The opinion of the court was delivered by: SCHOONMAKER
Plaintiffs charge defendant with the infringement of its two Morgan Patents, Nos. 1,473,157 and 1,729,177, in its use of a coal-loading machine, comprising relatively laterally swingable articulated frame members, having a coal-carrying conveyor extending throughout its frame members. That subject-matter is claimed to be covered by claim 34 of Patent No. 1,473,157. Likewise it is charged that defendant infringes claims 8, 9, 16, 45, 46, and 50 covering an articulated frame structure in which the articulated members are laterally swingable, with certain added accessories and improvements to provide a continuous passageway for coal to be loaded.
The defendant, in its counterclaim, is charging the plaintiff with the infringement of all the claims of Arentzen Patent No. 1,785,402 for a coal-loading machine comprising relatively swingable articulated frame members having a single carrying conveyor extending therethrough.
The American Morgan Company, plaintiff, owns the legal title to the patents of Morgan in suit. The Jeffrey Manufacturing Company, the other plaintiff, is the exclusive licensee of the Morgan patent, and is one of the oldest and largest manufacturers of mechanical equipment, including loading machines for use in coal mines. However, neither plaintiff has ever manufactured or sold coal-loading machines which are constructed and operated in strict accordance with the Morgan patents in suit.
The defendant, Joy Manufacturing Company, is successor to the Joy Machine Company. It owns the Arentzen Patent No. 1,785,402, the subject-matter of the counterclaim. Since its organization in 1919, the Joy Machine Company, and its successor, the defendant, have been engaged in the manufacture and sale of mechanical loaders designed for use in coal mines. These machines, the defendant contends, were built in accordance with the teaching of Joy patent issued June 10, 1919, on an application filed November 18, 1916. By 1922, the Joy Machine Company had perfected and placed on the market a coal-loader known as 4-BU loader, which followed the teachings of the Joy patent. On this subject the United States Department of Commerce, in a bulletin published in 1930, and entitled "Coal in 1928," makes this statement: "the commercial history of the loading machine may be said to date from 1922, the year when the first Joy 4-BU's were placed on the market, thereby becoming available to operators generally."
Subsequently, defendant put on the market its 5-BU and 6-BU type loader. The 5-BU was provided with a second independently swinging delivery conveyor, while the 6-BU was substantially of the same construction as the 4-BU. In 1928, defendant developed and placed on the market its 7-BU loader, which is charged to infringe the Morgan patents in suit. These loaders differ from the 4-BU and the 6-BU type only in that the conveyor is made laterally, as well as vertically, swingable. This conveyor, the defendant contends, is manufactured under defendant's own Arentzen Patent No. 1,783,402.
The application on which Morgan Patent No. 1,473,157 issued on November 6, 1923, was filed on April 30, 1913. The application on which Morgan Patent No. 1,729,177 issued on September 24, 1929, was filed on December 8, 1917. Neither the plaintiffs, nor anyone else, have ever constructed and operated coal-loading machines constructed and operated in accordance with the teachings of either patent. The defendant's 4-BU loader, with conveyor having vertically swingable section, was developed and placed on the market as early as 1922, and before the first Morgan patent issued.The defendant's horizontally articulated conveyor which was incorporated in its 7-BU loader and other loaders of the same type, was developed in 1928 before the second Morgan patent.
The plaintiffs did not charge defendant with infringement of either of these patents until May 1, 1936. No explanation is given of the delay. In the meantime, defendant greatly expanded its business in its loading machines and made large investments in connection therewith. In this situation, we are of the opinion that plaintiffs are not entitled to injunctive relief, and are thereby estopped by their laches from pressing their suit for infringement.
Claim 34 of Patent No. 1,473,157 is in suit. It reads as follows: "In a loading machine, the combination with a supporting frame, of a supplemental frame pivotally connected thereto for swinging adjustment relatively to said supporting frame, and a single endless conveyer extending from one end of said supporting frame to the opposite end of said supplemental frame for operation throughout the various adjustments of said supplemental frame relatively to said main frame."
It will be noted that the patent is not limited in its teaching to any particular field of use, though reference is made in the specifications to special adaptations of the loading mechanism for loading coal in mines. The claim declared upon refers to "a loading machine" with no limitation of its use on mobile loading machines. The loading machine of this patent is designed, when in use, to rest directly on the floor, and is held in place by jacks extending from floor to ceiling, and step-by-step forward movement of the machine may be obtained only by loosening first one set of jacks and then another.
In the prior art, we find loading machines which consisted of a supporting frame and a supplemental frame pivotally connected therewith for swinging movement in a vertical direction in combination with a single endless chain-conveyor comprising a chain extending from one end of the supporting frame to the opposite end of the supplemental frame for operation throughout the various adjustments of said supplemental frame relative to the main frame. See Bailey Patent 100,103, February 23, 1870; Loader Patent 181,694, August 29, 1876.
Likewise, such loading machines were known in which the supplemental frame was pivotally connected to the supporting frame for movement in a horizontal direction. See Dodge Patent 439,487, October 28, 1890; Dodge Patent 476,616, June 7, 1892. The Dodge patents disclose a relatively large stationary loader for gathering and loading coal from a pile in a yard. In this connection, it will be noted that claim 34 of this Morgan patent is not limited to a mobile loader nor to a machine of any particular size. A loader built in accord with Dodge Patent 476,616, has been in commercial use at the Coalburg storage plant of the Erie Railroad Company at Rochelle Park, New Jersey, since 1905. If we compare claim 34 of the Morgan patent with Dodge 476,616, we find that every element of the claim finds a counterpart in the disclosure of the Dodge patent. Neither the Morgan specification nor claim 34 distinguishes its mechanism by reference to a loading machine, for the reason the Dodge conveyor is designed, and has actually been used for years to load coal from a pile onto cars. None of the claimed elements of the Morgan patent has any reference to the size of the loading machine. We cannot see that the size of the machine has anything to do with ...