Wysong & Miles Co. v. Oakley

Citation181 F. 492
Decision Date15 July 1910
Docket Number929.
PartiesWYSONG & MILES CO. v. OAKLEY et al.
CourtUnited 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 'Q. What have you learned to-day in regard to the making of the Welker machine, or machines upon the Welker plan, by the plaintiffs in this case, and from whom did you learn it? A. In conversation to-day with Mr. C. W. Miles, an attorney and witness in this case, I called attention to the fact that in my opinion the Welker machine could not do the work for which it was intended, and that no such machine had ever been constructed and operated. I then asked Mr. C. W. Miles if they had ever constructed such a machine, and he replied that they had not. * * * ' 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: '3. In a sanding machine the combination of a pulley and stationary former, a sanding belt extending between said pulley and former, a means for adjusting said former substantially as set forth.'

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.

PRITCHARD Circuit Judge.

The learned judge who heard this cause below in an opinion filed herein, among other things, said:

'The defenses relied upon, while variously stated, may be epitomized to be a denial of infringement and a charge that, in view of the condition of the prior art, this Welker patent is void for lack of novelty and patentable invention.
'After careful consideration of the case, I am convinced that the latter must prevail and for these reasons: The operation of a belt upon two or more pulleys is common to mechanics. That these pulleys may or may not have rims to inclose the belt, may or may not be adjustable, or may or may not be capable of being rendered stationary, are functions alike common and well known in mechanics. If two pulleys should be connected by a sanding belt one stationary and without inclosing rims, the other revolving at such speed as to revolve the belt, the stationary pulley would be as capable of polishing in its circular form as would the former found in the Welker machine. What inventive faculty is required to substitute for this stationary pulley different formers suitable for the different wood curvatures desired to be polished? What greater novelty is involved in having the belt run over two pulleys and a former, the latter stationary, than is involved in having it run over three different pulleys one of which is stationary? It seems to me to be wholly immaterial whether you call these old and very common devices pulleys or formers. The mechanical operation is the same, and no new or novel principle or new application of old principles is involved such as to warrant a patent monopoly. I do not
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2 cases
  • Wysong & Miles Co. v. Oakley & Jansen Co.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (4th Circuit)
    • March 19, 1915
  • Wysong & Miles Co. v. Stiles Foundry & Supply Co.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (4th Circuit)
    • March 18, 1915
    ...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......

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