Brooks v. Sacks

• Decision Date: 10 June 1897
• Docket Number: 192.
• Citation: 81 F. 403
• Parties: BROOKS et al. v. SACKS.
• Court: U.S. Court of Appeals — First Circuit

81 F. 403

BROOKS et al. v. SACKS.

No. 192.

United States Court of Appeals, First Circuit.

June 10, 1897

Benjamin F. Rex, for appellants.

William P. Preble, Jr., for appellee.

Before COLT and PUTNAM, Circuit Judges, and WEBB, District Judge.

PUTNAM Circuit Judge.

There is only one claim in this patent, and its pith is that the same last is made capable of being placed and held in a horizontal position or in an oblique one, at the option of the user, merely by reversing it. The essence of the device is a standard with a tenon at the upper end, one side of which tenon runs in a vertical line and the other side in an oblique line, and a last with a socket in it, which the tenon fits exactly. When the last is fitted to the tenon in one position, it lies horizontally, or substantially so, and when placed in the reverse position on the tenon, it lies obliquely; and in each case, on account of the simplicity of construction, it is held firmly. The purpose sought by this reversibility is not set out in the patent, and is differently stated by the counsel on either side, but its advantages are obvious. Previous to this device on Dusenbery's device, to which we will hereafter especially refer, its purpose was accomplished by using two standards or two lasts. Numerous patents are proven for the purpose of showing anticipation; but, aside from Dusenbery's, the purpose and principle of the operation of each of them were so substantially different that we need not refer to them in detail. The principle of operation of the device in issue results from the application of a certain geometrical form and is perfectly apparent to any geometrician; but whether or not, prior to the two patents to which we shall limit our discussion (that of the complainant below and that of Dusenbery), the principle had been applied in the arts to such an extent as to render unpatentable its application to any particular art, is not shown by the record, and cannot be determined by us as a matter of common knowledge; and we are therefore brought to the conclusion that either the patent sued on, or the other patent to which we will especially refer, was the first in which the principle in question was adapted to this art, and that its adaptation was not so clearly lacking in invention as to overcome the presumption arising from the issuing of the patent.

On the mere question of infringement there appears to be no difficulty. The essential question is that of anticipation by Dusenbery. The complainant's application was filed March 21, 1890, and his patent issued December 23, 1890. Dusenbery obtained a patent for a pegging jack, issued June 24, 1890 on an application filed October 12, 1889. This patent shows the use of precisely the same principle as the complainant's device, and for the same purpose. Instead of using a tenon and a mortise, Dusenbery used a V-shaped notch, or, as he calls it, 'a pair of fingers,' each of which had the vertical and oblique lines, fitting into corresponding recesses on the opposite sides of the last. Of course, the mechanical changes involved in the use of a tenon and a socket in lieu of the double tenon and the double mortise, or vice versa, cover no statutory invention. It is true that under well-settled rules, inasmuch as the two patents were pending in the patent office at the same time, and both of them were granted, there is a prima facie presumption that each was properly granted. Boyd v. Tool Co., 158 U.S. 260, 15 Sup.Ct. 837. Nevertheless, it is clear to us that both patents are for the same thing, so far as any inventive quality is concerned, and that only one of them can stand. Therefore we are brought to the question of priority as between the complainant below and Dusenbery.

It will be noticed that Dusenbery's application was first filed so that it is settled law that the burden was thrown on the complainant below to prove priority in behalf of his patent to the satisfaction of the court, and by evidence which shall strongly outweigh that of the respondents below, if not beyond a reasonable doubt. Manufacturing Co. v. Sprague, 123 U.S. 249, 264, 8 Sup.Ct. 122; Clark Thread Co. v. Willimantic Linen Co., 140 U.S. 481, 492, 11 Sup.Ct. 846; Walk. Pat. (3d Ed.) 70. The inherent dangers of oral proofs in this class of cases are explained in The Barbed-Wire Patent, 143 U.S. 275, 284, 285, 12 Sup.Ct. 443, 450, and in Deering v. Harvester Works, 155 U.S.286, 300, 301, 15 Sup.Ct. 118. On an issue made directly between the two patents under section 4918 of the Revised Statutes, or otherwise, the complainant below would be required to prove earlier invention in his behalf beyond reasonable doubt. Morgan v. Daniels, 153 U.S. 120, 14 Sup.Ct. 772. And, as shown by the cases cited, the same would be the fact if he should be...