Thayer v. Hart

• Decision Date: 01 June 1884
• Parties: THAYER v. HART, Jr., and others.
• Court: U.S. District Court — Southern District of New York

20 F. 693

THAYER v. HART, Jr., and others.

United States Circuit Court, S.D. New York.

June, 1884

Josiah P. Fitch, for complainant.

Frederic H. Betts and C. Wyllys Betts, for defendants.

COXE J.

The complainant is the owner of letters patent No. 202,673, dated April 23, 1878, for an 'improvement in neck-tie shields.' The application was filed December 20, 1877. The defendants are owners of letters patent No. 220,610 dated October 14, 1879, for a similar invention. Their application was filed August 28, 1879. Both patents are designed to secure a pin formed with a shoulder, and so constructed that it may be conveniently and firmly attached to a neck-tie shield without using any device for the purpose of fastening except the pin itself. The only difference so far as the pin in question is concerned, irrespective of the method of attaching it, is, that in complainant's device the upper end of the pin is turned away from the point, and in defendant's it is turned towards the point. The principal controversy relates, therefore, to the question of prior invention. The complainant's patent antedating the defendants', it was incumbent upon them to prove beyond a reasonable doubt that theirs was the prior invention. This they have done by proof so positive that the complainant's counsel conceded on the argument that the date of their invention was January 15, 1877; 11 months prior to the filing of the complainant's application. This date being fixed the burden was transferred to the complainant to satisfy the court by proof as convincing as that required of the defendant that his invention preceded theirs. The rule in such cases is very strict. It is so easy to fabricate or color evidence of prior invention and so difficult to contradict it, that proof has been required which does not admit of reasonable doubt. Where interests so vital are at stake, where intervening years have made perfect accuracy well nigh impossible, where an event, not deemed important at the time, has been crowded from the memory and obscured by the ever varying incidents of an active life, it is not difficult to imagine that even an honest man may be led erroneously to persuade himself that the fact accords with his inclination concerning it.

The evidence of prior invention is usually entirely within the control of the party asserting it, and so wide is the opportunity for deception, artifice, or mistake, that the authorities are almost unanimous in holding that it must be established by proof clear positive and unequivocal; nothing must be left to speculation or conjecture.

In Coffin v. Ogden, 18 Wall. 120, Mr. Justice SWAYNE says:

'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 Webster Loom Co. v. Higgins, 4 Ban. & A. 88, the court (at page 98) says:

'The burden of proof rests upon the defendants, to show, beyond a fair doubt, the prior knowledge and use set up; but, where they have sustained that burden by showing such knowledge and use prior to the patent, the burden of showing the still prior invention claimed, by at least a fair balance of proof, must rest upon the plaintiff.'

In Wood v. Cleveland Rolling-mill Co., 4 Fish. 550, the court, referring to the witnesses called to establish prior invention, says, at page 559:

'Their imagination is wrought upon by the influences to which their minds are subjected, and beclouds their memory. When the defense is made, it is the duty of courts and juries to give it effect. But such testimony should be weighed with care, and the defense allowed to prevail only where the evidence is such as to leave no room for a reasonable doubt upon the subject.'

In Howe v. Underwood, 1 Fish. 160, Judge SPRAGUE, at page 175, says:

'How invariable is it that after a great invention has been brought before the world, has become known to the public, and put in form to be useful, that people start up in various places and declare that they invented the same thing before. After having seen what has been done, the mind is very apt to blend subsequent information with prior recollections, and confuse them together. Prophecy after the event is easy prophecy.'

Within the rule thus established the question to be answered here is: Has complainant satisfied the court beyond a reasonable doubt that he conceived his invention prior to January 15 1877? ...