CERTIORARI TO THE CIRCUIT COURT OF APPEALS FOR THE THIRD CIRCUIT.
MR. JUSTICE DAY delivered the opinion of the court.
These cases involve opposing decisions as to the validity of letters patent of the United States No. 527,242, dated October
, 1894, granted to John F. Golding for an alleged improvement in the method of making expanded sheet metal. In case No. 66, here on writ of certiorari to the Circuit Court of Appeals for the Third Circuit, a decree of the Circuit Court of the United States for the Eastern District of Pennsylvania, sustaining the patent, was reversed, and the patent held invalid. The opinion of the Circuit Judge sustaining the patent is found in 136 Fed. Rep. 870. The case in the Court of Appeals is found in 146 Fed. Rep. 984. After the decree in the Circuit Court of Appeals for the Third Circuit, the Expanded Metal Company having filed a bill against the General Fireproofing Company in the Circuit Court of the United States for the Northern District of Ohio, the case was heard and the patent held invalid on the authority of the case in the Circuit Court of Appeals for the Third Circuit. 157 Fed. Rep. 564. The Circuit Court of Appeals for the Sixth Circuit reversed the United States Circuit Court for the Northern District of Ohio, and held Goldings's patent valid and infringed. 164 Fed. Rep. 849. These writs of certiorari bring these conflicting decisions of the Courts of Appeal here for review.
The patent in controversy relates to what is known as expanded sheet metal. Expanded metal may be generally described as metal openwork, held together by uncut portions of the metal, and constructed by making cuts or slashes in metal and then opening them so as to form a series of meshes or latticework. In its simplest form sheet metal may be expanded by making a series of cuts or slits in the metal in such relation to each other as to break joints, so that the metal, when opened or stretched, will present an open mesh appearance. It may be likened to the familiar woven wire openwork construction, except that the metal is held together by uncut portions thereof, uniting the strands, and the whole forms a solid piece.
In the earlier patents different methods are shown for cutting the metal, which cuts were afterwards opened by a separate operation of pulling or stretching. These crude methods
are shown in the earlier American and English patents which appear in the record. While nothing more than such methods was accomplished in the art there was little general or commercial use for expanded metal.
It was apparent that if a method could be devised by which the metal could be simultaneously cut and expanded, such method would be a distinct advance in the art, and this record discloses that the desirable result of simultaneously performing these operations was accomplished in the Golding and Durkee patent No. 320,242. In that patent the operation was performed by means of knives arranged in a step order, the sheet to be fed obliquely. The inventors describe the Golding and Durkee method as follows:
"The process consists in the employment of a flat piece of metal of any desired size, and beginning at one side and corner and making an incision within the side of the metal, thus forming a strand which is simultaneously pressed away from the plane of the metal in a direction at or near a right angle, the position the strand assumes depending upon the distance it is moved from the plane of the metal. a in the drawing shows the first cut made. The next step in this process is to make additional incisions, as is shown at c, b, and d, further within the plate of metal, and leaving uncut sections at the ends of the cuts, and simultaneously with the cutting the strands are pressed away from the plane of the metal at the angle and to the desired position, as above described. Thus each row of meshes is simultaneously cut and formed from a blank piece of metal without buckling or crimping the blank. In the act of cutting and forming the meshes, the finished article is contracted in a line with the cuts or incisions, and consequently it is shorter in this direction than the piece from which it was cut, but it is greatly lengthened in a line at an angle to the plane of the original sheet, plate or blank."
The result was to produce expanded metal, as shown in this figure:
With this patent as the advanced state of the art, Golding set about making further improvements and the result was the patent in suit. The specifications of the patent in suit state:
"In the manufacture of what is now generally known as expanded sheet metal, it has been customary to first cut the slits in the sheet metal at short distances apart, and to open the metal at the cuts thus formed by bending the severed portions or strands in a direction at right angles substantially to the plane of the sheet. It has also been made by simultaneously cutting and opening the metal by means of cutters set off or stepped relatively so as to make the slashes or cuts in different lines in the manner set forth in patents No. 381,230 or No. 381,231, of April 17, 1888. In both of these methods the product is somewhat shorter and materially wider than the original sheet, but practically no stretching or elongation of the metal forming the strands is caused.
"In my present invention I seek to avail myself of the ability of the metal to stretch or distend as well as of its ability to bend under strain or pressure, and the invention consists in the improved method of making expanded metal, viz., by simultaneously cutting and opening or expanding the metal at the cuts by stretching the severed portions."
In the method further described in the specifications the expanded metal is shown to be made by the use of knives making a series of slits in a straight line at equal distances apart across the sheet and at the same time carrying downward the severed portions of the metal. And this operation is performed by bending the severed portion at a time when its ends are securely attached to the main sheet, thereby expanding the sheet without materially shortening it. The sheet is then fed forward, and the slitting and stretching operation is repeated in such a manner that the slits are in every case made back of the portion unsevered by the preceding operation, or, in other words, as the specification states, the slits and unsevered portions alternate in position in each successive operation, the bends given to the severed portions or strands being in direction at right angles to the plane of the sheet, there is no contraction in the length of the metal, and the expansion is obtained by the stretching, distension, or elongation of the severed strand. This patent contains the single claim, which is as follows:
"The herein described method of making open or reticulated metal work, which consists in simultaneously slitting and bending portions of a plate or sheet of metal in such manner as to stretch or elongate the bars connecting the slit portions and body of the sheet or plate, and then similarly slitting and bending in places alternate to the first-mentioned portions, thus producing the finished expanded sheet metal of the same length as that of the original sheet or plate, substantially as described."
It is thus apparent that the method covered by the claim of the patent is accomplished by the two operations indicated and performed in the manner pointed out in the specifications. The first operation of cutting, bending and stretching the strands ...