Clark v. George Lawrence Co.

• Decision Date: 06 April 1908
• Docket Number: 2,788.
• Citation: 160 F. 512
• Parties: CLARK v. GEORGE LAWRENCE CO.
• Court: U.S. District Court — District of Oregon

160 F. 512

CLARK v. GEORGE LAWRENCE CO.

No. 2,788.

United States Circuit Court, D. Oregon.

April 6, 1908

Coovert & Stapleton, for complainant.

Cake &amp Cake, for defendant.

WOLVERTON District Judge (after stating the facts as above).

It is not seriously contended that complainant's device is not the result of inventive genius. If it were, I think the contention could not be successfully maintained. True, there has been a process of development relative to the idea of a bucking roll such as the complainant lays claim to as the inventor, yet the idea is the result of inventive faculty rather than mere mechanical skill. The suggestion of such a contrivance first came by the rider of an unruly or bucking horse laying a blanket, rolled in form, across the front of his saddle, and tying it fast, to assist him in maintaining his seat, and at the same time to protect him from being thrown forward upon the pommel of the saddle. A rude improvement upon this method is referred to in the testimony where round knobs, in the shape of semispheres, between three and four inches in diameter, were fastened to each prong of the fork of the saddle. This was the idea of a Mexican by the name of H. Salazar, but, so far as the record shows, never came into general use. Another contrivance to which the name of bucking roll came to be attached consisted, in its first stage, of a band running across the front part of the seat of the saddle, being fastened by its ends to the second buttons and sewed or stitched to the seat over the center. Frequently the seat of the saddle was quilted, and this roll quilted to correspond. It served merely to make the seat more comfortable and for ornamentation-- not to prevent the rider in any way from being thrown forward in the saddle. So, also, it was not uncommon for the roll to be enlarged--that is, increased in width and thickness-- to suit the taste of the rider, but not for the especial purpose for which complainant's device was designed. It may be said, therefore, without further elaboration, that complainant's product of a new and improved bucking roll was the result of inventive skill and application.

The two serious questions involved by the controversy are: First, whether complainant's contrivance is void of novelty-- that is, whether it has been anticipated by the work or invention of others; and, second, whether the defendant's device is an infringement upon that of complainant. It may be premised that the patent, having been issued to the complainant by the lawfully constituted authority of the general government, and presumably after examination and investigation, creates a presumption of novelty and utility, and, if nothing else were offered, no evidence of pertinency and force to countervail the recitations of the patent, the complainant would naturally be entitled to its full protection. Haughey v. Meyer (C.C.) 48 F. 679. Further than this, a patent throws the burden upon him who would overthrow or impeach the certified invention for want of novelty; and, whenever an attack is sought to be supported by oral testimony, the adjudications are to the effect that, before it can succeed, 'the proof shall be clear, satisfactory, and beyond a reasonable doubt. ' The Barbed Wire Patent, 143 U.S. 275, 284, 12 Sup.Ct. 443, 36 L.Ed. 154. This case cites Coffin v. Ogden, 18 Wall. 120, 124, 21 L.Ed. 821, where the distinct doctrine is stated thus:

'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. If the thing were embryotic or inchoate, if it rested in speculation or experiment, if the process pursued for its development had failed to reach the point of consummation, it cannot avail to defeat a patent founded upon a discovery or invention which was completed, while in the other case there was only progress, however near that progress may have approximated to the end in view. The law requires, not conjecture, but certainty.'

See, also, Deering v. Winona Harvester Works, 155 U.S. 286, 15 Sup.Ct. 118, 39 L.Ed. 153.

With these premises in view, we can understandingly advance to a consideration of the claims made by which it is sought to establish anticipation of complainant's patent. The Spencer patent is the first introduced. The invention consists of pieces of wood secured near the front end of each of the two parts of the saddletree. These are made a part of the tree, and are not detachable. The patent states that the pieces 'serve to prevent the rider being thrown forward over the saddle and are designed to supersede the ordinary pommel of military saddles. ' The device never, so far as the record shows, came into practical use, although the patent was issued in 1862. The next to be introduced is the Woodruff patent, issued in 1861. It consists of an arrangement of stops, built in an angular position upon the side of the saddle, in such a manner as to gather over the legs of the rider and aid him in keeping down upon his seat in resistance to either a lateral movement of the horse or an abrupt check of its speed, having the tendency to throw the rider forward.

These stops are also designed for military saddles. Like the Spencer, this device has never come into practical use; nor is it detachable.

In each of these cases the invention was rather an improvement upon a saddletree, not a distinct contrivance within itself, adjustable or not to the tree, as the owner might desire. Both patents answered practically the same purpose, which was to gather over the legs of the rider, as specified in the latter patent, and operate as an aid to keeping the rider in place in the saddle. Both were clumsy affairs, and evidently not well suited for the purpose for which they were designed, or they would not have been discarded in use. Like the idea of the use of a blanket made into a roll and tied across the front part of the saddle, they were perhaps an advance in the state of the art, but were still lacking in the adaptability to make them of practical utility. The bucking roll in question is detachable, and answers to one function only, that of preventing the rider from being thrown forward from his seat in the saddle, and it is manifest that the patents relied upon are not anticipations of the complainant's invention.

A third patent, or that of George H. Meeker, is alluded to as having anticipated the complainant's invention; but I do not find it in the record, so am unable to determine as to its pertinency.

Other alleged anticipation is sought to be shown by...