Home/Ninth Circuit/Butler v. Burgh Plow Co.

Butler v. Burgh Plow Co.

23 F.2d 15
CourtCourt of Appeals for the Ninth Circuit
DecidedOctober 31, 1927
DocketNo. 4853
StatusPublished
Cited by4 cases

This text of 23 F.2d 15 (Butler v. Burgh Plow Co.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Ninth Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Butler v. Burgh Plow Co., 23 F.2d 15 (9th Cir. 1927).

Opinion

SAWTELLE, District Judge.

This is a suit for infringement of letters patent No. 1,-233,107, for a road-building -machine, dated July 10, 1917, issued to Rolla M. Myers, and assigned to appellee; - of patent No. 1,401,-149, for combined spreader and roller, dated December 27, 1921, issued to appellee, as assignee of Harry C. Poster; and of patent No. 1,470,157, for a stone spreader, dated October 9,1923, issued to appellee as assignee -of Joseph L. Pike.

It is alleged in the complaint that the inventions, covered by said letters patent,' are capable of joint use, and are intended to be jointly used in road machines, manufactured and sold by appellee, and in similar machines, manufactured and sold by appellants, and that the appellee is now the sole owner of said letters patent, and all the rights thereunder, including the right to recover for past infringement; that the appellants jointly and severally infringed said letters patent and each of them by making, selling, and using, or causing to be made, sold, and used, machines, containing the inventions of said letters patent and the claims thereof. The bill of complaint contains the usual allegations of irreparable damage and injury to the appellee by reason of said infringement, as well as the usual prayer for injunctive relief and damages. ’

The- appellants have denied the material allegations of the bill of complaint, and have pleaded certain separate #nd alternative defenses, among others that said letters patent, and each of same, are void for aggregation, the subjects of none of same and the claims of none of saíne reflecting or amounting to invention; that such machines or devices, or instrumentalities, as appellants have made and sold, embody and contain and reflect invention and acts of invention totally distinct and different from the inventions of said letters patent, being in part the inventions of the appellant Butler, for which inventions application 'for letters patent of the United States have heretofore been filed by him, and which inventions are to be distinguished patentably from said alleged inventions of said letters patent mentioned in the bill of complaint; and that appellee’s patents were anticipated in and by numerous pribr letters patent of the United States and in foreign countries.

The lower court entered an interlocutory decree in favor of the appellee, plaintiff below, and this ease comes here on appeal from that order.

Appellee began the manufacture of the stone spreader and distributer in the year 1917. The value in money of the machines so manufactured amounts to approximately $320,000. The total number of machines so manufactured, up to the time of the commencement of this suit, is slightly in excess of 1,000 machines.

The evidence shows that, prior to the time appellee’s machine came into general use throughout the United States, the prevailing method of distributing road material on the roadway was to dump it out of the truck or wagon and distribute it over the surface of the road by hand. This method was inefficient, expensive, and unsatisfactory, it being almost impossible to distribute evenly the different grades of material over the road, or to • distribute same to a given thickness; whereas, by the use of appellee’s spreader, which regulated the amount of material to be placed bn the road, the proper amount of such material could be distributed evenly and without any guesswork, and this regardless of the condition of the subgrade. Under proper conditions, 2 men on the spreader did the same work that 14 men did by hand..

Appellee insists that the patents in suit are in themselves prima facie evidence of validity, and of the truth of the facts therein stated. On the other hand, the appellants contend that the issuance of the patents to Butler creates a prima facie presumption of the patentable difference from that of the appellee’s patents. We think it unnecessary to review the many authorities cited in support of these propositions. It will suffice to quote from the opinion of the Supreme Court in the case of Coming et al. v. Burden, 15 How. (56 U. S.) 252, 270 (14 L. Ed. 683):

“It is evident that a patent, thus issued after an inquisition or examination, made by skillful and sworn publie officers, appointed for the purpose of protecting the publie against false claims or useless inventions, is entitled to much more respect, as evidence of novelty and utility, than .those formerly issued without any such investigation.. Consequently, such a patent may be, and generally is, received as prima facie evidence of tne truth of the facts asserted in it. And in eases where the evidence is nicely balanced, it may have weight with a jury in making up their decision as to the plaintiff’s right; and, if so, it is not easy to perceive why the defendant who uses a patented machine should not have the benefit of a like presumption in his favor, arising from a like investigation of the originality of his invention, and the j udgment of the public officers, that his machine is new, and not an infringement of the patent previously granted to the plaintiff. It shows, [17]*17at least, that the defendant has acted in good faith, and is not a wanton infringer of the plaintiffs rights, and ought not, therefore, to be subjected to the same stringent and harsh rule of damages which might be justly inflicted on a mere pirate. It is true the mere question of originality or infringement generally turns on the testimony of the witnesses produced on the trial; but, if the plaintiff’s patent in a doubtful case may have some weight in turning the scale in his favor, it is but just that the defendant should have the same benefit from his; ‘valeat quantum valeat.’ The parties should contend on an equal field, and be allowed to use the same weapons.”

The Myers Patent, No. 1,233,107.

The invention as described in this patent is set forth in the second paragraph of the specification:

“My invention is an improvement in road-building machines, and has for its objeet to provide a machine of the character specified, especially adapted for distributing and leveling stone, slag, or gravel on roadways, wherein the distributer is adapted to be drawn be[18]*18hind a truck and to receive material from the truck, and to distribute a uniform layer of material on the roadway as the truck moves along.”
[17]

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Cite This Page — Counsel Stack

Bluebook (online)
23 F.2d 15, Counsel Stack Legal Research, https://law.counselstack.com/opinion/butler-v-burgh-plow-co-ca9-1927.