On Rehearing.
On January 26, 1926, my original opinion herein was filed. On March' 31, 1926, defendants filed a petition for rehearing, which was heard-upon elaborate affidavits and exhibits and was duly granted. It' did not appear that the new evidence might not have been discovered prior to the original hearing by the exercise of a reasonable degree of diligence. In patent litigation, however, the public right is always involved, and ought not to be sacrificed by too strict an application of the rules of diligence applicable in a litigation purely private. It was deemed by me in the public interest that all substantial evidence tending to show invalidity should be brought upon the record and considered, as by this method, the litigation over this patent may be brought to a speedier end. Hence, not only was the rehearing granted, but leave was given to amend the answers on file.
The record upon the original hearing was voluminous, but its volume has now been more than tripled. The new defenses are, first, that the invention of the patent in suit was on sale and in public use more than two years prior to the filing of the patent application ; and, second, that invention is lacking in view of the prior art now disclosed by various patents, viz. four patents issued to J. J. Dube, under which has been made and sold the Kewanee garbage crematory; two patents issued to O. M. Shannon, under which has been made and sold a garbage crematory known as the Ineinerite; and four patents issued to J. J. Prescott, under which has been made and sold another garbage crematory, known as the “Pyrofuse.” Certain additional prior art has been brought forward, but all of the new evidence and argument, which is substantial, revolves around these defenses.
*603Kemer’s application for the patent in suit was filed April 15, 1912. The critical date, therefore, is April 15, 1910. Kemer’s first installation of an incinerator was in a six-suite apartment building of John W. Owen, in Racine, Wis. This installation is described in Defendants’ Exhibit D, introduced on the original hearing^ being the first advertising catalogue published and distributed when Kemer began to market his incinerator. It was made in the early part of the year 1909. It follows closely the construction illustrated in Pig. 1 of the patent. The chief, if not the only, differences are in the depth and pitch of the grate. It has remained in the Owen apartment, and has been used continuously ever since, although it appears that at some time the pipe n, leading from the furnace into the crematory chamber at a point below the grate, has been removed, and that at some time a gas burner was installed beneath the grate, approximately at the position designated by the letter p. These changes were made by Owen or his janitor, without the direction of Kemer.
Plaintiff’s commercial form follows closely the constmetion illustrated by Pig. 3 and is of a later date. It was designed within a period not greater than six weeks prior to the filing of his application, and was first installed as an improvement to an incinerator previously built in his four-suite apartment on -Biddle street, Milwaukee. The chief changes in this last installation consist in the vertical grate, with a specific by-pass for air or products of combustion from below the garbage receptacle, around the garbage, and beneath the overhanging wall, and out the flue or chimney. The capacity of the garbage receptacle, and the proportions of receptacle, chamber, and smoke flue, differ from those adopted in the Owen installation, and are substantially the same as are now found in plaintiff’s commercial incinerator.
The question to be decided is whether this Owen installation was a sale or public use by another than the inventor, or was a permissible experimental use. The question is a mixed one of fact and law. The facts are not really in dispute. The differences of opinion result from the varying inferences which may be drawn from what admittedly was done. It will be sufficient to state these facts, without reviewing the evidence.
In 1908 John W. Owen had acquired an existing residence building in Racine, which he desired to convert into a six-suite apartment house. To bring about this result, it was necessary to undertake a considerable work of reconstruction. As he and Kerner were well acquainted, he sought the services of the latter as an architect and engineer to assist in cheeking or preparing plans and in superintending the construction work. Kerner had since 1905 been giving consideration to the subject of garbage disposal from residences and apartments, and had in fact installed in his Pasadena apartment in Milwaukee, four flues down which garbage might be fed from apartments on different floors to an enlarged chamber at the ground level. These flues served no other purpose than carriers for the garbage. No provision was made for cremating the garbage thus accumulated, but the same was removed by city garbage collectors. He represented to Owen that the latter’s building was admirably suited for the installation and tryout of a garbage incinerator such as he had in mind. Owen readily consented that the installation might be made, and it was made and installed in the early part of the year 1909.
The central chimney or flue, such as is illustrated in Pig. 1, was constructed for this purpose under Kemer’s supervision and in accordance with his plans. The eastings for the grates were made and procured in accordance with his designs. The labor and material cost of constructing the chimney flue, with its enlarged chamber at its lower end. and of procuring and installing grates, including their several doors and the self-closing chute doors in each apartment, was paid by Owen. Nothing was paid or agreed to be paid to Kemer for his invention, either as a lump sum or by way of royalty. Kemer was paid in 1908 the sum of $40, and in April, 1909, an additional sum of $83,90, for his services. The evidence is clear that these sums were paid only for his services as engineer and supervising architect, and for no other purpose.
Undoubtedly title to the incinerator thus constructed, passed to and remained with Owen as the owner of the building. There is some disagreement in the evidence as to the extent of the subsequent supervision or observation of Kemer over its operation. It adequately appears, however, both from the documentary as well as the oral evidence, that Kemer was frequently in Racine, where he then owned property; that he called at the Owen apartment, examined the incinerator and talked with the janitor and others relative to its operation; and that he made from time to time suggestions as to how troubles might be corrected. Owen testifies that the installation was from the first successful and satisfactory. He became convinced later that *604the furnace draft pipe, leading into the crematory chamber below the garbage grate, was useless, and had it removed. The only other difficulty came from choking, due to the angle at which the inclined part of the grate was disposed against the chamber wall. This angle was only 45 degrees, being substantially the angle of repose for garbage, and in consequence the garbage was not completely incinerated, but was sometimes left partly burned on the inclined grate, and had to be raked down or otherwise manipulated. In Kernels next installation in the Biddle street apartment, made during the summer of 1910, he made the garbage receptacle deeper and narrower, and increased the angle of the inclined part of the grate to 66 degrees. The angle finally adopted, as" shown in Fig. 1, is approximately 55 degrees. Eventually, as has been said, Kemer determined upon the vertical grate, with a by-pass as shown in Fig. 3, which is now the one commercially used.
Upon due consideration of the law and the evidence, I am of opinion that the Owen installation and use was not a public use, or a putting on sale, within the rules of law on that subject, but was only a permissible experimentation. Plaintiff contends that its success or failure could not be determined by a single test, ór a brief period of observation, but that the incinerator had to be tried out under varying conditions, requiring a period of not less than a year. In my opinion, these contentions are well founded. The incinerator was designed to serve six separate apartments. How it would perform in taking care of one or a few apartments was not eon-elusive as to how it would perform if required to take care of the waste and garbage from six apartments. Furthermore, the character of the garbage varies with the season of the year. In summer months there is less combustible material fed down the chutes than during the winter months. In the summer months there is a large proportion of heavy, noncombustible, vegetable matter; whereas during the winter months there is a larger proportion of paper, waste, and combustible material. The situation is not one in which success or failure could be determined merely by filling the garbage receptacle and starting a fire.
'It appears that the first tenant moved into the Owen building in June, 1909. The next ■ two ténants moved in during September and October. The evidence is dear that it was not until December, 1909, that all of the apartments were filled. In the meantime and thereafter, as late as 1910 and 1911, Kemer was still engaged in observing the operations of the Owen installation; and making changes for his new installation at the Biddle street apartment, and in modifying that installation. The evidence is convincing that, no matter how much Kemer may have been afflicted with the usual optimism of inventors, he was none the less still in a doubtful frame of mind, was carefully studying all the problems involved, and developing and experimenting with his invention, in order to insure a specific result.
The authorities will not be reviewed. This labor was performed by me in Austin Machinery Corp’n v. Buckeye Traction Ditcher Company, unpublished opinion filed May 5, 1924,1 with which counsel are familiar. Even if none of the views of law therein stated were disapproved on appeal, I should still be of opinion that this ease falls within the doctrines of Elizabeth v. Pavement Co., 97 U. S. 126, 24 L. Ed. 1000, and Beedle v. Bennett, 122 U. S. 71, 7 S. Ct. 1090, 30 L. Ed. 1074, and not within the doctrines of Smith & Griggs Mfg. Co. v. Sprague, 123 U. S. 249, 8 S. Ct. 122, 31 L. Ed. 141, Jenner v. Bowen (6 C. C. A.) 139 F. 556, or Delemater v. Heath (2 C. C. A.) 58 F. 414. This conclusion is reinforced, if not compelled, by the Circuit Court of Appeals opinion in Austin Machinery Corp’n v. Buckeye Traction Ditcher Co. (6 C. C. A.) 13 F.(2d) 697. This case is an authority for the proposition that a use may still be experimental, even though, as between the parties, title has passed to the construction embodying the invention. It is also authority for the proposition that a clear preponderance of the evidence is suffi-cient to establish the fact that the use was experimental, even though the title had passed more than two years before the patent application was filed.
The prior art relied on to deprive Kerner’s patent of the quality of invention was adequately considered in my original opinion. The additional art now relied on for that purpose will be considered en masse. Defendants’ additional position, briefly stated, seems to be that the Owen prior use deprives Kerner of novelty, except as to the vertical grate and by-pass illustrated in Fig. 3; that this form of grate and by-pass is anticipated by the disclosures of the new prior art; or that, if not anticipated, no invention was involved in transferring from that patent art, and the .commercial devices made in conformity there*-' with, the by-pass to the Kemer combination. The first of these contentions, as has been* shown, is unsound, for the reason that the Owen installation was a permissible experi*605meat. The rest of them are, in my opinion, unsound, because the quality of invention is not lacking, even though Kerner, in developing his final and complete combination, appropriated a by-pass from the analogous art.
Dube, Shannon, and Prescott approached the problem of garbage disposal or incineration from an entirely different point of view. Unlike Lowe, considered in my original opinion, they did not approximate Kemer’s inventive concept. Each of them was working along familiar and well-beaten paths. What they were trying to do was to improve upon existing stoves or furnaces, so as to make them efficient in cremating garbage. Their new devices are nothing more nor less than improved garbage stoves. They began with a stove or furnace, and added to it, above the fuel bed or fire box, a garbage basket or receptacle of some form. They appreciated that noxious gases and odors might be driven off during the process of combustion. They realized that the body of garbage above the fire might interfere with combustion, and might, perhaps, at times wholly prevent it. Their inventive concepts, briefly stated, consisted merely in conveying the air draft from the fire below the garbage, through or around it, so as to procure at all times a free-burning fire. All of them relied upon fuel and an intense fire below the grate, and desired only to get the flame through or above the bed of garbage. Thus it appears that their inventive concept was simply a step forward from the existing garbage stove or furnace, with means to keep open the draft from the Are box either through or around the garbage.
The Kewanee garbage crematory, marketed under the Dube patents, the Ineinerite, marketed under the Shannon patents, the Pyrofuse, marketed under the Prescott patents, have all had a considerable sale. The Kewanee and Ineinerite had a place in the market before Kerner entered the field. All three have ever since been, and still are being, made and sold, although it now appears that two of them have appropriated some part, if not all, of the Kerner construction. No contention has ever been made that either one of the three, embodying somewhat similar principles and functioning substantially in the same way, are an infringement one of the other, or that Kerner infringes any one of the claims of the several patents under which they are made and sold. They are distinct and distinguishable devices.
Kemer’s inventive concept was wholly different. While Dube, Shannon, and Prescott were working forward from and improving upon garbage stoves intended as separate installations in a basement or a kitchen, and providifag fuel and means to bum the accumulated garbage, Kerner attained at one bound the important concept of a single incinerator intended to serve an entire building, having many floors, and housing many families. In doing this, he departed from existing practices. To devise means to embody his concept, required inventive genius of no mean order. In looking back, it can now be said that his concept and means are simple; but the numerous • patents for incinerators of the garbage stove type are convincing evidence that, looking forward, neither the concept nor the means were obvious. The advantages of Kemer’s invention are many. They were adequately stated in my original opinion, and need not be repeated.
Kemer’s invention is admittedly a combination of elements; it may be of old elements. They are, however, wholly new in his specific combination, and produce an entirely new and a highly beneficial result. His invention is a garbage and refuse incinerator. It is a new, unitary structure. It is not a mere aggregation of old elements, accomplishing no new and different result, nor functioning in any new or different manner. Its elements are: A chimney flue, with side doors, serving as a garbage conduit; a crematory chamber, formed by a lateral enlargement of the chimney or flue at its lower end; a refuse-containing receptacle in that enlarged chamber, lying below the overhanging wall and the chimney flue or conduit; and a by-pass, leading from below the garbage receptacle to a point above it, and opening below the overhanging wall. Of these elements, the least that can be said is that the first two are wholly new in a household incinerator. They do not appear in a like combination in the prior art. Even if it be trae that a similar by-pass is found in Dube and others, or that there is a similar garbage receptacle in some of the garbage stoves, anticipation is not thereby shown, nor is the quality of invention destroyed. No one, without the exercise of inventive talent, could have selected from the prior art these several elements of Kemer’s invention and have combined them into a unitary structure. Even the garbage receptacle and by-pass had to be redesigned and combined in a way which, it seems to me, is not obvious.
Upon mature consideration, no reason is perceived to modify the conclusion and opinion already reached and announced. In conformity to the views herein expressed, the decree previously entered will be re-entered as the final judgment of this court. Eull costs will be allowed.
Withheld from publication at request of judge. Decree reversed (C. C. A.) 13 F.(2d) 697.