
    IMPERIAL MACHINE & FOUNDRY CORPORATION v. THE UNITED STATES
    [No. C-349.
    Decided May 9, 1927]
    
      On the Proofs
    
    
      Patents; vegetable-peeling machine. — The court finds upon the prooí no purchase or use by the defendant of the vegetable-peeling machine known in the trade as “ Sim-Peel-O,” which is alleged to infringe Letters Patent Nos. 809582 and 942932 issued to Robinson. See ante, p. 491.
    
      The Reporter's statement of the case:
    
      Messrs. Ralph M. Smyder and Marvin Farrington for the plaintiff. Mr. Wallaee R. Lane and King <& King were on the briefs.
    
      Mr. J. F. Mothershead, with whom was Mr. Assistant Attorney General Herman J. Galloway, for the defendant. Mr. H. E. Knight was on the brief.
    The court made special findings of fact, as follows:
    I. The Imperial Machine & Foundry Corporation, plaintiff herein, is a corporation of the State of New York, having its principal place of business at Lindenhurst, Long Island, State of New York.
    II. On January 7, 1905, Henry Robinson, a citizen of the United States, applied to the Commissioner of Patents for a patent on a machine for peeling vegetables, and on this application Letters Patent No'. 809582 were issued to him January 9, 1906. A copy of the specifications of the said letters patent and drawings annexed thereto is attached to the petition as “ Exhibit A” and made a part of this finding by reference thereto.
    On January 16,1906, the said Robinson assigned his right, title, and interest in and to the said patent to the Robinson Machine Company, a corporation'of the State of New Jersey.
    On December 28, 1906, the Robinson Machine Company assigned its right, title, and interest in and to said patent to the Imperial Machine Company, a corporation of the State of New Jersey.
    On November 12, 1908, the said Henry Eobinson applied to the Commissioner of Patents for new and useful improvements in vegetable-paring machines, and on this application Letters Patent No. 942932 were issued to him December 14, 1909. A copy of the specifications of said letters patent and drawings annexed thereto is attached to and made a part of these findings as Appendix I.
    On February 7, 1912, the said Eobinson assigned his right, title, and interest in and to the said patent to the Imperial Machine Company.
    On September 27, 1917, the Imperial Machine Company sold its entire business and assets, and assigned all its patents, among them Letters Patent No. 809582 and No. 942932, to the Imperial Machine & Foundry Corporation, plaintiff herein. Said assignment contained a provision that the assignee should have “ the right to sue for and recover damages and profits in its own name for any and all past infringements of said letters patent.”
    III. Prior to January 7, 1905, the date of filing the application for letters patent, thereafter granted as No. 809582, there were in the art relating to potato and vegetable-peeling machines the inventions and devices illustrated and described by the following letters patent:
    United States No. 91238 to Lehman.
    United States No. 100348 to Williams.
    United States No. 115264- to Mayhew.
    United States No. 119746 to Culver.
    United States No. 129741 to Loy & Baker.
    United States No. 223056 to Mills.
    United States No. 237599 to Eaymond.
    United States No. 293047 to Mackey.
    United States No. 336533 to Sylvester.
    United States No. 524420 to Jaeger.
    United States No. 551526 to Buist & Schmidt.
    United States No. 686576 to Blache.
    United States No. 777590 to DeBonneville.
    United States No. 782852 to Imm.
    United States No. 860349 to Brenizer.
    
      British No. 10825 to De Pass, issued 1886.
    British No. 5485 to Schulte, issued 1886.
    British No. 3040 to Lowe, issued 1894.
    Prior to November 12, 1908, the date of filing the application for letters patent, thereafter granted as No. 942932, there were in the art relating to potato and vegetable-peeling machines the inventions and devices illustrated and described in the foregoing letters patent, including Letters Patent No. 809582, and in addition thereto those illustrated and described in the following letters patent:
    United States No. 842993 to Archer.
    United States No. 855481 to Bobinson.
    United States No. 922382 to Brenizer.
    United States No. 999478 to Archer.
    IY. The machine illustrated and described in said Letters Patent No. 809582 consists of a cylinder at the bottom of which is mounted a rotary disk having a striated abrading surface provided with one or more rounded humps or raised portions which slope from the circumference of the disk toward the main portion thereof. The function of the rounded and sloping humps is to produce the necessary agitation and circulation of the mass of vegetables whereby all the vegetables are brought into contact with the abrading disk for the proper length of time to peel them.
    Claims 1 and 2 of Letters Patents No. 942932, which are the claims alleged by the plaintiff to be infringed, are described as follows:
    “1. In a mechanism of the character described, a rotary horizontal abradant member having a substantially flat abradant surface of broken crystalline material, the surface being broken with a plurality of peripheral scoop-shaped humps or waves, said waves extending outwardly from a point intermediate of the center and periphery of the member.
    “2. In a machine of the character described, a rotary abrading member having a substantially flat surface and an upwardly projecting concave peripheral lip.”
    The function of the humps described in Letters Patent No. 942932 is the same as in Letters Patent No. 809582 with the following improvement: The scoop-shaped peripheral humps and the upwardly projecting concave peripheral lip impart another motion to the vegetables which prevents small vegetables from being crowded into the angle formed by the disk with the sides of the cylinder and there ground to pieces.
    Y. The plaintiff and its predecessors made paring machines according to the design covered by the said patents, have sold them throughout the United States and in foreign countries, and have continuously, since the issuance of the said patents, marked the said machines with the dates and numbers of the patents.
    YI. The several and successive owners of the said patents have never granted licenses to make, use, or vend the devices covered thereby.
    VII. The plaintiff and its predecessors have on numerous occasions from the year 1906 to the fall of 1923 prepared and sent circulars to persons, firms, and corporations, including the makers of the “ Sim-Peel-0 ” machine, hereinafter referred to, warning them not to make, sell or use apparatus infringing plaintiff’s aforesaid patents, and have also verbally and in writing repeatedly and continuously during said period informed purchasing officers of various departments, bureaus and independent agencies of the United States Government of plaintiff’s rights under the said patent and warned them not to purchase machines that infringed the same. Some of the Federal officers so informed and warned were Paymaster General McGowan, U. S. N.; John Plancock, chief purchasing officer, Bureau of Supplies and Accounts, U. S. N.; Assistant Paymaster General Peoples, U. S. N.; Chief Purchasing Officer Cobey, Bureau of Supplies and Accounts, U. S. N.; and the purchasing officer for the United States Navy at Great Lakes Naval Training Station.
    VIII. Since the year 1916 certain persons, firms and corporations have been making and selling potato-peeling machines under trade names, respectively, of “American,” “ Sim-Peel-O,” and “ Economical.”
    The said “ Sim-Peel-0 ” machine contained as its essential part an abradant disk of the kind and character illustrated and described in the specifications and drawings of said Letters Patent Nos. 809582 and 942932.
    
      Suits were brought by the plaintiff and its predecessors for injunction and accounting against the manufacturers and sellers and some users of the said “ Sim-Peel-0 ” machines and decrees obtained therein sustaining the validity of Letter Patent Nos. 809582 and 942932, holding said “ Sim-Peel-0 ” machine to be an infringement thereof, and awarding profits and damages. Owing to the insolvency of the defendants, neither plaintiff nor its predecessors have received from the said manufacturers any damages or profits as a result of said litigation.
    IX. One of the distributors of the “ Sim-Peel-0 ” machine was Albert Pick & Company. The plaintiff, by its president and attorney, executed and filed a release and waiver in Equity Suit No. 2636 in the United States District Court, Northern District of Illinois, Eastern Division, entitled Imperial Machine <& Fowndry Corporation v. Albert Tick & Company, containing the following:
    “ Now. therefore, in consideration of the sum of twenty thousand ($20,000) dollars in hand paid, the receipt of which is hereby acknowledged, the plaintiff, Imperial Machine & Foundry Corporation, hereby releases and entirely relieves the defendant, Albert Pick & Company, and all sellers and users of the vegetable-peeling and paring machines held to be an infringement of said patents sold by said Albert Pick & Company previous to November 19, 1923, from any and all claims for profits and damages or every nature whatsoever which have arisen or may arise out of said Albert Pick & Company’s sale or use of said infringing vegetable-peeling or paring machines, or by the use of said infringing vegetable-peeling or paring machines by others who have purchased said machines; and agrees to discontinue the accounting proceeding pending relative thereto.
    “ This release does not in any wise relieve the party or parties manufacturing said infringing vegetable-peeling or paring machines, whether sold to Albert Pick & Company or otherwise, from full responsibility for their infringing acts in connection with their manufacture and sale of said infringing machines. * * *
    “ Said Imperial Machine & Foundry Corporation will and does hereby release all Government agencies purchasing guch infringing machines from Albert Pick & Company previous to November 19, 1923, and will remit in any suit now pending against the Government or any of its agencies, any claim for damages or profits arising out of the use of any of said infringing machines thus purchased from Albert Pick & Company.”
    X. There is no satisfactory proof that the defendant has purchased, received, or used any of the said potato-peeling machines known in the trade as “ Sim-Peel-O,” containing abradant disks of the kind and character described in plaintiff’s said patents, or that any of them have been manufactured by or for the United States.
    The court decided that plaintiff was not entitled to recover.
   Graham, Judge,

delivered the opinion of the court:

This is a companion case of four others, between the same parties, involving the validity and infringement of Letters Patent 809582 and 942982, the property of the plaintiff. The question of the validity of these patents has been discussed and passed upon in the opinion filed by the court in C-320, handed down this day {ante, p. 491), so that it is unnecessary to consider this question again. Inasmuch as the court has found that there is no proof of infringement by purchase and use by the defendant, it is unnecessary to consider the question of infringement. The petition should therefore be dismissed, and it is so ordered.

Moss, Judge; Hay, Judge; Booth, Judge; and Campbell, OMef Justice, concur.  