CITE:  259 F. 258
CMON:  Jan. 1919
PLAIN: Dunn Wire-Cut Lug Brick
DEFND: Toronto Fire Clay
COURT: Circuit Court of Appeals, 6th Circuit
DATE:  January 7, 1919


Appeal from the District Court of the United States for the Eastern Division
of the Southern District of Ohio; John E. Sater, Judge. 


  The inventor or a new and useful product or article of manufacture may
  have a patent covering it and giving a monopoly upon it, regardless of
  great variations in the method of making.

JUDGE: DENISON, Circuit Judge
Before WARRINGTON, KNAPPEN, and DENISON, Circuit Judges. 


The company which had purchased the patent appeals from the decree
dismissing its infringement bill brought against the Toronto Company
and Nicholson, and based upon patent No. 918,980, issued April 20, 1909,
to Dunn, for paving brick. The trial court overruled the defense of
invalidity, but held that there was no infringement, and both of these
subjects must be determined. 

Brick were originally made by molding or pressing in individual dies or forms.
The product was a molded brick or a pressed brick. It was found to be cheaper
to squeeze the plastic clay through a die shaped like a cross-section of the
finished brick and producing a continuous blank from which pieces could be cut
or sliced off to from separate bricks. Because it came to be the more common
practice to slice off these bricks from the blank by using a moving wire as
the cutting edge (either one wire at a time or several in a gang), bricks of
this class came to have the name "wire-cut bricks".  Whether the cutting
was done by wire or a knife or a saw was not important, because these methods
are, in any broad sense, obviously equivalent. A cutting wire works like the
cutting edge of a knife, and the cutting edge of a knife, is, for this
purpose, a wire; hence all such brick whether sliced by wire or knife or
saw, are, in the trade, universally called "wire-cut brick." 

For paving, it is desirable that the brick should not fit close together, but
should be spaced slightly apart, in order that waterproofing and adhesive
material may fill the interstices and make a perfect bond. Accordingly, they
were made with buttons, ribs, or slight projections of other forms upon one or
both of the vertical faces of the two adjacent bricks. These were formed by
suitable depressions in the dies in which the pressing was done; and, up to
Dunn's time, all paving brick with lugs or ribs had been repressed brick. Dunn
observed, and seems to have been the first fully to understand, that, for the
purpose of paving, the brick were injured by this repressing. The surface was
too smooth, the corners were not sharp enough, and the texture or lamination
was distorted; but the ordinary wire-cut brick were unsuitable for this
purpose, because they had no spacing ribs. It seems fairly to be inferred
that, if the idea of putting ribs on wire-cut brick had occurred to any one,
it had been rejected because of the difficulties or expense involved. In
ordinary hand operation, to get this result would necessarily be slow, and
operating upon such material would be likely to break away parts of the brick
or ribs and produce defective brick. 

In this situation, it occurred to Dunn that, by the same operation by
which he cut off the brick from the blank by sweeping the cutting wire across
its face, he could leave ribs along the face, and he could accomplish this
result by making the cutting edge irregular, instead of straight. In the form
in which he developed his idea, he carried the wire on each side of his blank
of clay in a slot which was straight most of the way, but included two
semicircular offsets. The result was a brick, plane upon each side, excepting
where crossed by two projecting ribs. He first applied for a patent upon the
machine accomplishing these results, but, while that application was pending,
filed also an application for a patent upon the product of his machine.
This is the patent in suit. The patent upon the machine was not issued until
September 7, 1909. The first claim of the patent in suit is: 

    "As an article of manufacture, a wire-cut brick having wire-cut ribs
    on the side thereof, substantially as set forth." 

Dunn's product has been very largely accepted as a better paving brick than
before existed. Although the brick of this type which have gone on the market
and had this large and wide sale are the product of his patented machine,
which has been manufactured by him and sold to brickmakers, yet such credit
and such presumption of inventive novelty as arise from public use should be
given to the product, and not to the machine. There would be no use for the
machine, unless the product were desired. We therefore give some weight to
this wide public use as bearing on the patent's validity. 

We think Dunn's concept had inventive character as distinguished from mere
skill. The fact that this very simple product, which proved to be so useful,
never had been developed during all the progress of the art, goes far to give
it character. Repressing, with its cost and disadvantages, was avoided
and a better brick was produced by simple means. We agree with the District
Judge in saying: 

    "His brick is new and useful, and involved invention in no mean degree,
    and entitles him to the breadth of equivalency pertaining to an
    invention of that character" 
and agree also with his summary quoted in the margin. {1}

Without regard to whether a patent upon a product may be wholly independent
of any thought of the means by which it is produced, there can, in this
case, be no such independence. Some degree of reference to the method of the
production is carried into the claim by the words "wire-cut ribs." Where a
process or a machine will produce only a specific product, and where a given
product can be produced only by the specific process or machine (if there are
such cases; see Macbeth Co. v. General Co. [C.C.A. 6], 246 Fed. 695, 698, 158
C.C.A. 651), it is difficult to see much lack of identity between the invented
process or machine and the invented product, and such situations have given
rise to some rather casual and seemingly obiter statements that process and
product or machine and product constitute only one invention (e.g., Downes v.
Teter-Heany [C.C.A. 3] 150 Fed. 122, 80 C.C.A. 76). It is thought that every
such case will be found to depend upon this -- actual or supposed -- necessary
identity of the means and the result. {2}

Certain it is, in view of the weight of authority and the latest decisions,
that the inventor of a new and useful product or article of manufacture may
have a patent which covers it and gives a monopoly upon it regardless of great
variations in the method of making ( Powder Co. v. Powder Wks., 98 U.S. 126,
136, 137, 25 L. Ed. 77; Leeds Co. v. Victor Co., 213 U.S. 301, 318, 29 Sup.
Ct. 495, 53 L. Ed. 805; Durand v. Schulze [C.C.A. 3] 61 Fed. 819, 821, 10
C.C.A. 97; Maurer v. Dickerson [C.C.A. 3] 113 Fed. 870, 874, 51 C.C.A. 494;
Lamb v. Lamb [C.C.A. 6] 120 Fed. 267, 269, 56 C.C.A. 547; Sanitas Co. v. Voigt
[C.C.A. 6] 139 Fed. 551, 552, 553, 71 C.C.A. 535; Acme Co. v. Commercial Co.
[C.C.A. 6] 192 Fed. 321, 325, 326, 112 C.C.A. 573), and that in the ordinary
and typical case, the method and the product are separable inventions,
supporting separate patents, one of which may be valid and the other not
(Rubber Co. v. Good-year, 76 U.S. [9 Wall.] 788, 19 L. Ed. 566). It is
therefore the duty of the court to find, if it reasonably can, for a product
patent some construction and scope which shall avoid, on the one hand,
destroying its value -- if not its validity -- by confining it to the
precise method of making which the patent has happened to show, and avoid, on
the other hand, a construction so broad as to make it invalid because for an
old product. As illustrated by the present case, if Dunn is confined to
wire-cut brick with wire-cut lugs produced precisely as shown by him,
the patent is commercially worthless because easily avoided; while, if
it is construed to cover a wire-cut brick which, before burning, has had
irregularities produced upon its face by any cutting or carving means
whatever, it would be void because of common practice relating to all kinds
of tile, brick and pottery. 

The theory that this patent extends only to the output of the method shown in
the machine patent is inconsistent with the action of the Patent Office. Dunn
first claimed "a wire-cut brick having wire-cut ribs on one side thereof
formed complete during the operation of cutting the brick." This was rejected
as "claiming the article by the method of making it." The Patent Office
recognized and applied the rule above stated.Dunn then substituted the claim
allowed and issued. 

The true scope of the claim can best be developed by tracing it from the
form shown in the drawing to the form used by defendant. It is, doubtless,
more economical to have the same stroke of the wire or cutter sever the brick
from the blank and produce the ribs; but the claim cannot be so restricted
without destorying the differentiation between the patent for the machine and
the patent for the product. We think it clear that the patented product would
be produced just the same if Dunn took a brick which had already been severed
from the blank on both sides by some other wire-cutting machine, and passed
that brick through his machine, using his wire-cutter to completely reshape
one entire side of that brick. The brick would be wire-cut, and the ribs would
be wire-cut, although one face of the brick would have been treated twice
instead of once. This would not be an unnatural treatment, if it was desired
to have the ribs upon any face excepting the one produced by the cutting wire.
When we admit the equivalency between the cutting knife and the cutting wire,
we see that this supposititious treatment is that which defendant Nicholson
has adopted (and the Toronto Company uses). He first cuts his blank into
separate brick by the usual wire-cutting process, then passes his severed
brick along a feed table and over a cutter which he calls a knife, the form
of which is shown by 29, 30 in the following figures 3 and 6 taken from
the patent issued to him, No. 1,148,529 of August 3, 1915. This cutter or
knife is the perfect equivalent for this purpose of a wire bent into the
same form. 

[The two illustrations appear in the left hand side of the page.]

Defendant suggests no difference in operation excepting that he thinks such
sharp corners could not be put on the ribs of a wire cutter; and this is
immaterial. We must infer that this knife wholly reshapes that surface of the
brick and transforms a plane surface into a surface with ribs. It seems
improbable that the blank of plastic material can travel forward over this
knife, with the uncut portions or ribs depending into the depressions 30 of
the cutter and with the necessary resulting distortion of the material,
without filling these depressions and causing the entire ribs to be
formed and shaped by the knife. If possibly this does not completely occur,
yet it is certain that the sides of the ribs are thus formed and shaped, and
that, at the most, only their extreme tops -- a very small fraction of their
whole surface -- escapes this knife or wire-cutting origin, and these
rib tops have already been "wire-cut." We are convinced that, in the true
sense of the patent, in the sense necessary for its right construction, the
ribs on defendants' brick are "wire-cut"; the extent to which they may fail to
be so formed is comparatively negligible. Thus we see that the patent grant
may fairly be construed to cover, a method of production slightly variant
from, but practically equivalent to, that described in the patent, and yet
that its monopoly will leave untouched wire-cut brick with ribs produced by
hand carving or by cutting out mere channels or by any method which is not, in
substantial effect, the simultaneous creation of the plane surface and the
ribs thereon by a cutting edge which sweeps through the body of the clay. Just
where the dividing line might be between that which thus infringes and that
which would not, is not involved, and perhaps the question will never arise. 

The defendants' product is the result of a two-step wire-cutting process;
plaintiff's patent describes a one-step process for making his product; and
it is said that for this reason infringement is avoided. We cannot find,
either in the specification or claim or in the Patent Office action or in the
history of the art, any reason for limiting the patent in accordance with this
theory. We are convinced that to do so would not only be to disregard the
basis of the existence of product patents as a class by themselves, but also
would be to reissue this patent with the very claim which was rejected by the
Patent Office and discarded by the applicant. The cases cited in support of
restricting the patent to the one-step process are Plummer v. Sargent, 120
U.S. 442, 448, 449, 7 Sup. Ct. 640, 642 (30 L. Ed. 737); Royer v. Coupe, 146
U.S. 524, 530, 531, 13 Sup. Ct. 166, 168, 169 (36 L. Ed. 1073); U.S. Glass Co.
v. Atlas Glass Co. [C.C.A. 3] 90 Fed. 724, 33 C.C.A. 254. 

In our judgment, these cases do not support the argument. In the Plummer
Case, the patent was for a process of lacquering or japanning, consisting,
according to the claim, of "the application of oil and heat, substantially
as described".  In order to sustain this patent against the defense of
anticipation, it was necessary to limit the process rather closely to the
succession of particular steps described in the specification, and it
was held that, when the patent was so limited, defendant's process was not
equivalent. In the Royer Case there was also a patent for a process which was
claimed as a "treatment of the prepared rawhide in the manner and for the
purposes set forth." It was held that the process, in its broadest aspect, was
old; that "the only subject-matter of invention which the plaintiff could
properly claim was the whole process described in his patent, comprising the
different steps therein set forth"; and that, "in that view, it must be shown
that the defendant used all the different steps of that process, or there
could be no infringement." Obviously, if the patentee's finished hide had 
been identified by some physical characteristics, and he had claimed an
article of manufacture thus identified, there would have been a different
question. In the Glass Co. Case it appeared that the process patented was
confined by the claim to a succession of specific steps, and that the
defendant omitted two of these steps. The conclusion was inevitable that
"identity of method cannot exist." 

It is also suggested that the device of the patent in suit, if it had been
later than the patent issued to Nicholson, would not have infringed
that patent, and, hence, that defendants' device does not infringe plaintiff's
patent. Electric Co. v. Pittsburgh Co., 125 Fed. 926, 60 C.C.A. 636, is cited
to support this transposition and modification of the familiar rule -- "that
which, if later, would infringe, will anticipate, if earlier." The case seems
hardly to support the citation; the language used by Judge Coxe (125 Fed. 930,
60 C.C.A. 636) is only a method of saying that the two things were wholly
foreign to each other. If we could lay out of view the fact that plaintiff's
patent is for a product and Nicholson's later patent is for a machine, it
would still be true that anticipation depends upon the nature and extent of
the earlier disclosure while infringement depends upon the character of the
grant as fixed by the claim. The later patent is necessarily relatively
specific as compared to an earlier invention; and a finding whether the
earlier device, if later, would have infringed the later patent, is not
helpful in determining whether the device of the later patent infringes the
earlier one. The two questions have no necessary relation to each other.
We have had occasion to point out that in this situation equivalency is
not mutual. General Co. v. Electric Co., 243 Fed. 188, 193, 1007, 156 C.C.A.
54, 664; Curry v. Union Co., 230 Fed. 422, 429, 144 C.C.A. 564. 

Nor does the fact that Nicholson uses his hands, in transferring his brick
from the first wire-cutting device to the second, control the question of
infringement. It is true that in Brown v. Davis, 116 U.S. 237, 249, 6 Sup. Ct.
379, 29 L. Ed. 659, the use of the human hand is relied upon as demonstrating
noninfringement; but in that case one of the elements of the claim sued upon
was a peculiar lever, and defendant dispensed with the lever and used his
hand. This was the common case of omission of one of the elements of the

There should be the usual injunction and accounting as to defendant's brick
produced in the manner which we have described, and to permit the entry of
such decree below, the existing decree should be set aside. 

                              ON MOTION TO REOPEN. 

PER CURIAM. By opinion filed January 7, 1919, we sustained the patent in suit
and directed the usual interlocutory decree. The defendants now present three
German patents which are said to anticipate, and ask leave to apply to the
court below to reopen the case and put these into the record. The showing to
excuse the failure to find that evidence in due time is not satisfactory. It
is not clear that, in the search made in preparation for the answer, any
effort was made to examine foreign patents. A generally similar showing
could be made in every case where there is a later discovery, and, if none
but the parties were concerned, we should hesitate to grant the motion.
Westinghouse Co. v. Stanley Co. (C.C.A. 1) 138 Fed. 823, 71 C.C.A. 189;
Kissinger Co. v. Bradford Co. (C.C.A. 6) 123 Fed. 91, 59 C.C.A. 221; Novelty
Co. v. Buser (C.C.A. 6) 158 Fed. 83, 85 C.C.A. 413, 14 Ann. Cas. 192. 

However, others than the parties are interested. At least one of the German
patents is superficially pertinent enough so that the validity of the patent
in suit would be likely to be litigated over again by the next alleged
infringer, both in the trial and appellate courts. In the meantime, the
public would be uncertain whether the industry was or was not subject to this
burden. In the interest of the public concerned with the patent, and in the
interest of the courts, we think the proposed evidence should be brought into
this record (Firestone Co. v. Seiberling [C.C.A. 6] 245 Fed. 937, 158 C.C.A.
225); but the plaintiff ought not to suffer damage from what is not its fault.
It will be put to the additional expense of another trial in the District
Court and perhaps another appeal, and a great part of this will be duplication
which could have been avoided if the original defense had been more thorough.
As a condition of allowing the belated defense to be now made, the defendants
should meet this additional expense. The amount thereof is affected by so many
uncertainties that it must be somewhat arbitrarily fixed. We apparently have
the same opportunity as the trial court would have to make a reasonable
estimate. We think $300 is certainly not too much to make the plaintiff good
against the greater expense and delay which will result if the case is
reopened and reheard upon the modified record, than there would have
been if the entire defense had been originally presented. 

The order will be that the District Court have leave to reopen the case and
admit the proposed evidence and such further proofs as may be offered by
either party in relation thereto and thereupon again determine the issue in
the case upon the record as thus supplemented -- all upon condition that the
defendant pay to plaintiff, within such time as the court below may fix, the
sum of three hundred dollars. 


{1}  Dunn conceived and produced a wire-cut brick with wholly wire-cut lugs,
thereby dispensing entirely with the repressing process and with the
expenditure necessary to effect the same. The development of his concept
involved much study and experimentation. He was hampered not merely by want
of funds, but by the distrust, discouraging conduct, and opposition of
brickmakers and engineers. However, by persistent energy and determination
he overcame the obstacles encountered and eventually won recognition by
practically demonstrating the commercially successful character of his brick
and the mode of its production. The roughness of the sides of the brick,
which at first provoked opposition, was found in actual experience to be
advantageous, as the filler was thereby enabled more firmly to set and more
securely to hold than is possible with the smoother surfaced brick.  The
demand for his brick, following the test of actual service, was such that
the output rose from 2,233,000 in 1910, to 138,000,000 in 1915. In the same
period he granted 33 licenses to manufacturers.

{2}  We find no authoritative decision lending more color of support to the
idea that a patent for a product is to be confined to the result of the
described process, than may be derived from some of the language in Goodyear
Co. v. Davis, 102 U.S. 222, 224 (26 L. Ed. 149). It was there said: "The
invention is a product or manufacture made in a defined manner. It is not
a product alone, separated from the process by which it is created." This
conclusion was the result of an exhaustive study of the facts of the
particular case, and was intended to refer to those facts. The claim was
for "the plate of hard rubber or vulcanite, or its equivalent".  The
defendant did not use hard rubber or vulcanite, and the question was
whether celluloid, an article unknown when the patent issued, was an
equivalent. The case does not hold that if the defendant had employed a
hard rubber plate he could have escaped because he manufactured this hard
rubber by a process different from that described by Cummings. Nothing
which was not made by the process of vulcanization could be the equivalent
of the "hard rubber or vulcanite" of the claim. The process of
vulcanization was imported into the claim by its very terms.