
    WILLIAM A. ZEIDLER v. THE UNITED STATES
    [No. A-51.
    Decided February 1, 1926]
    
      On the Proofs
    
    
      Patents; oonneetmff two< pieces of metal. — The Zeidler patent for connecting two pieces of metal, parts of safety spirals, held invalid for want of invention.
    
      The Reporter’s statement of the case:
    
      Mr. 0. Ellery Edwards for the plaintiff. Messrs. Archibald Cox, Joseph W. Cox and James H. Griffin were on the briefs.
    
      Mr. Manvel Whittemore, with whom was Mr. Assistant Attorney General Herman J. Galloway, for the defendant.
    The court made special findings of fact, as follows:
    I. The plaintiff is a citizen of the United States and a resident of the city of New York, in the county of Bronx and State of New York.
    II. At all times hereinafter mentioned the plaintiff was the owner of substantially the entire capital stock of the William A. Zeidler Company, a New York corporation, and was the president thereof, and alone directed and controlled the activities of said corporation.
    III. The plaintiff filed his petition in this case under and pursuant to the act of Congress approved June 25, 1910, providing for additional protection for the owners of patents of the United States, 36 Stat. 851, as amended by the act of July 1, 1918, 40 Stat. 704,105.
    IY. In the art prior to plaintiff’s alleged inventions, hereinafter described, there were in existence and had been patented various methods of connecting two pieces of metal or like material, which were included in the following letters patent:
    No. 254882, metallic reed for musical instruments, issued to Munroe, March 14,1882';
    No. 726809, car seal, to White, April 28,1903;
    No. 841755, spectacle temple, to Willson, January 22,1907;
    
      No. 1123805, splice joint, to Rotliermel, January 5, 1915;
    Noí 1252680, art of providing flat metal strips with sealing sleeves, to Flora, January 8,1918.
    Copies of said letters patent are made a part of this finding as Exhibits A, B, C, D, and E, respectively.
    On or before September 13, 1917, more exact date unknown, there had also been designed a method of connecting two pieces of metal, for use in the manufacture of safety spirals for Mark III detonating fuses, herein designated type G spirals. In this method the weight at the end of the spiral was fastened to the tape portion thereof as follows: The weight was of thicker material of the same width as the tape, but originally of double the final length of the weighted end. The weight was folded back upon itself, and the corresponding length of the tape was inserted between the resulting folds of the weight. The weight was constituted by a wedge-shaped blank which had a gradually increasing thickness from one end to the other and was folded at its middle, the thick end doubled back over and upon the thin end of the wedge, with the end of the thin flexible spiral strip or tape between the two layers. The two folded-over layers with the end of the flexible tape between them were riveted together by two rivets. This type of spiral was manufactured on a production basis beginning on or about December 5, 1917, by the Scovill Manufacturing Co. under contract with and delivered to and accepted by the United States and the Bartlett-Hayward Co., a Government contractor. Type G required the same annealing, served the same purpose, and functioned in the same manner as the spirals hereinafter described. Type G spiral was found by the Army to be satisfactory, according to tests made of it in or about March, 1924, upon the Aberdeen Proving Ground. It is depicted in Figure I of appendix to these findings, No. 1.
    Y. Some time between the latter part of November, 1917, and the first part of March, 1918, the plaintiff designed a form of safety spiral (hereinafter termed type E) for use with Mark III detonating fuses, which, beginning early in March, 1918, was made by the William A. Zeidler Co. under the following contracts with Government contractors who: were making shells for the United States. The said contracts were in the form of orders, are filed as plaintiff’s Exhibits 9,10, and 20 to 82, both inclusive, and are made a part, of this finding by reference.
    Exhibit 9
    Order No. N. Y. 4, November 26, 1917. — International Steel <& Ordnance Go., 1,400,000 spirals, with privilege of increasing the order 20% at the same.price, deliveries to begirt one week after order is placed at the rate of 5,000 per day,, at the end of three weeks at the rate of 10,000, to be increased to 20,000 per day if called upon to make this increase within two weeks after request is made. Price, $35 per M, f. o. b, Lowell, Mass.
    Exhibit 21
    Order No. 18536, January 16, 1918. — International Arms- <& Fuse Go., 750,000 spirals, deliveries at the rate of 5,000 per day four weeks from receipt of order, 10,000 per day 10' days thereafter, 15,000 per day eight weeks from date of this order. Price, 5 cents each.
    Exhibit 27
    Order No. 90726, January 18,1918. — J. L. Mott Go., 1,000,-000 spirals, delivery of 10,000 or more daily after March 1,. 1918. Price, 5 cents each, f. o. b. Trenton, N. J.
    Exhibit 31
    Order No. 4322, March 14, 1918. — John B. Semple <& Go.,. 15,000 spirals, to be shipped not later than April 1, 1918. Price, $65 per M.
    Exhibit 20
    Order No. N. Y. 24, April 19,1918. — International Steel <& Ordnance Go., 500,000 spirals, with privilege of increasing the order 20% at the same price, deliveries of order No. N. Y. 4 [Exhibit 9] to be increased as follows:
    For week ending April 27th_ 150, 000
    Beginning April 29th_ 30, 000
    spirals per day continuing until order N. Y. 4 is completed,, and then continuing with this order at the rate of 30,000 per day. Price, $37.50 per M, f. o. b. Lowell, Mass.
    
      Exhibit 10
    Order No. N. Y. 26, May 21, 1918. — International Steel <& Ordnance Co., 250,000 spirals with privilege of increasing the order 20% at the same price, order No. N. Y. 24 [Exhibit 20] to be completed by May 28th, minimum delivery on this order 25,000 per day, beginning May 29th. Price, $37.50 per M, f. o. b. Lowell, Mass.
    Exhibit 22
    Order No. 26375, July 3, 1918. — International Arms & Fuze Co-., 500,000 spirals, delivery to commence on completion of the “ present order ” at the rate of 20,000 per day. Price, 4 cents each.
    Exhibit 23
    Order No. 26793, July 12, 1918.' — International Arms <& Fuze Co., 500,000 spirals, deliveries to commence immediately “ former order ” is completed, and to be made at the rate of 20,000 per day. Price, 4 cents- each, f. o. b. Zeidler Co.’s plant.
    Exhibit 24
    Order No. 28355, August 15, 1918. — International Arms <& Fuze Co., 500,000 spirals, deliveries to commence immediately “ former order ” is completed and to be at the rate of 20,000 per day. Price, 4 cents each, f. o. b. Zeidler Co.’s plant.
    Exhibit 25
    Order No. 29594, September 11,1918. — International Arms (& Fuze Co., 450,000 spirals, delivery at the rate of 20,000 per day. Price, 3y2 cents each.
    Exhibit 32
    Order No. 5266, September 19, 1918. — John B. Semple da .Co., 750 spirals, to be shipped “ as soon as possible.”
    Exhibit 29
    Order No. 109233, September 27, 1918. — Wagner Electric Mfg. Co., 60,000 spirals, delivery “ at once.” Price, 3 cents each, f. o. b. point of shipment.
    
      Exhibit 30
    Order No. 109358, October 7, 1918. — Warier Electric Mfg. Go., 1,300,000 spirals, delivery at rate of not less than 150,000 weekly. Price, 314 cents each, f. o. b. New York City.
    Exhibit 26
    Order No. 31600, October 19,1918. — International Arms c& Fuze Go., 200,000 spirals, delivery “ at once.” Price, 3% cents each, f. o. b. Zeidler Co.’s plant.
    Exhibit 28
    Order No. 96128, October 31, 1918. — J. L. Mott Go., 1,000,000 spirals, delivery of 20,000 or more daily on December 15, 1918. Price, Sy2 cents each, f. 0. b. Trenton, N. J.
    If Order No. N. Y. 4, November 26, 1917, had been completed in accordance with its terms, without the increase to 20,000 per day, about 1,100,000 spirals would have been delivered before April 24, 1918. The production section, gun division, office of the Chief of Ordnance, communicated with the Zeidler Company by letter dated March 1, 1918, as follows:
    “ Subject: Production of Spirals.
    “ Eeferring to your telegram of February 28th in which you stated you expected to increase j^our output to 20,000 per day within 10 days. We are directed by the Acting Chief of Ordnance to ask that you increase your production to 20,000 per day now, if possible, and ask that you wire us at the earliest possible date that your production will reach 20,000.”
    If production had been increased to 20,000 per day within 10 days from February 28, 1918, the increase thus called for would have resulted in completion of the said order on or about April 18, 1918.
    If Order No. 18536, January 16, 1918, had been completed according to the terms thereof, delivery of approximately 705,000 spirals would have been made before April 24, 1918.
    If deliveries had been made under Order No. 90726, January 18, 1918, at the rate of 10,000 per day after March 1, 1918, approximately 450,000 spirals would have been delivered before April 24, 1918.
    
      VI. Type E of spiral is depicted in Figure II of appendix to these findings, No. 1. It was comprised of two parts— a thin flexible tape portion and a weight. The tape portion required annealing after it was wound upon a suitable mandrel preliminary to slipping it directly under the head of the firing pin, and the annealing process did not permit the use of solder to braze a separate weight to the end of the tape.
    The spiral was wound in such a manner that the rotary action of the shell in its flight tightened the spiral and later, when the requisite velocity was reached, centrifugal force acting on the outer and weighted end unwound the spiral and threw it and its contents off. The spiral when wound embraced within its convolutions two half rings or spacer elements under the head of the firing pin so as to block the inward movement thereof, the said spacer elements being-held close to the pin by the spiral tape.
    The weight was a separate piece of material thicker than the tape, was folded and bent securely over a portion of the thinner material or tape, so that the thicker and thinner pieces were securely fastened together. In the manufacture of type E spiral the weight was grooved on its outer surface longitudinally, and upon its center part a flexible portion of the spiral was placed. The side portions of the weight ivere first bent into a trough, and these side walls were then bent down upon the end of the said flexible portion of the spiral. The folded-over side ,walls of the weight were squeezed down closely upon the underlying end of the flexible strip and upon the base of the weight itself. This operation shaped the weight to conform to the curvature of the wound tape, and the folding OA-er and shaping of the different layers of the weight and flexible tape securely locked the weight to the tape so that there could be no separation during the handling and use of the fuse. The groove upon the convex surface of the weight was to hold the binding wire during the temperature changes incident to the annealing and until the spiral was placed upon the shell.
    VII. The exact number of spirals of type E actually constructed by the William A. Zeidler Co. for and sold and delivered to the Government contractors under the aforesaid contracts and the dates of such construction, sale, and delivery are not satisfactorily proved. The evidence does not show how many of the spirals so contracted for were to be of type E. Type E was passed by Government inspectors and was accepted by the said Government contractors. By tests on the Aberdeen Proving Ground, made by the Army in or about March, 1924, type E was proved to be satisfactory.
    VIII. At an unknown date, early in the year 1918, there was developed another form of spiral, by whom is not shown, hereinafter designated type F, and as shown in Figure III of the appendix to these findings, No. 1. Said type was known as “ International Company style of spiral.” The weighted end was made from a piece of sheet metal separate from the thinner flexible portion or tape and differed from type E in the following respects. The end of the tape connected with the weight was wider than the other flexible tape portion of the spiral, and had its marginal parts folded over upon a fold in the weight, and said weight had parts which were again folded over upon the marginal part of the tape, thus interlocking weight and tape and preventing separation during the handling and use of the fuse. The weight was originally a flat blank which was bent into a trough. Each of its sides was bent inwardly or grooved and the wide end of the flexible strip was bent likewise into a trough so as to embrace the base of the weight and enter its grooved sides.
    IX. Type F of spiral was manufactured by La Pierre Manufacturing Co. and the International Steel & Ordnance Co., beginning early in April, 1918, and delivered to and accepted by Government contractors, precise dates unknown. The number manufactured, delivered, and accepted is not satisfactorily shown by the evidence.
    X. On April 24, 1918, the plaintiff applied to the Commissioner of Patents for a patent on certain new and useful improvements in methods of connecting two pieces of metal or like material. Letters patent were granted January 18, 1921, the number of claims allowed being nine. A certified copy of the file wrapper and contents, Patent No. 1866148, is filed in this case as defendant’s Exhibit J and is by reference thereto made a part of these findings. The specifications of the patent with the accompanying drawings are annexed hereto as Appendix No. 2.
    XI. The plaintiff made no direct tender of any invention covered by Letters Patent No. 1366148 to any official ■of the Government for its use, and the only communication in evidence from the plaintiff or his company to the defendant bearing on the production of spirals was a letter dated September 4, 1918, signed by William A. Zeidler Co., by William A. Zeidler, president, to the production section, gun division, office of the Chief of Ordnance, file MG •471.82/2712. Said letter was to the effect that some of plaintiff’s company’s competitors were copying its tapes, invented by the plaintiff, were making a two-piece tape -suggested by plaintiff’s tape, that a rumor was being spread that plaintiff’s tape was not being accepted by the Government, desired to be advised if there was any truth in this rumor, and stated that the plaintiff’s company was the first to produce this tape. The evidence discloses no reply to this communication. A certified copy of the said letter is included in defendant’s Exhibit M and is made a part of this finding by reference thereto.
    XII. The William A. Ziedler Company received its full ■agreed price for all the spirals manufactured and sold by it, and said price yielded more than a fair manufacturer’s profit.
    XIII. The number and kind of spirals involved in this ■suit ultimately received and used by the Government and the date of the use of the alleged inventions by the Government are not proved.
    XTV. All the spirals involved in this suit delivered to the United States were manufactured and delivered prior to January 18, 1921.
    The court decided that plaintiff was not entitled to recover.
   Booth, Judge,

delivered the opinion of the court:

This is a suit to recover royalties for an alleged infringement of plaintiff’s Patent No. 1366148. The same plaintiff in suit 52-A, this day decided, preferred a claim for compensation for the use of his Patent No. 1868981 under contract, and in that 'case asserted liability for' the use of the device covered by Letters Patent No. 1366148 on the grounds that the same came within claims 1 and 2 of Letters Patent No. 1368981. In disposing of case 52-A we necessarily disposed of this issue, and it carries with it the disposition of the contention advanced in the instant case.

The plaintiff, as to the patent involved in this case — i. e., No. 1366148 — commenced the manufacture of spirals for the Zeidler Company in accord with this conception some time in the spring of 1918. The company previously made and delivered over 1,000,000 spirals of plaintiff’s first design subsequently covered by Patent 1368981.

Plaintiff found the manufacture of spirals according to his second design to be less in cost than any design he had theretofore used, and under at least five separate contracts made with the Zeidler Company for spirals the said company manufactured, delivered, and received pay for close to. 6,000,000 spirals about three years before plaintiff received his Letters Patent No. 1366148. That the plaintiff licensed the Zeidler Company to manufacture and sell both types of spirals designed by him personally is too clear for serious, contradiction. It was he, the patentee in this suit, who personally conducted all the business transactions of the Zeidler Company, personally solicited the substitution of his types of spiral for the French type adopted by the Government, and apparently never conceived the idea of protecting his conceptions under the patent laws until long after a vast number, running into the millions, made in accord with his two types had been furnished, used, and paid for.

In this very case the plaintiff filed his application for Patent No. 1366148 April 24, 1918. The application was. allowed September 28, 1918, and the plaintiff voluntarily suffered a forfeiture of the same by a failure to pay the final fee. It was not until April 18, 1919, after the war was over, and millions of his spirals had been sold by the Zeidler Company under his personal supervision and direction, that, he renewed his application for patent, which, after amendments, was allowed on July 21, 1920, and letters patent issued January 18,1921. Why the plaintiff did not vigorously present his application while the spirals were being manufactured is left to conjecture. The Government, which he now sues, was obviously without knowledge of a patent until at least two years after all but an insignificant number of spirals had been used. So were Government contractors equally in the dark as to any patent claims of the plaintiff. The proposition now advanced by the plaintiff is somewhat astounding. We are unable to comprehend by what process of reasoning a patentee who is himself a manufacturer of his patent device may make and vend without restriction millions of the same, reap the major portion of the profits from such sales, and then assert a claim to an additional sum of vast proportions upon the theory of an infringement of the very thing he not only unqualifiedly licensed another to make, but personally managed and conducted the manufacture thereof himself. We will not repeat what was said as to the validity of Patent No. 1368981 in case 52-A. It applies with equal force to Patent No. 1366148.. However, it is not necessary to so hold herein. In this case the pat-entee seeks to claim a patent for “ improved methods for securely connecting together two pieces of metal or the like . material without welding or riveting or other devices or expedients, and to articles made in accordance with such process.” Thus it will be seen the patent claims both a process and article monopoly. As to the process claims they are admittedly eliminated because the articles were made previous to the issuance of the patent, thereby limiting the case to articles used.

The plaintiff’s second type of spiral, identified in the record as type “ E,” comes within the claims of his patent No. 1366148. As to all those made previous to the grant of letters patent the case fails for the reasons stated. The only remaining claim pertains to a type of spiral known as type “ F,” a spiral developed and manufactured by the International Steel and Ordnance Company in the spring of 1918 about the same time the plaintiff conceived his folding process. This same type “ F ” was later manufactured by the La Pierre Manufacturing Company, this company making 1,363,450 spirals in accord with the same. The prior art which we have cited in the findings — granting the validity of the plaintiff’s claim — narrows the patent in suit, and limits it to the specific thing claimed. Claims 8 and 9 of Patent 1366148, the only claims upon which infringement is predicated, do not substantially enlarge the basic idea of the inventor so as to embrace an article made by a folding process which produces a result dissimilar to the real conception of the inventor. The predominating idea of the plaintiff, the idea he conceived, and the thing he saw, if it 'is invention at all, was a method of safely connecting two pieces of metal together without rivets or other extraneous expedients. Connecting safely two pieces of metal without rivets, etc., was old in the art. The suggestion to try his hand in the matter came from his. experience as a manufacturer of spirals, and what he was really intending to accomplish was to design the weighted end of a spiral so as to cheapen production and increase output. The plaintiff didn’t know what a spiral was until he saw the French specifications of how to make one. What he set out to do was to vary the detail of manufacture specified for the making of French spirals, and after designing one departure he found from experience a two-piece spiral tape could be successfully manufactured. All this was accomplished not upon the plaintiff’s initiative, but as the result of knowledge brought to him by manufacturers and designers of a prior day. Methods, process, and spirals antedated him to such an extent that all that was left was a specific method and identical article, and this at the most is all he may claim.

The spiral, Exhibit “ F,” made by the International Company is not the spiral covered by Letters Patent No. 1366148. A precise difference is clearly apparent from an illustration in defendant’s brief. It visualizes the situation with greater clearness than words may do, and so we reproduce it here.

We can not escape the conclusion that plaintiff’s ideas and conceptions were not inventions. In so far as spirals are involved, it seems to us manifest. In this case the spirals which the Zeidler Company made, which conformed to his alleged Patent No. 1366148, operated in exact conformity with the functioning elements of the French type. The plaintiff evolved no new article except in design. He gave to the art no device which contained a single novel feature which in the remotest degree improved it as a dependable -safety spiral. In no respect did he modify the predominating idea which characterized the French spiral or bring into

¡being an article which served any other purpose than econ-omy in production. A mere change in detail of manufacture, one which would readily suggest itself to any one .-skilled in the art, a mere exercise of mechanical skill or shop practice, is not invention. So that, in any event, we believe that, taken in connection with what we have said in case 52-A, this case is also without merit, and the petition must be dismissed. It is so ordered.

Graham:, Judge; Hat, Judge; DowNex, Judge; and Campbell, Chief Justice, concur.  