Davis-Bournonville Co. v. Alexander Milburn Co.

• Decision Date: 26 May 1924
• Docket Number: No. 348.,348.
• Parties: DAVIS-BOURNONVILLE CO. v. ALEXANDER MILBURN CO.
• Court: U.S. Court of Appeals — Second Circuit

1 F.2d 227 (1924)

DAVIS-BOURNONVILLE CO. v. ALEXANDER MILBURN CO.^*

No. 348.

Circuit Court of Appeals, Second Circuit.

May 26, 1924.

COPYRIGHT MATERIAL OMITTED

Pennie, Davis, Marvin & Edmonds, Dean S. Edmonds, J. F. Brandenburg, and E. H. Merchant, all of New York City, for plaintiff.

A. Parker Smith, of New York City, and James A. Watson, of Washington, D. C., for defendant.

Thomas Ewing, of New York City, amicus curiæ.

Before HOUGH, MANTON, and MAYER, Circuit Judges.

HOUGH, Circuit Judge (after stating the facts as above).

The case was tried below under a quite usual stipulation of parties with regard to plaintiff's title to the patents in suit. After decision rendered, but before decree entered, defendant, having discovered some asserted defect in plaintiff's title, moved to be relieved from its stipulation and in effect to retry the cause. This motion was denied, and defendant assigns for error the court's refusal to permit withdrawal from the stipulation and filing a supplemental answer.

It is somewhat difficult to perceive defendant's right to urge this point. We hear this appeal solely by virtue of the statute. Judicial Code, § 129 (Comp. St. § 1121). Each party's right to appeal arises from the granting or refusing of an injunction. The decree appealed from makes no reference to the matter of this stipulation.

An appeal from a final decree brings up all interlocutory matters, but an appeal from an interlocutory decree brings up only those matters covered by the statute allowing an appeal unknown to the historic course of equity. The defendant's technical right to urge this point from such a decree, and one that says nothing at all about this stipulation, is not perceived. Harding v. Corn Products, 168 Fed. 658, 94 C. C. A. 144.

But the real point in controversy is plain enough from the papers submitted. Therefore, although we hold the point not technically presentable, we express opinion on the merits, as follows, viz.: Granting or refusing leave to retire from a stipulation is a matter of discretion, and no abuse of discretion is shown herein. On the contrary, a most equitable method of curing the difficulty was pointed out by the trial judge, and defendant refused to accept the suggestion. It insisted as a right upon that which was always a matter of grace. There is no substantial merit in this attempted appeal, entirely apart from its technical imperfection.

As to the welding and the first cutting patents it is unnecessary to expand the findings of fact made below by L. Hand, J.

Clumsily, perhaps, and in a mechanical form that failed to win recognition, the Odam French patent (363,119 of 1906) presents every patentable attribute or element contained in the claims of the welding patent in suit. It may be and quite probably is true that Odam's tool could not be said to have tips removable and replaceable by the user — i. e., the mere workman — to meet changing conditions on the job, and to provide welding flames of different sizes; but the claims in suit are not drawn to cover merely a specially convenient tool, but to get as near as the law permits to covering a principle of operation, and everything essential to reducing that principle to practice Odam reveals. That his reduction was not the best one, nor a specially successful one, is immaterial in suit on such claims as the second and third of No. 880,099. We agree with the court below in its exposition of the anticipation found in Odam's published patent.

As to the first cutting patent, there is nothing to add to the opinion below; no question of law is raised, and the decree as to No. 874,666 is correct.

That the second cutting patent is infringed, if valid, and is valid, unless defeated by the plea that Whitford was not the "original and first inventor or discoverer of any material and substantial part of the thing patented," is also a point on which nothing need be added to Judge Hand's opinion. The substantial question on this appeal is raised by the following facts concerning Whitford, No. 1,028,410:

Whitford filed application March 4, 1911, and received patent June 4, 1912. One Clifford filed application January 31, 1911, and received patent February 6, 1912, for a "torch" (No. 1,016,613). Clifford sought and obtained protection for an invention quite distinct from that of Whitford, and his claims do not touch or affect those of Whitford; but in the disclosure of his specification he shows a structure which plaintiff admits "does comply with the requirements of the Whitford patent." The argument for defendant based on Clifford's patent is also rested on two other copending applications; but, as there is considerable doubt as to the similarity of subject-matter or the operative capacity of these other disclosures, we state the question as raised by Clifford alone.

That question is this: Assume two copending applications for patent, both ultimately granted, each disclosing certain substantially identical matter, which matter is not made the basis of claims in, and is not covered by the claims of, the application first filed, but is the basis of, and is covered by, the claims of the later application; under such circumstances can the patent of the earlier filing date be used to invalidate the other patent?

The conditions on which a patent may be granted are set forth in R. S. § 4886 (Comp. St. § 9430), and the usual defenses to a patent once granted in R. S. § 4920 (Comp. St. § 9466). The enumeration of neither section is exclusive. The granting section recognizes that there must be "other due proceedings had" — not described even by reference; and the defense section does not forbid objection to legal or equitable relief, if such objection is inherent in the nature of patent rights, or grows out of the fact that they are property, like other incorporeal hereditaments. Of this the list of possible defenses set forth in Walker on Patents is sufficient proof. But no one can anticipate all possible defenses. The fifth edition of Mr. Walker's book declared in 1917 (section 106) that "no abandonment of an invention after the issue of letters patent has ever been judicially decided to exist in the United States," yet cotemporaneously Macbeth v. General, etc., Co., 246 Fed. 695, 158 C. C. A. 651, was under consideration, which does not in terms, but does in effect, hold that very thing.

If, therefore, without regard to any formal category of defenses, one considers the question whether the statements contained in a specification, but not deemed of sufficient importance by the applicant to form the basis for a claim, should be regarded in equity — i. e., justice — as preventing another person from making the same statement and grounding a claim upon it before the earlier statement has become public, the answer is to us plainly in the negative.

There seems no material difference between the attitude of one who files application for a patent and never presses it and one who does the same thing and never uses a portion of his disclosure. It was held in the Corn Planter Patent, 23 Wall. 181, 23 L. Ed. 161, that a mere application, subsequently abandoned or withdrawn, was no bar to a subsequent patent therefor to another. As Bradley, J., remarked (page 211 23 L. Ed. 161): "It can only have a bearing on the question of prior invention or discovery; * * * the mere fact of having unsuccessfully applied for a patent therefor cannot take the case out of the category of unsuccessful experiments."

We have been favored in this litigation by the brief as amicus of Mr. Ewing, formerly Commissioner of Patents, and are advised that for many years it has not been the Patent Office practice to search for references under abandoned applications. They are treated as having no bearing upon the patentability of matter subsequently presented by others. This settled practice of an "executive branch of the government" in harmony with Judge Bradley's remarks (Bate v. Sulzberger, 157 U. S. 1, at page 34, 15 Sup. Ct. 508, 39 L. Ed. 601), may well justify the holding, now made, that an application for a patent either abandoned or withdrawn has per se no influence at all in ascertaining the state of the prior art.

But in the present instance Clifford pursued his application, and presumably obtained the claims he wanted, none of which rests upon the matter which this defendant wishes to use. When Clifford's patent was published, so much of his disclosures as was not covered by a claim was dedicated or surrendered to the public. Walker (5th Ed.) p. 222, citing Jewell Filter v. Jackson, 140 Fed. 340, 72 C. C. A. 304. And see Brammer Co. v. Witte, 159 Fed. 726, 728, 86 C. C. A. 201; McClain v. Ortmayer, 141 U. S. 419, 424, 12 Sup. Ct. 76, 35 L. Ed. 800; Ball, etc., Co. v. Sanford Co. (C. C. A. 2; Feb. 18, 1924) 297 Fed. 163. But such dedication or "disclaimer" (as it is called by Sanborn, J., in the case first cited) did not and could not take place until the public could become acquainted with what was given to them, and that knowledge could only be gained by the publication of the patent.

Thus the best reason, or a logical reason, for holding, as we do, that no part of a pending application for a patent can be considered as a part of the prior art, is that that phrase "prior art" means something that a man skilled therein may by reasonable, or perhaps unreasonable, diligence discover, and he cannot discover that which is contained in a confidential communication to the Commissioner without coming perilously near, if not committing, a criminal offense, something never presumed. This point has been emphasized in this circuit in Mergenthaler v. International (D. C.) 229 Fed. 168, 172, and Leonard v. Maxwell (D. C.) 288 Fed. 62, 66; and appeals did not modify the holdings...