Appeal from the District Court of the United States for the District of New Jersey; William Clark, Judge.
Before BUFFINGTON, WOOLLEY, and DAVIS, Circuit Judges.
This appeal is from an interlocutory decree finding infringement and granting an injunction. The case is one of more than forty infringement suits that have followed in the train of our decisions in Straub v. Campbell (C.C.A.) 259 F. 570, 571, and Crozier-Straub, Inc. v. Graham (C.C.A.) 28 F.2d 321, 322, sustaining Letters Patent No. 1,212,840 issued to Straub in 1917 for a building block and method of making the same. In those cases we stated the art, quoted the specification, discussed the invention, set forth the claims and construed them at length. In this case where the single issue is infringement we shall rely upon those decisions as the basis of our judgment, adding nothing to and taking nothing from the construction of the claims there made. Moreover, we shall refer to and regard the opinions in those cases as a preface to the opinion in this case, repeating only enough to make a start.
There are three claims in the patent -- all in issue. The broad product claim is for "A building block composed of a mixture of coarse and fine coal cinder and ashes, retaining all the original mass, cement and water." The process claim is for the manner of making a product of this composition, that is, "in crushing and grinding an original mass of coal cinder and ashes without separation, mixing the entire mass of coarse and fine material with a suitable proportion of cement and water, and molding and drying the same in block form."
Straub was the first in the art to make such disclosures. Therefore we found them novel. Construing the invention, we said in the Campbell Case:
"The gist of his invention, for such we think it is, was in taking ordinary furnace ashes and using the whole of that product, without sifting or selection. He found that, by taking the whole of the ashes -- clinkers, fine dust, and all -- and grinding the entire product and mixing it with cement and water, he was able to produce a new and useful article in the building art. * * * While even screened ashes had been used in building blocks, no one before Straub conceived the novel idea of taking the whole ash product -- clinkers and ash alike, half burned and wholly burned, lumps and dust -- in fact, the entire run of the grate, and using the whole waste product in its raw state, rolling or grinding the whole mass."
This we held constituted patentable novelty.
In the Graham Case we summarized the characteristics of the block previously stated in the Campbell Case by saying:
"All blocks are more or less soundproof but Straub's is more soundproof than others with hard aggregates, doubtless for the reason that instead of being a solid mass as when made of sand or stone aggregate it is porous, containing myriads of cells; it permits nails to be driven into it without breaking and firmly holds the nails in place; it is lighter in weight and cheaper to make than any block brought to our attention; though porous and light, it is strong; and, though strong, can be broken on nearly straight lines."
It is, in addition, fireproof and is a heat, cold and damp resistant beyond blocks made of hard aggregate. Still more, it will, because of its rough surface, receive and hold without woodwork plaster and stucco of all kinds. Straub was first to produce such a block. The manufacture and sale of more than 100,000,000 blocks of this kind by seventy licensees are evidence of its utility, to say nothing of the tribute paid by infringers throughout the country. We found patentable utility and held all claims valid.
As the sole question is one of infringement within the scope of the claims as defined by their terms and construed by this court, we shall, in order to show precisely to what our decision is directed, state the case as it was made by the parties at the hearing.
The plaintiffs charged the defendant with two distinct infringing practices extending through two sharply marked periods; the first being from June, 1927, until October, 1928; the second from October or November, 1928, until (at least) January 4, 1929, the date of suit. The ending of the first period and the beginning of the second with their accompanying infringing practices, if not occasioned by, were coincidental with the decision of this court in Crozier-Straub, Inc. v. Graham, 28 F.2d 322, rendered on September 26, 1928. In order to prove the first infringing practice during the first period the plaintiffs, on August 23, 1928, purchased one of the defendant's cinder blocks and later offered it in evidence as Plaintiffs' Exhibit No. 1. They produced witnesses who testified to its composition -- qualitative rather than quantitative -- showing that with water evaporated it contained only two elements, cement and cinders, the particles in the latter being from fine to coarse with normal intermediates, indicating, though of course not proving conclusively, the "original mass" aggregate of the patent. They then proved that the block possessed all the characteristics of the Straub block claimed by the patent and found by this court. That was the plaintiffs' prima facie case on the first infringement.
In the defendant's case, one of its officials testified that in its blocks of the first period it used four elements instead of the three of the patent, namely; cinders, cement, water and muriatic acid. Why muriatic acid, the witness could not state, though we gather from the opinion in Crozier-Straub, Inc. v. Maryland Concrete Corporation (D.C.) 39 F.2d 126, where with some variation the same elements were employed, it was used for drying purposes. As this acid element though functioning perhaps in curing the block played no part in making it, we shall, as did the judge in that case, put it outside of our consideration. About two of the remaining elements, cement and water, there is of course no question. Nor is there, we apprehend, any question about the last element, cinders, for the witness admitted that the blocks manufactured by the defendant during the first period were made ...