Dalby v. Lynes

• Decision Date: 12 July 1894
• Docket Number: 2,561.
• Citation: 64 F. 376
• Parties: DALBY v. LYNES.
• Court: U.S. District Court — District of Massachusetts

64 F. 376

DALBY v. LYNES.

No. 2,561.

United States Circuit Court, D. Massachusetts.

July 12, 1894

[Copyrighted Material Omitted]

John L S. Roberts, for complainant.

Fish Richardson & Storrow, for defendant.

PUTNAM Circuit Judge.

The answer admits infringement of the third claim of the complainant's patent in the event it is found to be valid. It denies infringement of any other claim, and none such is proven. Therefore, it is conceded that the third claim is alone in issue. The larger portion of the evidence in this cause is directed at alleged prior use and knowledge by others than the inventor. The last affirmation of the rule of evidence touching this defense is in Morgan v. Daniels, 153 U.S. 120, 123, 14 Sup.Ct. 772, where it is applied to the effect of a decision of the commissioner of patents in a case of interference. It is, in substance, that the burden of proof rests on whomsoever sets up this defense, and that every reasonable doubt should be resolved against him. The supreme court seem to have thus laid down a rule touching the weight of evidence not known in the common law in civil causes, with one or two extreme exceptions. A practical illustration of its application is found in Coffin v. Ogden, 18 Wall. 120. Conceding that the prior matter was not embryotic nor inchoate, did not raise any speculation or experiment, and had reached consummation, the court held that prior knowledge and use by a single person was sufficient. This was under the act of 1836; but, so far as it touches the case at bar, we are not aware of any change in the law. Even with reference to public use, with the consent of the inventor, for more than two years prior to his application, the court held, in the well-known case of Egbert v. Lippmann, 104 U.S. 333, that use by a single person was sufficient, if under such circumstances that the knowledge of the use might have been communicated to others without violating any restriction imposed by the inventor; and this court, in Stitt v. Railroad Co., 22 F. 649, remarked (page 651) that it was not necessary that the prior matter should have been actually used for the purpose contemplated, although it must have been capable of such use. We are led to the conclusion that the manufacture of the samples by Evans for Carter meets clearly all the requirements of this defense, in the way in which they were practically understood in the cases referred to. One of the original samples is produced, and there cannot be the slightest doubt that they were made as early as October 31, 1882, and that they anticipated Dalby in every particular. Although they seem to have been used only as samples, and are not proven to have been known to others than Evans, who knit them, his daughter, who aided in finishing them, and Carter, for whom they were knit, yet they were capable of practical use, were complete in every particular, were in no sense experimental, except in the sense of being experimental because apparently they were not offered to the trade or accepted by it, and Carter was under no restriction whatever with reference to the sale, use, or other disposal of them. This defense seems to be fully maintained.

In Converse v. Matthews, 58 F. 246, this court said: 'There is no equity nor public policy which requires that one should be deprived of his just reward who revives a lost art, whether buried for ages or for only a few years, although with the latter there is, of course, more necessity for making sure that the revival was not suggested by the knowledge of what had apparently disappeared.'

Although the statute, in legislating touching what was 'not known or used by others in this country,' contains no limitation of time, and might, so far as its letter is concerned, apply to what was known or used by others within any period whatever, yet it must yield to reason in this particular. Especially is this true with reference to the advance in mechanical arts, so rapid in this generation, as is illustrated by what we further said in Converse v. Matthews, ubi supra:

'With our rapid progress in mechanical improvements, what an ingenious man fails to accomplish to-day, with the appliances now at hand, another ingenious man may accomplish to-morrow, with the better appliances which he then finds; and, if the latter acts from his own resources, he is not to be deprived of the fruits of his ingenuity by reason of the prior failure of to-day, although, without taking into account the change in appliances, it may be difficult to understand why and wherein one failed and the other succeeded.'

This question has been hinted at in the case at bar, but not so thoroughly presented as to enable the court to undertake to lay down any general rules touching it. It comes in answer to the defense of prior use or knowledge by others, and the burden to make out the circumstances supporting it rests on the inventor or complainant. So far as authorities go, the line of investigation in this direction is far from complete, and the authorities themselves are neither definite nor well sustained. In Gayler v. Wilder, 10 How. 477, relied on by the complainant, the instruction to the jury, which was sustained, was as follows:

'If Conner had

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