which the stream flows and about which the glass is wound up, very much as the hand punty gatherer winds it up on his punty or blowpipe, but by supplying it with a continuous stream of glass, instead of requiring the punty to be put into the furnace and wound up with the glass there, the operation is made continuous, that is, the gathering of glass upon the mechanical punty takes place as a continuous operation. The stream flows continuously upon it, and the glass is carried off, in some form or other, in toto, at the exact rate that it is supplied, that is to say, the amount of glass taken off from the punty in a given interval of an hour or any substantial interval of time, is necessarily the same rate as that which it is supplied by the flowing stream.
"The punty does two things here, it receives the flowing stream and distributes it and amalgamates that stream so that the coiling and lapping which I have referred to as inherent in the ordinary flowing stream method is overcome. The glass stretches itself over the surface of the punty which is in a heated chamber and the tendancy of the skin to interfere with its homogeneity is overcome and it becomes again a homogenous mass."
The defendant pleaded patents as anticipating, but its expert discussed but one of them, which I must assume he considered the most pertinent and the best reference, to wit patent to Mansfield 854,511 granted May 21, 1907. That patent shows a glass melting chamber having an opening in one of its vertical walls closed by a pair of superimposed, water cooled metal feed rolls, the rolls having circumferential grooves therein so that the upper rear quadrant of the lower roll and the lower rear quadrant of the upper roll form parts of the wall of the melting chamber. No accumulation of glass on either roll is contemplated and there is no disclosure of the flowing of glass onto either roll. One quadrant of each roll is immersed in the glass in the melting chamber, and a stream of glass is neither wound nor gathered on either roll. If that device were operative at all, the rolls would merely squeeze out a column of glass between them.
The only prior art offered in evidence neither anticipates nor limits the construction of the patent in suit.
Defendant pleaded invalidity because of alleged unreasonable delay in making the claims in suit until more than two years after the patenting of the Danner machine in 1917 and the use thereof in 1920.
This defense appears to be without merit.
Original claim 9 reads as follows: "9. A feeder for molten glass comprising a rotatable gathering head, means for rotating said head, and means for supplying molten glass to the said head."
On February 15, 1915, claim 9 as above quoted was canceled and the following inserted as claim 3: "A feeder for molten glass, comprising a rotatable gathering head, means for rotating said head ...