Smith v. Fay

22 F. Cas. 543, 6 Fish. Pat. Cas. 446

• Court: U.S. Circuit Court for the District of Southern Ohio
• Decided: June 15, 1873
• Status: Published

Opinion

EMMONS, Circuit Judge.

The court is of the opinion that defendants’ machine infringes complainant’s patent. We do not suppose they would seriously deny this if the claim is held to be for the combination of the power of reversing by friction, with a stop to arrest it, as distinguished from the specific devices. It is held to be for this. With any other-construction, the patent would be of little value. It is so construed by two experts, whose testimony in this particular is uncontradicted. The court would, from an examination of all the devices in evidence and of the state of the art, reach the same conclusion. This construction does not make it a patent for a principle. The defendants certainly employ the idea of the patent. This idea was new and highly beneficial, and deserves liberal protection. The adjudications upon the doctrine of equivalents warrant such protection.

Although the court can not follow fully the precise distinctions taken by complainant, the law demands no such strictness as that insisted upon by defendants in reference to the employment of all the elements of a combination. Their error lies in the use of the term “element” A subordinate device is not, within this rule, an*element. There are here but two elements — -the constantly acting power by friction to effect the rotation, and the “automatic engagement and disengagement of stops.” These are protected, so far as the in-strumentalities described and their equivalents are concerned, and when these are used by equivalent devices co-operating in the same general way, for the same end, the patent is infringed. Overlooking all literalisms and dicta, the facts of the case, and what has been actually administered in the current of cases, compel the judgment given on this point. When this idea is once suggested, and one mode of utilizing it pointed out, others are easily adopted.

Were it necessary, we should say that the Holly machine did not in principle antedate the patent: first, on account of the uncertainty as to what its principle was; and, second, on account of its imperfect organization, want of success, and practical power.

We do not, in this, overlook what some witnesses say about its efficiency; but it went out of use. Those who contrived and worked it did not understand complainant’s idea. Holly did not understand it or patent it. The reason he assigns for not patenting it is absurd, in view of the law, and his belief that he had invented so valuable a device. He was a patent-man, and knew his rights. He was a dealer in machines, and would have secured this improvement if it had been his. What he patented is what he before made, after he. had perfected it. It was not the device described by the witness. Mistakes in this regard are not only probable, but morally certain.

But we find nd such evidence, or approach to such evidence, on the mere point of time, as after twenty years’ uninterrupted use' of a valuable invention should be supposed to antedate it. The danger of such proof generally must be considered. The accident of discovering the engraving saved complainant from innocently using false evidence, and is conclusive on the point of time. The witnesses swore positively on this point, and are all conclusively contradicted. Westcott, of all men, ought to know whether he first used the Holly machine in 1S53 or 1852. He refers to data from the iron-works books. His whole evidence is worth no more than theirs, and they, in the opinion of the court, fully contradict his conclusions from them, and all others who swear to a manufacture in 1851 and 1852. Had they been made then, the books would have disclosed it. No entries on them before 1854 have any plausibly certain connection with such a machine. These books do show pretty fully other machines. But Holly himself, although literally dating in 1852. is substantially uncertain. No witness fixes the time in a mode, or by a reference to facts, which show him dishonest, if wrong. Whenever a date or fact is fixed, the nature of the conditions show that it might just as well have been afterward. There is in no instance a necessary connection. This is illustrated by cases cited by complainant on the question. The statute of limitations furnishes the philosophy for disposing of such a case. There may be cases where the proof is beyond criticism and without conflict. In such cases this rule does not apply; but, if there is any doubt, a mere preponderance of evidence is not sufficient. If this were sufficient, the same rule would apply as if recent facts were in issue. The presumption arising from silence, where there is so much interest to assert, an occasion to assert it, and the party intelligent, and the results certain, if the facts wananted it, has far more strength than any preponderance in number of witnesses and literal statements made by them in this case. Uncertainty as to the character of the machine adds greatly to the demand for certainty as to the time.

Decree for injunction and account.