Morgan v. Daniels

Decision Date23 April 1894
Docket NumberNo. 313,313
Citation14 S.Ct. 772,38 L.Ed. 657,153 U.S. 120
PartiesMORGAN v. DANIELS
CourtU.S. Supreme Court

This was a suit by Fred. H. Daniels against Charles H. Morgan to procure an adjudication that complainant was entitled to a patent. The circuit court entered a decree for complainant (42 Fed. 451), from which defendant appeals.

On October 30, 1889, the appellee, Fred. H. Daniels, commenced suit against the defendant in the circuit court of the United States for the district of Massachusetts. In his bill he alleged that he was the original, sole, and first inventor of an improvement in machines for coiling wire or wire rods; that on June 26, 1886, he filed in the United States patent office an application in due form for a patent; that on September 4, 1886, the commissioner of patents declared an interference between his application and one filed by the defendant on June 24, 1886; that thereafter testimony was taken on such interference, and a decision rendered on March 22, 1889, adversely to his claim of a priority in invention; that a rehearing was had, which rehearing resulted, on October 28, in affirming the original decision. The bill further averred that the defendant was not, as decided by the commissioner of patents, the first inventor or discoverer, and prayed for a decree that he, plaintiff, be entitled to receive a patent for his invention, as specified in his claims, and that defendant be enjoined from taking any steps to use or dispose of letters patent for said invention, or any part thereof.

This suit was brought under the authority of section 4915, Rev. St., which is 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 be 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 with the requirements of law. In all cases, where there is no opposing party, a copy of the bill shall be served on the commissioner; and all the expenses of the proceeding shall be paid by the applicant, whether the final decision is in his favor or not.'

To this bill, on January 10, 1890, the defendant filed an answer, denying that plaintiff was the inventor, as alleged. The case was submitted to the circuit court upon the testimony used in the interference proceedings, and upon such testimony a decree was entered, finding that plaintiff was the original inventor, and entitled to receive a patent for the invention. From such decree the defendant brings this appeal.

Geo. S. Boutwell, Anthony Pollak, and Philip Mauro, for appellant.

J. E. Maynadier and Chas. G. Washburn, for appellee.

Mr. Justice BREWER delivered the opinion of the court.

It is worthy of notice that hitherto in the progress of this litigation, upon the same testimony, different persons have reached different conclusions. Thus, in the opinion filed June 5, 1888, by the examiner of interferences and assistant examiner, it was found that the defendant was the original inventor. On an appeal from that decision the examiners in chief (two members being present) came to a different conclusion, and awarded priority to the plaintiff. On a further appeal the commissioner of patents on March 22, 1889, reversed the judgment of the examiners in chief, and sustained that of the original examiners. A motion for rehearing was brought before a succeeding commissioner, and overruled. When this case was submitted, without any additional testimony, to the circuit court, the conclusion finally reached in the patent office was dissented from, and it was found that the plaintiff was the original inventor. An examination of the opinions filed by these different officers indicates that by each of them the matter was carefully considered. Evidently, therefore, the question as to which was the prior inventor is not free from doubt. What, then, is the rule which should control the court in the determination of this case? It is insisted by counsel for the appellant that the decision of the patent office should stand, unless the testimony shows beyond any reasonable doubt that the plaintiff was the first inventor, and, in support of their contention, they cite the cases of Coffin v. Ogden, 18 Wall. 120, 124, and Cantrell v. Wallick, 117 U. S. 689, 695, 6 Sup. Ct. 970. In the first of these cases, which was a suit for infringement, the defense was a prior invention, and in respect to this defense the court observed: 'The invention or discovery relied upon as a defense must have been complete, and capable of producing the result sought to be accomplished; and this must be shown by the defendant. The burden of proof rests upon him, and every reasonable doubt should be resolved against him.' In the other case, the same defense in a suit for infringement was set up, and there the court thus stated the rule: 'The burden of proof is upon the defendants to establish this defense, for the grant of letters patent is prima facie evidence that the patentee is the first inventor of the device described in the letters patent, and of its novelty. Smith v. Vulcanite Co., 93 U. S. 486; Lehnbeuter v. Holthaus, 105 U. S. 94. Not only is the burden of proof to make good this defense upon the party setting it up, but it has been held that 'every reasonable doubt should be resolved against him."

These two cases are closely in point. The plaintiff in this case, like the defendant in those cases, is challenging the priority awarded by the patent office, and should, we think, be held to as strict proof. In the opinion of the court below, the rule is stated in these words: 'The complainant, on the issue here tendered, assumes the burden of proof, and must, I think, as the evidence stands, maintain by a clear and undoubted preponderance of proof that he is the sole author of that drawing.' 42 Fed. 451. This language is not quite so strong as that just quoted. The case as presented to the circuit court was not that of a mere appeal from a decision of the patent office, nor subject to the rule which controls a chancellor in examining a report of a master, or an appellate court in reviewing findings of fact made by the trial court. There is always a presumption in favor of that which has once been decided, and that presumption is often relied upon to justify an appellate court in sustaining the decision below. Thus, in Crawford v. Neal, 144 U. S. 585, 596, 12 Sup. Ct. 759, it was said: 'The cause was referred to a master to take testimony therein, 'and to report to this court his findings of fact and his conclusions of law thereon.' This he did, and the court, after a review of the evidence, concurred in his findings and conclusions. Clearly, then, they are to be taken as presumptively correct, and unless some obvious error has intervened in the application of the law, or some serious or important mistake has been made in the consideration of the evidence, the decree should be permitted to stand.' See also Camden v. Stuart, 144 U. S. 104, 12 Sup. Ct. 585, and Furrer v. Ferris, 145 U. S. 132, 12 Sup. Ct. 821.

But this is something more than a mere 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 priority of invention. That determination gave to the defendant the exclusive rights of a patentee. A new proceedings is instituted in the courts,—a proceeding to set aside the conclusions reached by the administrative department, and to give to the plaintiff the rights there awarded to the defendant. It is something in the nature of a suit to set aside a judgment, and, as such, is not to be...

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    • Mondaq United States
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    ...at its decision, the Court considered two cases: Butterworth v. United States ex rel. Hoe, 112 U.S. 50 (1884), and Morgan v. Daniels, 153 U.S. 120 (1894), which both considered a previous version of section 145, Revised Statute § 4915 (R.S. 4915). In Butterworth, the Court held that a proce......
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