197 F.2d 16 (10th Cir. 1952), 4369, Merrill v. Builders Ornamental Iron Co.

Docket Nº:4369.
Citation:197 F.2d 16, 93 U.S.P.Q. 276
Party Name:MERRILL v. BUILDERS ORNAMENTAL IRON CO.
Case Date:May 12, 1952
Court:United States Courts of Appeals, Court of Appeals for the Tenth Circuit
 
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197 F.2d 16 (10th Cir. 1952)

93 U.S.P.Q. 276

MERRILL

v.

BUILDERS ORNAMENTAL IRON CO.

No. 4369.

United States Court of Appeals, Tenth Circuit.

May 12, 1952

Rehearing Denied June 11, 1952.

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P. H. Lamphere and Carle Whitehead, Denver, Colo. (Lamphere & Van Valkenburgh and Whitehead & Vogl, all of Denver, Colo., on the brief), for appellant.

Charles B. Cannon, Chicago, Ill. (George H. Wallace, Daniel V. O'Keefe, Wallace & Cannon, all of Chicago, Ill., William Grant, and Grant, Shafroth & Toll, all of Denver, Colo., on the brief), for appellee.

Before BRATTON, MURRAH and PICKETT, Circuit Judges.

BRATTON, Circuit Judge.

Builders Ornamental Iron Company instituted this action against Marcellus S. Merrill. It was alleged in the complaint that plaintiff was the manufacturer of frame straightening apparatus for use in straightening the frames of automotive vehicles; that defendant asserted ownership of Letters Patent No. 2,013,785, hereinafter referred to as patent 785, for frame straightening apparatus for automobiles,

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and Letters Patent No. 2,042,856, hereinafter referred to as patent 856, for apparatus for straightening axles and truing the wheels of automobiles; that the patents and each and every claim thereof were invalid; that although the patents were invalid, defendant had charged plaintiff and its customers with infringement of them by reason of the manufacture, sale, and use of plaintiff's apparatus; that defendant had filed in the United States Court for Utah an action against certain named parties in which he charged infringement of the two patents by reason of the sale and use of the frame straightening device manufactured by plaintiff; that such action was then pending; that defendant had threatened and was threatening to file numerous like actions against customers of plaintiff for infringement of the patents; that the filing of such actions would subject plaintiff to great inconvenience and expense and would greatly damage its business; and that an actual controversy existed between plaintiff and defendant. The prayer was for a declaratory judgment adjudging and decreeing that the patents were invalid; adjudging and decreeing that the apparatus manufactured and sold by plaintiff did not infringe the patents or any of the claims thereof; enjoining defendant from filing or prosecuting anywhere in the United States further or additional actions against plaintiff or its customers based upon the validity of such patents and the infringement of them by the sale or use of the apparatus manufactured by plaintiff; enjoining defendant from prosecuting the action then pending in the United States Court for Utah; and taxing against defendant all costs, including reasonable attorney's fees. Defendant denied invalidity of the patents and pleaded that plaintiff was estopped to challenge their validity; and by counterclaim he charged that plaintiff had infringed and was infringing the patents. The prayer was that the complaint be dismissed; that plaintiff be enjoined from further infringement; that an accounting be had for profits and damages; and that the costs be taxed against plaintiff, including reasonable attorney's fees. Before the trial began, the charge of infringement contained in the counterclaim was narrowed to claims 1 and 2 of patent 785 and to claim 9 of patent 856. The court made extended findings of fact and conclusions of law. It found and concluded among other things that claims 1 and 2 of patent 785 were invalid because of public use and sale by defendant of a frame straightening apparatus or device embodying the construction disclosed by the patent and as defined in the two claims thereof more than two years prior to the filing of the application which matured into the patent; that if the two claims were valid, they were limited to a combination of elements which included certain members; that the apparatus manufactured by plaintiff did not infringe either of such claims; that claim 9 of patent 856 was invalid because of failure to particularly point out and distinctly claim the alleged invention purported to be covered thereby, and for attempting to cover a means or mechanism not disclosed therein; that plaintiff was not estopped to challenge the validity of the patents; that plaintiff was entitled to an injunction in substantial accordance with the prayer of the complaint; and that plaintiff was entitled to an award of reasonable attorney's fees. Judgment was entered accordingly, and defendant appealed. For convenience continued reference will be made to the parties as plaintiff and defendant, respectively.

Although amended by the Act of August 5, 1939, 53 Stat. 1212, to reduce the period to one year, under R.S. § 4886, 35 U.S.C.A. § 31, as it existed at the time of the filing of the application and at the time of the issuance of patent 785, a patent was invalid if there had been public use or sale of the device, apparatus, machine, or process more than two years prior to the filing of the application for the patent. Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5, 613, 616, 59 S.Ct. 675, 83 L.Ed. 1071; Muncie Gear Works, Inc. v. Outboard Marine & Manufacturing Co., 315 U.S. 759, 62 S.Ct. 865, 86 L.Ed. 1171. But an inventor's use of his device or apparatus for experimental purposes is not public use within the intent and meaning of the statute. A use necessarily open to public view is not a public use in the sense of the statute,

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if it is made in good faith solely for the purpose of testing the qualities or operation of the invention. When the subject of the invention is a large machine, it may be tested and tried in a building, either with or without closed doors; and in either event, the use is not a public one within the meaning of the statute, so long as the machine is being used in good faith for experimental purposes. Whether use of an invention is public or private does not necessarily depend upon the number of persons to whom its use is known. The determinative factor is whether the use is made in good faith for purposes of experiment in testing the qualities and operation of the device or apparatus. City of Elizabeth v. American Nicholson Pavement Co., 97 U.S. 126, 24 L.Ed. 1000; Egbert v. Lipmann, 104 U.S. 333, 26 L.Ed. 755; Smith & Griggs Manufacturing Co. v. Sprague, 123 U.S. 249, 8 S.Ct. 122, 31 L.Ed. 141; Electric Storage Battery Co. v. Shimadzu,supra. And use by an inventor in good faith for the purpose of testing his apparatus or device for experimental purposes is not public use within the scope of the statute, even though incidental to such use he derives some financial return. Good faith use of an invention for such purpose is not changed in character merely by the receipt of incidental profit or gain. Smith & Griggs Manufacturing Co. v. Sprague, supra; Aerovox Corp. v. Polymet Manufacturing Corp., 2 Cir., 67 F.2d 860.

In the ordinary action based upon infringement of a patent, public use or sale is an affirmative defense to be pleaded and proved. Electric Storage Battery Co. v. Shimadzu, supra. And it has long been settled law that when prior use or sale is relied upon to defeat the presumption arising from the grant of a patent, the evidence tending to establish such use or sale must be sufficiently clear, cogent, and satisfactory as to remove all reasonable doubt thereof. Coffin v. Ogden, 18 Wall. 120, 21 L.Ed. 821; Cantrell v. Wallick, 117 U.S. 689, 6 S.Ct. 970, 29 L.Ed. 1017; The Barbed Wire Patent, 143 U.S. 275, 12 S.Ct. 443, 36 L.Ed. 154; Deering v. Winona Harvester Works, 155 U.S. 286, 15 S.Ct. 118, 39 L.Ed. 153; Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 43 S.Ct. 322, 67 L.Ed. 523; Zachos v. Sherwin-Williams Co. 5 Cir., 177 F.2d 762. But when use is shown more than the statutory period antedating the filing of the application for the patent, it is incumbent upon the patentee to show that such use was experimental only. General Electric Co. v. Minneapolis-Honeywell Regulator Co., 2 Cir., 118 F.2d 278.

The application which matured into patent 785 was filed August 1, 1933. The court found that a frame straightening apparatus or machine embodying the construction disclosed in the patent and as defined in the two claims had been in public and commercial use by the defendant in his shop or garage in Denver Colorado, at least as early as the spring of the year 1931. The finding is challenged on the ground that the evidence was insufficient to meet the severe legal test having application in a case of this kind. The defendant owned and operated a shop in Denver. The building was approximately 120 feet in depth from front to back, and its entrance was on a public street...

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