Dey Time Register Co. v. W.H. Bundy Recording Co.

• Decision Date: 04 April 1910
• Docket Number: 195.
• Citation: 178 F. 812
• Parties: DEY TIME REGISTER CO. v. W. H. BUNDY RECORDING CO.
• Court: U.S. Court of Appeals — Second Circuit

178 F. 812

DEY TIME REGISTER CO. v. W. H. BUNDY RECORDING CO.

No. 195.

United States Court of Appeals, Second Circuit.

April 4, 1910

On Petition for Rehearing, May 2, 1910.

Drury W. Cooper and John C. Kerr, for appellant.

Arthur E. Parsons, William F. Hall, and Frederic G. Bodell, for appellee.

Before LACOMBE, COXE, and NOYES, Circuit Judges.

LACOMBE Circuit Judge.

The exhaustive opinion of Judge Ray fully sets forth the particular improvement which it is alleged that defendant infringes. Briefly stated it consists in providing a workman's time recorder with means adapted to print regular records in a certain color and irregular records in a certain other color. As appellant expresses it in his brief the invention is:

'The automatic or clock-controlled time printing means that prints the regular records in one color, and, without supervision or resetting, makes the irregular or short-time records of a different hue.'

This result is accomplished by the use of a two-color printing ribbon interposed between the type wheel and the platen which may be shifted laterally, so that when one color registers with the type wheel the impression is in that color, and when the ribbon is shifted so that the other color registers with the wheel the impression is in that color. There are 66 claims. Infringement is charged of Nos. 35, 54 60, 61, 62, 63, and 64 only. In these claims the shifting of the ribbon is automatic and clock-controlled. Complainant concedes that a manually operated ribbon device is positively excluded from these claims. Of course, it is only with the automatic, clock-controlled shifting ribbon that this case is concerned.

We do not find it necessary to review the discussion of Judge Ray as to the construction of the several claims, and the differences between the patented device and the device of defendant. This opinion will be confined to a defense apparently not made prominent in the Circuit Court, but which seems to us effectually to dispose of the case.

Prior to the application for the patent there were in existence the complainant corporation and the International Time Recording Company, both engaged in the manufacture and sale of time recorders and actively competing with each other. Since January, 1907, they have been brought under common control through the purchase by the International of the Dey Company stock.

There was also a corporation, known as the American Type Founders' Company, connected with which was one Walter S. Marder. Complainant, in order to establish some particular point, called Charles U. Briggs, a foreman of the International Company, who upon cross-examination testified that said company had made two-color ribbon recorders, which operated some manually and some automatically; also that his 'recollection was that the first automatic two-color ribbon machine was completed some time in September, 1904. ' Complainant then called the secretary of the International Company, who on cross-examination testified, on reference to the books and records of that company, that it shipped on September 12, 1904, an automatically shiftable two-color ribbon mechanism. Complainant frankly conceded that this mechanism would be covered by the claims in suit and that the making of such a mechanism prior to the date of application (November 15, 1904) is proved. The burden is upon the complainant to show the production by the patentees of the same operative mechanism prior to September 12, 1904. It is necessary, therefore, to examine critically the testimony relied upon to establish that proposition. Taking it up in the order in which it appears in the record, we find the following:

Thomas G. Sanders testified in July, 1906, in an interference between Marder and the patentees; Marder contending that he had first suggested the idea of a shifting two-color ribbon to the Deys and others. The result of the interference was adverse to Marder; but that result does not establish the proposition as against the rest of the world that the patentees had perfected their invention prior to September 12, 1904. It happened that, when Sanders and the succeeding three witnesses were examined in the interference proceeding Marder's counsel was not present, and therefore these witnesses were not cross-examined. That circumstance, also, is not material. The testimony was stipulated into the record in this suit as what the witnesses would have testified if they had been recalled. We merely take their testimony as being all that complainant here has elicited from them in support of the proposition it is undertaking to establish.

Sanders testified: That he had been in the employ of complainant as a mechanic in their factory at Syracuse for upward of seven years, and was familiar with the manufacture and construction of time recorders. That, under instructions from John and Alexander Dey, the active heads of complainant's business, he constructed a time recorder with a shiftable two-color ribbon, whereby records of different classes could be printed in distinctive impressions. He was foreman at the time, and did the work with the assistance of another workman, John Wendel. That he began to build it in the early part of September, 1903, fixing the date by the circumstances that the State Fair was held in Syracuse in 1903 from September 7th to 12th, and he was so busy with this particular work that he could not get away to attend the fair. That the factory was moved from State street to West street in January, 1904, and he began on this machine about four months before the moving. That work on the machine was continuous, and it was completed during October, 1903, and tested to show that it would work satisfactorily. His description shows that this machine was the same as that of the patent, except that the arms which carried the ribbon were moved by hand. That this machine was kept in the factory for a short time, and then shipped to a user.

That while he was at work on this first machine Alexander Dey gave him instructions as to another design of two-color ribbon recorder; the principal feature of difference being that the ribbon was shifted automatically. That work was begun on this second machine in the latter part of October, 1903, right after the completion of the first machine. The work on it was continuous, and it was finished in the latter part of January, 1904, after they had moved the factory. He did not remember what was done with this first automatic machine after it was tested and found satisfactory. Afterwards other machines were built along the same lines.

John Wendel testified: That he was in the employ of complainant as a mechanic from 1895 to 1906. That he worked on two-color ribbon time recorders under Alexander Dey's instructions. That Sanders was there all the while, and kept watch of the work. That he received his first instructions in regard to the machine in the first part of August, 1903, and worked at it right along 'quite a while' until it was finished, when it was tested and sent away. That this first machine operated by hand, and after it was built he assisted in building another machine under Dey's directions, which operated automatically. He did not definitely remember the dates in connection with this machine, only that it was taken up after the hand machine and finished some time after that. That they moved some time in January, 1904, and that he began work on the two-color proposition in August before they moved.

Alexander Dey, one of the patentees, testified: That he came here from Scotland in May, 1903, joined his brother at the factory, and from the moment he arrived set about putting their ideas on two-color printing into practical shape. That some time in August Wendel as mechanic and Sanders as foreman were set to work on the hand-operated machine, which was completed, tested, and worked beautifully; and that they immediately set to work to complete the application of the automatic shifting, 'which was a far more serious matter.' That to the best of his recollection Wendel and Sanders started work in August, or most certainly by the early part of September, 1903, and the first hand-operated machine was completed by October 15th. That they did not intend or wish to put the hand-operated machine on the market, and only consented to do so later on from urgent representations from their agents. That the first automatic machine was completed and tested some time in February, 1904, and shipped to a user about the end of March. The witness said that the elements by which he fixed these dates were 'the changing of the factory, my own arrival in this country, the time necessary to make the various changes in the machine, and the changing of Wendel from one department to another. ' He referred to no records or dated documents to verify his dates.

John Dey testified: That the work on the first machine was begun by Sanders and...