repairs or replacements as were necessary to place the furnace in good, operating condition. The original cost of the furnace was approximately $100,000. The charge made to the defendant's plant at Gary for this furnace was $87,259.03. The refractories and insulation were not sent to Gary because it is difficult to remove refractory brick work -- breakage is encountered in such an effort, and the cost of transportation will not warrant the change. These same factors apply to insulation. The piping on the furnace at Mercer was not removed for similar reasons. Some additional burners were added to the furnace at Gary for the purpose of increasing the capacity and improving the quality and uniformity of the heating, the cost of which was less than $500. Every new item of importance which went into the Gary furnace was for the purpose of repairing wornout parts of the furnace. Disks, shafts, filler rings, bushings, castings and refractories are all things which normally wear out in the use of a furnace and have to be replaced from time to time. The cost of the new parts amounted to $11,628.19.The repair items, other than new parts, cost a little over $5,000. The identity of the furnace was not changed and such repairs and replacements were necessary to put the furnace in good, operating condition.
In Wilson v. Simpson, 9 How. 109, 122, 123, 13 L. Ed. 66, the Supreme Court stated:
"We admit for such is the rule in Wilson v. Rousseau, 4 How. 646, 11 L. Ed. 1141, that when the material of the combination ceases to exist, in whatever way that may occur, the right to renew it depends upon the right to make the invention. If the right to make does not exist, there is no right to rebuild the combination.
"But it does not follow, when one of the elements of the combination has become so much worn as to be inoperative, or has been broken, that the machine no longer exists, for restoration to its original use, by the owner who has bought its use. When the wearing or injury is partial, then repair is restoration, and not reconstruction.
"Illustrations of this will occur to anyone, from the frequent repairs of many machines for agricultural purposes. Also, from the repair and replacement of broken or worn-out parts of larger and more complex combinations for manufactures.
"In either case, repairing partial injuries, whether they occur from accident or from wear and tear, is only refitting a machine for use. And it is no more than that, though it shall be a replacement of an essential part of a combination. It is the use of the whole of that which a purchaser buys, when the patentee sells to him a machine; and when he repairs the damages which may be done to it, it is no more than the exercise of that right of care which every one may use to give duration to that which he owns, or has a right to use as a whole."
See, also, Cinema Patents Co. v. Craft Film Laboratories, Inc., D.C., 56 F.2d 265, affirmed by the Third Circuit Court of Appeals in 64 F.2d 42.
I conclude under the facts and the law, that the furnace removed from Mercer to Gary remained under the original license, and consequently, that defendant has not infringed plaintiff's patent 17,413 in the operation of said Gary furnace.
Defendant, by reason of said license, is estopped from denying the validity of patent 17,413. However, I have found that said patent is invalid for several reasons, one of which only, I will discuss:
This patent is invalid by reason of the failure to disclaim Claim 16 along with Claims 15 and 17. Claims 15 and 17 were involved in the case of Duraloy Company v. Surface Combustion Company, 6 Cir., 75 F.2d 305. These claims were held invalid. The final decree was entered April 6, 1935. May 16, 1935, Kathner filed a disclaimer in the Patent Office of Claims 15 and 17, as covering subject matter of which "said patentee was not the first inventor." Claim 16 was not disclaimed. In Maytag Co. v. Hurley Machine Co. et al., 307 U.S. 243, 59 S. Ct. 857, 859, 93 L. Ed. 1264, the Supreme Court stated:
"There has been unreasonable neglect or delay in entering a disclaimer of claim 39 within the meaning of R.S. § 4917 [ 35 U.S.C.A. § 65], and R.S. § 4922 [ 35 U.S.C.A. § 71], unless that claim is 'definitely distinguishable from the parts claimed without right', -- that is, the disclaimed method claims 1 and 38. This must be so, for the company, by disclaiming those claims, has confessed that the patentee therein claimed 'more than the of which he was the original or first inventor or discoverer' and that the company, as assignee of the patent, therefore, 'did not choose to claim or to hold' the method therein disclosed 'by virtue of the patent or assignment.'"
See Edwin L. Weigand Company et al. v. Harold E. Trent Company, 3 Cir., 122 F.2d 920.
The subject matter of Claim 16 is not definitely distinguishable from Claims 15 and 17. Everything which is claimed in Claim 16 is set forth in practically identical language in Claims 15 and 17. The only difference between Claim 16 and Claims 15 and 17 is that in Claim 16 it is stated that the restricted passage is "adjustably controlled." There is nothing in the specification which indicates that the patentee intended the restricted passage to be otherwise than "adjustably controlled." The mere statement that the restricted passage is "adjustably controlled" does not differentiate Claim 16 in either operation or result from Claims 15 and 17.
Let an order for judgment be prepared and submitted in accordance with the foregoing findings of fact, conclusions of law and this opinion.
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