Coffield Motor Washer Co. v. A.D. Howe Co.

• Decision Date: 08 September 1909
• Parties: COFFIELD MOTOR WASHER CO. v. A. D. HOWE CO.
• Court: U.S. Court of Appeals — Fourth Circuit

172 F. 668

COFFIELD MOTOR WASHER CO. v. A. D. HOWE CO.

United States Circuit Court, N.D. West Virginia.

September 8, 1909

The complainant has filed its bill in this cause, alleging the issuance to Peter T. Coffield on December 12, 1905, of letters patent No. 806,779 for water motors, the assignment thereof on March 20, 1906, by Coffield to the firm of P. T Coffield & Son, the surrender by this firm of this original and the issue to it on November 12, 1907, of reissue letters patent No. 12,719 for the same invention, the assignment on May 28, 1909, of said reissue patent by said firm of P. T Coffield & Son to complainant, a corporation under the laws of Ohio; that the defendant, a West Virginia corporation with full knowledge of the rights of complainant under such letters patent and in violation thereof, are manufacturing and selling water motors substantially the same as those manufactured by complainant and protected thereby; that the validity of said reissue patent has been upheld by this court in the cause of P. T. Coffield & Son v. Spears & Riddle Company. The prayer of the bill is for injunction and accounting. Filed with the bill as exhibits and in support thereof are copies of the original and reissue letters patent, the assignment thereof to complainant, the affidavits of Frank C. Wagner, Peter T. Coffield, and James L. Coffield various pamphlets and advertising matter used by the parties, and letters received and sent between them touching the controversy. Upon this bill and exhibits the order of this court issued June 12, 1909, requiring the defendant company to show cause on July 13, 1909, why the preliminary injunction prayed for should not be granted, and requiring copies of the bill and exhibits to be served forthwith upon defendant, and allowing it to file and serve copies, affidavits, exhibits, etc., on or before June 30, 1909, and allowing complainant to file reply affidavits, exhibits, etc., on or before July 8, 1909. Under this order complainant has filed as of July 8, 1909, the 'file wrapper contents of Howe & Ornold patent' and affidavits of James L. Coffield, Mathew Siebler, John T. Hoban, William F. Minnich, Frank J. Walsh, W. H. Myers, Samuel Brown, and A. J. Pocock.

On July 13, 1909, at the hearing, the defendant filed its 'answer and cross-bill,' the certified copy of an affidavit of Peter T. Coffield filed in the Circuit Court of the United States for the Southern District of Ohio in a suit of The A.D. Howe Co. v. P. T. Coffield & Son, the affidavits of E. J. Ornold, Royce A. Ruess, Ralph W. Howe, W. T. Terry, H. C. Ulrich, and L. L. Cotton, with certain advertising pamphlets and correspondence. The defendant in its answer sets up title by assignment to a patent applied for May 7, 1906, and issued January 15, 1907, No. 841,649, to Ralph W. Howe and Edwin J. Ornold for a water motor which it insists does not infringe complainant's one, presents a distinct and patentable improvement upon the latter, and that, on account thereof, the firm of Coffield & Son resorted to the subterfuge of securing its reissue patent No. 12,719 in order to cover the Howe and Ornold improvement. It is further alleged that prior to issue of complainant's original patent No. 806,779 a patent had issued to one J.L. stetz, No. 516,410, for the same invention which is now owned by defendant; that by reason of its intervening rights complainant's reissue patent is invalid and inoperative as to defendant, and, inasmuch as complainant is manufacturing and selling motors under it that infringe its patent, it prays affirmatively in this answer that complainant be enjoined from so doing. On July 10, 1909, complainant filed a formal motion in writing to strike out its answer purporting to be a cross-bill praying affirmative relief as being filed without notice and without leave of the court. The cause has been elaborately argued orally and in briefs filed and submitted upon complainant's two motions to strike out the answer and for preliminary injunction.

R. J. McCarty, for complainant.

John J. Coniff and H. E. Dunlap, for defendant.

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

In the case of Peter T. Coffield & Son v. Spears & Riddle et al. (C.C.) 469 F. 641, I fully considered the validity of complainant's reissue patent No. 12,719 in view of the prior art, and therein stated that I had no trouble 'in reaching the same conclusion arrived at by the Board of Appeals in the Patent Office, that Coffield, the patentee, was the first to use in connection with the elements of the mechanism springs which complete the stroke of the valve, and that, taken as a whole, the device is new, useful, and patentable. ' I further said in that case:

'As to the technical defenses touching alleged irregularities in the Patent Office in the issuing of the original and reissue patents without proper affidavits and evidence of inadvertence, accident, or mistake, it is to be remembered that no such irregularities will be assumed to have occurred, but, on the contrary, the granting of the patent is prima facie evidence that the law has been complied with, and fatal irregularities in the Patent Office must not only be aptly pleaded but shown by full and satisfactory proof.

In case the original patent has been surrendered and a reissued one has been granted, it has been held that such office proceedings can only be impeached for fraud.'

After a careful reconsideration of the question, I can find no reason for doubting the soundness of these legal principles. In Seymour v. Osborne, 11 Wall. 543, 20 L.Ed. 33, it is said:

'When the Commissioner of Patents accepts a surrender of an original patent, and grants a new patent, his decision in the premises in a suit for infringement is final and conclusive, and is not re-examinable in a suit in the Circuit Court, unless it is apparent upon the face of the patent that he has exceeded his authority, that there is such a repugnancy between the old and the new patents that it must be held as a matter of legal construction that the new patent is not for the same invention as that embraced and secured in the original patent'-- citing Battin v. Taggert, 17

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