Wheaton v. Kendall

85 F. 666, 1898 U.S. App. LEXIS 2903
CourtU.S. Circuit Court for the District of Northern California
DecidedJanuary 31, 1898
DocketNo. 11,781
StatusPublished
Cited by6 cases

This text of 85 F. 666 (Wheaton v. Kendall) is published on Counsel Stack Legal Research, covering U.S. Circuit Court for the District of Northern California primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Wheaton v. Kendall, 85 F. 666, 1898 U.S. App. LEXIS 2903 (circtndca 1898).

Opinion

HAWLEY, District Judge.

This action was brought under section 4915 of the Revised Statutes, which reads as follows:

“Whenever a patent on application is refused, either by the commissioner of patents or by the supreme court of the District of Columbia upon appeal from the commissioner, the applicant may have remedy by bill in equity; and the court having cognizance thereof, on notice to adverse parties and other due proceedings had, may adjudge that such applicant is entitled, according to law, to receive a patent for his invention, as specified in his claim, or for any part thereof, as the facts in the case may appear. And such adjudication, if it bo in favor of the right of the applicant, shall authorize the commissioner to issue such patent on the applicant filing in the patent-office a copy of the adjudication, and otherwise complying witlx the requirements of law.”

The commissioner of patents on March 9, 1892, declared an interference between Charles B. Kendall’s letters patent, Ho. 450,624, granted April 21, 1.891, and the application of Milton A. Wheaton, for an improved can-heading machine, filed July 28, 1891. The rea.1 issue in this case is whether Kendall or Wheaton was the first and original inventor of the invention covered by the issue in interference in the patent office. This issue is defined as follows:

“Invention. In a can-heading machine, the combination, with oppositely rotating mechanisms, of the header and retaining jaws secured thereto and rotating therewiili, said header and retaining jaws adapted to move from their axial line during rotation of the heading mechanisms, for the purpose of perfect registering wiih each other, and holding of heads and bodies during the operation of heading, substantially as and for the purpose set forth.”

The respective parties filed their preliminary statements as required by the rules of the patent office. Kendall’s statement is:

“That he conceived the invention set forth in the declaration of interference some time during the summer of the year 1887; that he made rough sketches of different features of the invention during said summer, and thereafter; that during the summer 1887 and year 1888 he explained the invention to different parties: that he never made a working model of his invention; that working drawings of the invention were made during the summer of 1801; that he has in his possession sketches of invention made during the month of January or February, 1889; and that he never embodied the invention in a full-sized machine.”

[668]*668Wheaton’s is:

“That he conceived the invention set forth in the declaration of interference during or about the month of June, 1889, and made rough sketches of portions of the inventions during the said month, and the month of July following, and also explained the invention to others during or about the month of June, or the early part of July, 1889. In the latter part of July, or beginning of August, 1889, he commenced the manufacture of an experimental machine embodying the invention set forth in the declaration of interference, and for the purpose of perfecting the mechanical details by which it was- operated. This machine was completed on the 16th day of October, 1889, and a great many cans were headed upon the machine. After this machine was completed, and the mechanical details were determined upon, deponent commenced to build another machine, which was begun either the latter part of October or the beginning of November, 1889. Deponent worked diligently upon said machine until the month of June, 1890, when it was finished and ready to set to work. On the 21st day of June, 1890, at the invitation of deponent, Charles B. Kendall, the other party to the present interference, visited the machine, and examined it, and had its details all explained to him. This machine has been used in two different canning factories, with satisfactory results. It worked in the first of these establishments for several months, and in the second establishment it worked until said establishment was burned, during the year 1891. On the day previous to the fire in which the machine was destroyed, it headed over 25,000 cans. No model was ever made of the machine, except the experimental machine previously described, and no drawings, previous to that time, except the rough sketches mentioned.”

After taking all the testimony offered by tbe respective parties, W. W. Orrick, tbe acting examiner of interferences, on November 15, 1892, decided tbe issue in Kendall’s favor. From that decision Wheaton took an appeal to tbe board of examiners in chief. This board consisted of H. H. Bates, K. S. B. Clarke, and S. W. Stocking. Tbe two former affirmed tbe decision of tbe examiner of interferences. Tbe latter, in a lengthy and carefully prepared opinion, expressed bis views to tbe effect that tbe decision should be reversed.' Wheaton then took an appeal to tbe commissioner of patents, W, E. Simonds, who decided in Kendall’s favor. Wheaton thereafter, in due time, commenced this action, under tbe provisions of section 4915, above quoted. By stipulation of tbe parties, tbe evidence that was produced in tbe patent office was put in evidence in this case. Wheaton offered some additional testimony tending to rebut or impeach some portions of the testimony of Kendall before the patent office. Kendall rested his case upon the testimony taken in the interference proceedings in tbe patent office.

Tbe respondent Kendall claims that tbe issue raised is one of fact, pure and simple, and that this issue having been disposed of by the patent department adversely to Wheaton, and there not having'been any material evidence offered to change the issue of fact there heard and determined, it is the duty of this court to adopt and follow the rulings of the patent department; that, under the authorities, every reasonable doubt as to the facts found upon conflicting evidence •must be solved in favor .of the rulings of that department; and that all presumptions are in favor of the correctness of its conclusions. In other words, his contention is that this court cannot reverse the rulings of the patent office upon a review of the same testimony presented before the patent office, unless it clearly appears from the evidence, [669]*669beyond any reasonable doubt, that the conclusions reached by such officers were erroneous. In support of this contention, counsel cite and rely upon the following cases: Morgan v. Daniels, 153 U. S. 120, 124, 14 Sup. Ct. 772; Standard Cartridge Co. v. Peters Cartridge Co., 69 Fed. 408; Id., 23 C. C. A. 367, 77 Fed. 630.

In Morgan v. Daniels the circuit court, in a proceeding brought under the provisions of section 4915, reversed the decision in the patent office, from which ruling the losing party took an appeal. Mr. Justice Brewer, in writing the opinion of the court, deemed it proper to announce a definite rule which should control the courts in the determination of such cases. Speaking of the general character of this class of cases, he said:

“But this is something more than an appeal. It is an application to the court to set aside the action of one of the executive departments of the government. The one charged with the administration of the patent system had finished its investigations and made its determination with respect to the question of pri: ority of invention. That determination gave to the defendant the exclusive rights of a patentee.

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Cite This Page — Counsel Stack

Bluebook (online)
85 F. 666, 1898 U.S. App. LEXIS 2903, Counsel Stack Legal Research, https://law.counselstack.com/opinion/wheaton-v-kendall-circtndca-1898.