American Roll-Paper Co. v. Knopp

44 F. 609, 1890 U.S. App. LEXIS 1908

• Court: U.S. Circuit Court for the District of Eastern Missouri
• Decided: November 8, 1890
• Status: Published

Opinions

Thaykb, J.

In this case it appears that the roll-paper machine manufactured and sold by defendants is manufactured strictly inaceordancewith the specification and drawings of letters patent of the United States No. 394,121, owned by defendants, and issued to Edward L. Knopp December 4,1888, the application for which was filed September 8,1888, Complainant’s contention is that defendants’ machine embodies substantially the same invention claimed and described in letters patent of the United States No. 409,028, granted to the complainant, as assignee of Leo Ehrlich, on August 13,1889, the application for which appears to have been filed December 2, 1887, and was renewed March 28, 1889. Its contention is also that the machine is an infringement of the Ehrlich patent. Assuming, but without deciding, that it is substantially the same invention, and that the Ehrlich device possesses patentable novelty, still complainant cannot recover in this case, (defendants’ patent having been first granted,) unless it is shown in some way that Ehrlich was the original and first inventor of the device; and it has not been so shown to my satisfaction. There is no evidence in the record as to whether Knopp or Ehrlich was the original and first inventor, unless the fact that Ehrlich’s application for a patent was first filed creates a presumption that he was the first inventor. ' But the date of an application for a patent does not necessarily or ordinarily indicate the true date at which the invention was made, because inventors sometimes, if not often, fail to make an application for a patent for months after the invention is complete. Im the case at'bar it appears, as before stated, that Knopp first obtained a patent, although Ehrlich’s application for one was first placed on file. Under the circumstances, and in the absence of other evidence on the subject, the court will not presume that Ehrlich was the first inventor, and the burden is on complainant to establish that fact. It is just as reasonable to infer that Knopp was the first inventor. I have not stopped to consider whether, in a bill of this character, which is merely a suit for infringement, it is competent for the complainant to show that Erlich was the first inventor of the alleged infringing device, and thus invalidate the prior Knopp patent. For present purposes, it is sufficient to say that, if the fact in question may be shown, it has not been, and a decree must go'against the complainant on that ground.

Another feature of the case justifies comment. It was admitted at the hearing that the complainant is not manufacturing, and has not manufactured, any machines under the Ehrlich patent, or put them on the market in any manner. It is manufacturing a machine made under a patent granted five years previous to the Ehrlich patent, which it evidently considers superior to the Ehrlich machine, and seems to be using the latter patent merely to keep other manufacturers of roll-paper machines out of the market. Whatever its technical right to make such use of the patent may be, its conduct in this respect evidently deprives the public of whatever advantages the Ehrlich invention possesses, contrary to the true polioy, of the patent laws.

The bill is dismissed.