Hayes-Young Tie Plate Co. v. St. Louis Transit Co.

• Decision Date: 05 April 1905
• Docket Number: 2,108.
• Parties: HAYES-YOUNG TIE PLATE CO. v. ST. LOUIS TRANSIT CO.
• Court: U.S. Court of Appeals — Eighth Circuit

137 F. 80

HAYES-YOUNG TIE PLATE CO. v. ST. LOUIS TRANSIT CO.

No. 2,108.

United States Court of Appeals, Eighth Circuit.

April 5, 1905

Syllabus by the Court

An abandonment of an application for a patent is not necessarily an abandonment of the invention, and a patent may lawfully issue on a second application, although the first has been abandoned. In such a case the absence of prior use or sale of the invention for more than two years prior to the second application is indispensable to the validity of the patent.

In cases in which the original application has not been abandoned, subsequent applications and amendments constitute a continuance of the first proceeding, and the two years' public use or sale which may avoid the patent must be reckoned from the presentation of the first application, and not from the filing of subsequent applications or amendments.

The abandonment of an application destroys the continuity of the solicitation of the patent. A subsequent application institutes a new proceeding, and the two years' public use or sale which may invalidate the patent must be counted from the filing of the later application.

The legal presumption is that a decision of a question of fact by an executive officer to whom the law intrusted its determination is correct, and the finding of the Commissioner of Patents under section 32 of the act of July 8, 1870 (16 Stat. 202, c. 230; U.S. Comp. St. 1901, Sec. 4894, C. 8384) that the delay which caused the abandonment of an application was not unavoidable, is sustained by that presumption.

Averments of specific facts or circumstances from which it appears that, if they are true, the fact was probably otherwise than the finding, are essential in a pleading for the purpose of overcoming this presumption. Allegations that the fact differs from the finding, or that the decision is erroneous without more, are futile.

A general allegation in a pleading is controlled and limited by specific averments on the same subject.

The Hayes-Young Plate Company, a corporation, exhibited its bill in the Circuit Court for the Eastern District of Missouri for relief from the infringement of letters patent No. 688,852 issued on December 17, 1901, to James N. Hayes and his assignees. A demurrer to this bill was sustained, and it was dismissed on the ground that it did not state facts sufficient to constitute a cause of action. The material facts stated in the bill were these: On July 23, 1894, Hayes the inventor, filed an application for a patent, which was rejected on October 8, 1894. He was informed of this rejection, but, by reason of illness, infirmity, and lack of funds, the application became abandoned for want of prosecution, under the rules of the Patent Office. After his recovery from his illness he presented to the Commissioner of Patents a petition for the revival of his abandoned application, and accompanied it with good and sufficient reasons for the abandonment; but the commissioner held that these reasons were not sufficient to account for the delay in the prosecution of the application, and advised the inventor to file an entirely new application. On April 15, 1901, he filed a new application as a substitute for or continuation of the original application, and the patent issued on December 17, 1901. There was no averment in the bill that the invention was not in public use or on sale for more than two years prior to the second application, and the court below sustained the demurrer upon this ground.

John C. Higdon (Edward E. Longan and James L. Hopkins, on the brief), for appellant.

Sears Lehmann, for appellee.

Before SANBORN, Circuit Judge, and PHILIPS and RINER, District Judges.

SANBORN Circuit Judge, after stating the case as above, .

The fact that an invention was not in public use or on sale in this country for more than two years prior to the application for the patent is an indispensable condition of its validity, and an averment of that fact is essential to the statement of a good cause of action for its infringement. U.S. Comp. St. 1901, sec. 4886, p. 3382; Walker on Patents (3d Ed.) Sec. 425, p. 350; Krick v. Jansen (C.C.) 52 F. 823, 824; Nathan Mfg. Co. v. Craig (C.C.) 47 Fed. 522, 524; Blessing v. Copper Works Co. (C.C.) 34 F. 753. The chancellor below ruled that the bill in this case contained no allegation that the invention was not in public use or on sale in this country for more than two years prior to the filing of the application of April 15, 1901, although it presented an averment that the invention was not in public use or on sale for more than two years prior to the filing of the application of July 23, 1894. Thereupon he gave to the complainant permission to amend its bill by inserting an allegation therein to the effect that the invention was not in public use or on sale more than two years prior to the second application. The tie company refused to accept this permission, and thus in effect conceded that the court's construction of the pleading was right.

The first question, therefore, is whether or not the absence of public use and sale for two years prior to the filing of the second application was essential to the validity of the patent. Counsel for the appellant contend that it was not, because the second application was either a substitute for or a continuation of the original application, so that the right of the patentees is conditioned by the public use and sale prior to the filing of the first, and not prior to the filing of the second, application. In support of this proposition, they cite many authorities, which have been carefully examined, but they are not inconsistent with these rules, which seem to be well established. There is a wide difference between the abandonment of an invention and the abandonment of an application for it. An abandonment of an application is not necessarily an abandonment of the invention, and, after the application has been abandoned, a valid patent for the invention may nevertheless be secured upon a new application, provided the invention has not gone into public use or been upon sale for more than two years prior to the filing of the latter. In cases in which the first application has not been abandoned, subsequent applications and amendments constitute a continuance of the original proceeding, and the two years' public use or sale which may avoid the patent must be reckoned from the presentation of the first application, and not from the filing of subsequent applications or amendments. U.S. v. American Bell Telephone Co., 167 U.S. 224, 17 Sup.Ct. 809, 42 L.Ed. 144; Colgate v. Western Union Tel. Co., Fed. Cas. No. 2,995; Miehle v. Read, 96 O.G. 426; Thomson-Houston Electric Co. v. Winchester Avenue R. Co. (C.C.) 71 F. 192, 73 O.G. 2155; Godfrey v. Eames, 1 Wall. 317, 17 L.Ed. 684; Smith v. Goodyear Dental Vulcanite Co., 93 U.S. 486, 23 L.Ed. 952; Cain v. Park, 14 App.D.C. 42, 86 O.G. 797, 798; Ex parte Stewart, 4 O.G. 665; Stirling Co. v. St. Louis Brewing Ass'n (C.C.) 79 F. 80; Dederick v. Fox (C.C.) 56 F. 714, 717; Ligowski Clay-Pigeon Co. v. American Clay-Bird Co. (C.C.) 34 F. 328, 333.

But the abandonment of an application destroys the continuity of the solicitation of the patent. After abandonment a subsequent application institutes a new and independent proceeding, and the two years' public use or sale which may invalidate the patent issued upon it must be counted from the filing of the later application. Bevin v. East Hamilton Bell Co., Fed. Cas. No. 1,379; Lindsay v. Stein (C.C.) 10 F. 907; Lay v. Indianapolis Brush & Broom Mfg. Co., 120 F. 831, 835, 57 C.C.A. 313, 317; Mowry v. Barber, Fed. Cas. No. 9,892; Marsh v. Sayles, Fed. Cas. No. 9,119; Ex parte Simpson, Fed. Cas. No. 12,878; Carty v. Kellogg, 73 O.G. 285; Cain v. Park, 86 O.G. 797, 798.

Hence the ultimate question in the case becomes, does the bill disclose the fact that the first application for the patent was abandoned? The act of July 8, 1870, c. 230, Sec. 32, 16 Stat. 202 (U.S. Comp. St. 1901, Sec. 4894, p. 3384), reads in this way:

'All applications for

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