Tatum v. Eby

60 F. 408, 1894 U.S. App. LEXIS 2736

• Court: U.S. Circuit Court for the District of Northern California
• Decided: January 29, 1894
• Status: Published

Opinion

McKENNA, Circuit Judge.

This is an action for an infringement of patents for a machine called a “gang edger.” , These patents were passed on and sustained by my learned predecessor, Judge Sawyer, in the case of Tatum v. Gregory, 41 Fed. 143, and subsequently by, myself in the same case, 51 Fed. 446.

In that case the same defenses were made as in this, except as to the effect of the edger called the “Whitesboro Edger.” As to the Stern edger, which, is urged earnestly as preceding the Robb patent, under which plaintiffs claim, and as negativing its novelty, Judge Sawyer said, “I do not think that Stearns’ patent * ⅜ * affords any ground for limiting the construction of the patent in such manner as to avoid infringement.” After careful examination and consideration of the evidence, 1 have come to the same conclusion, and also think the defendant’s edger is an infringement of plaintiffs’.

As to the Whitesboro edger, the testimony shows that it was built some time in the fall of 1880, more than two years before the Bobb edger was invented. The witnesses do not agree as to the month, but, allowing for all differences, its building is established more than two years before the Bobb invention; but it was not put into use until some months afterwards, and plaintiffs contend it is use, not making, which constitutes anticipation, and that the evidence leaves a reasonable doubt as to whether its use was before Bobb’s invention. The invention may have been as early as February, 1881, — certainly in June, 1881. Assuming the latter date, I think the testimony fails to establish, beyond a reasonable doubt, that that machine was used two years prior to the invention. There is some conflict in the authorities as to whether there must be use of a machine two years before the invention of the patented device, or whether knowledge alone is sufficient, — knowledge, of course, of the character, as well as of the existence, of the machine. That both knowledge and use are necessary is not strenuously contended against by counsel for respondent, and I have adopted that view, notwithstanding I have already said there are authorities to the contrary, and good reasoning to the contrary.

Assuming a prior use to be necessary, it is questionable if it is sufficiently pleaded. The allegation of the answer is—

“That, in the year 1880, the said parties, .Tames Brett and Bethune Perry, built a second gang edger, in all essential particulars like the gang edger described and claimed in complainants’ alleged letters patent, Exhibit B, and that said gang edger was used in the year 1880, and for many years thereafter, in the Whitesboro mill, near Whitesboro, in Mendocino county, California; that said gang edger, which was used in said Whitesboro mill, is now in the possession of the defendant herein, at his place of business, Nos. 29-31 Spear street, in San Francisco, California, and is ready to be produced in court.”

The place where used is alleged; by whom used is not alleged. The allegation that it was built by James Brett and Bethune Perry is not an allegation of use by them.

Passing by the technical defenses, and comparing the patented device with the Whitesboro edger, there appears substantial difference between them. At any rate, their identity is not established beyond a reasonable doubt.

Decree for plaintiffs.