Wysong & Miles Co. v. Oakley
Citation | 181 F. 492 |
Decision Date | 15 July 1910 |
Docket Number | 929. |
Parties | WYSONG & MILES CO. v. OAKLEY et al. |
Court | United States Courts of Appeals. United States Court of Appeals (4th Circuit) |
Appeal from the Circuit Court of the United States for the Northern District of West Virginia, at Parkersburg.
This suit was instituted in the Circuit Court of the United States for the Northern District of West Virginia on October 16 1907, for the purpose of enjoining the appellees from manufacturing and selling certain sanding machines which the appellant claimed are infringements upon the letters patent which appellant claims to own. The patent referred to was granted January 12, 1897, No. 575,187, upon the application of Louis Welker, of Williamsport, Pa., filed March 12, 1896. The bill alleges in paragraph 1 that Welker was the original and first inventor or discoverer of certain new and useful improvements in sanding machines not used or owned by others in this country when patented, nor described in any printed publication in any country prior to his invention or discovery thereof, and alleges that such invention had not been in public use or on sale for more than two years prior to said application, and had not been abandoned to the public. It is alleged in paragraphs 5 and 6 that Welker, by assignment dated June 26, 1907, assigned said patent to Wysong & Miles Company and that thereby the said company became the sole owner of the said letters patent.
While it is alleged in paragraph 8 of the bill that appellant had invested and expended large sums of money for the purpose of carrying on the business of manufacturing and selling machines containing the said invention and alleges that a large number of said machines were made according to said invention and sold by the appellant, no proof was offered by the appellant in the case to show that any machines had ever been made by the appellant under this patent. The assignment was made on June 26, 1907. Witnesses for the appellant testified that the Wysong & Miles Company machine was different from the Welker machine and made on a different principle from the Welker machine. Witness for the appellant W. E. Sykes, among other things, testified as follows It it also insisted that this fact is established by witnesses * * * 'George Sprout, E. N. Jansen, W E. Curry, witnesses for appellees, and James D. Snyder, Wm. M. Welker, and G. H. Miles, witnesses for the appellants.
It appears from the deposition of R. M. Clapp and G. H. Miles that as representatives of Wysong & Miles Company they visited the plant of the Oakley & Jansen Company before they bought the Welker patent, and that they were shown through the premises and were informed as to the kind of machines the appellees were making and the details of construction, and that after knowing these facts the Wysong & Miles Company looked up the Welker patent and bought it.
Paragraph 9 of appellant's bill alleges that the appellees have made and sold the machines containing the invention and improvements of said letters patent No. 575,187, and the bill prays for an accounting and injunction against the appellees to prevent them from continuing the manufacture and sale of the machines. After the evidence in chief had been taken for appellant, appellant served a notice upon appellees, which was filed in this cause on the 4th day of July, 1908, 'that complainant will press for a decree upon the third claim only of the Welker patent in suit, No. 575,187. ' And said third claim in said patent is as follows:
The answer of the appellees, in paragraphs 1 and 2, puts in direct issue the allegations of the bill as to the patent. The answer denies that Welker was the original and first discoverer of the improvements claimed in the bill, denies that such improvements were not known or used by others in the United States, denies that such improvements were not patented, or described in any printed publication in any country prior to the pretended invention of Welker, and avers that the improvements referred to were in public use and on sale in the United States for more than two years prior to the said application by Welker, and alleges that said improvements were not patentable improvements because the same had long since been previously included in patented machines and in general use. The answer also alleges that prior to the institution of appellant's suit the attorney for the complainant, C. W. Miles, visited the plant of appellees, and was there informed as to patents and inventions prior in time to the Welker patent and which rendered the Welker patent invalid. Such patents are referred to in paragraph 6 of defendant's answer. First. Patent to O. Sawyer, dated May 10, 1881, No. 241,429, for certain improvements in sanding machines. Second. Patent to O. Sawyer, dated January 27, 1891, No. 445,382. Third. Patent to F. W. Coy, dated March 11, 1884, No. 294,766. Fourth. Patent to F. W. Coy, dated April 8, 1884, No. 296,535.
It is insisted by appellees that all of said letters patent to Sawyer and Coy were for improvements in sanding machines, and for improvements which anticipated the very elements and principles involved and stated in the third claim of the Welker patent.
The answer in paragraph 7 also avers that the use of an abrasive belt passing over pulleys and having the rear face of said belt supported by a form of various shapes and sizes to suit any object to be abraded had been in general use in the United States for many years, and had been devised and used in different forms by different manufacturers for many years before Welker's application for a patent, and that the letters patent did not give to Welker the exclusive right to make, use, and sell the machines embodying the principle of the abrasive belt passing over pulleys and supported by an intermediate support or form on which the abrasive belt would rest, when used for abrading the article manufactured, and the answer denies that said patent gave the right to the appellant to claim such exclusive right against the appellees and as against the machines and appliances made, used, and sold by the appellees. The averments contained in the answer put in issue the validity of the Welker patent, and also raised the question as to whether appellee's machine infringed upon the Welker patent, if valid.
Upon the bill and answer and replication thereto the parties proceeded to take evidence, and the appellant took its evidence in chief before notice was served upon the appellees that appellant relied solely upon claim No. 3 in the Welker patent, and in March, 1909, the cause was argued, submitted, and an opinion was rendered April 16, 1909, and decree entered April 22, 1909, denying relief to appellant, and decreeing that claim No. 3 in the Welker patent, No. 575,187, is void as not containing any new or novel principle, or new application of the old principles such as would entitle the said Welker to a patent upon said third claim, and that all of the principles contained in the said third claim of said Welker patent are found in the prior F. W. Coy patents, Nos. 294,766 and 296,535, referred to in appellees' answer and in the evidence. From this decree, the appeal herein was taken.
C. W. Miles and Melville Church (Church & Church, on the brief), for appellant.
C. D. Merrick, for appellees.
Before GOFF and PRITCHARD, Circuit Judges, and WADDILL, District judge.
The learned judge who heard this cause below in an opinion filed herein, among other things, said:
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Wysong & Miles Co. v. Stiles Foundry & Supply Co.
...prior Coy patents, Nos. 294,766 and 296,535.' This decision of mine was affirmed by the Circuit Court of Appeals for this Circuit, 104 C.C.A. 240, 181 F. 492. The patent and this later one of Wysong are practically the same, except the Welker one was for a 'combination of a pulley, a statio......