Hoe v. Kahler
| Decision Date | 23 October 1885 |
| Citation | 25 F. 271 |
| Parties | HOE and another v. KAHLER. |
| Court | U.S. District Court — Southern District of New York |
B. F Thurston and M. B. Phillipp, for plaintiffs.
B. F Lee and W. H. L. Lee, for defendant.
The bill in this case was filed April 21, 1879, the answer on August 9, 1879, and an amended answer on October 7, 1879. The proofs were taken between February 16, 1880, and July 7 1881. The case was heard on December 6, 1881, and decided on March 27, 1882, in an opinion reported in 20 Blatchf. 430 and 12 F. 111. A decree was ordered in favor of the plaintiffs on claims 3 and 4 of the patent sued on, and was entered May 5, 1883. It declared the validity of the patent and the infringement of claims 3 and 4, and ordered an account of profits and damages before a master, and a perpetual injunction as to claims 3 and 4. The accounting has been had, and the master has reported no profits and six cents damages. Both parties have stipulated to file no exceptions to the report. Before the reference was closed and the report made, and on the thirteenth of July, 1885, the defendant gave notice of a notice for the relief prayed for in a petition sworn to July 11, 1885.
The petition sets forth that one of the defenses urged on the hearing was that the oath to the application by Mr. Hoe was not taken before an officer authorized to administer oaths, and that, as a matter of law, no oath to the application was ever taken by Mr. Hoe; that, although a certified copy of the file-wrapper, and contents in the matter of the patent was in evidence, the court held that, under the pleadings and evidence, the defense was not properly made out; that it is the practice in the patent-office to preserve all papers filed in support of the application for a patent, as well as the communications between the applicant and the office, a memorandum of which is placed on the file-wrapper, together with the date of the receipt of each paper, and of the sending of any communication from the office in respect thereto, and of all other proceedings had in the office; that the file-wrapper and contents contain a complete record of the proceedings had on an application for a patent, together with the memoranda referred to as being on the file-wrapper; and that the file-wrapper and contents are prima facie evidence of the complete record of the application for a patent, and of the papers filed in support thereof, and of the communications in respect thereto, and can only be rebutted by competent evidence.
The petition further sets forth that since the decision of this cause certain cases have been decided by the supreme court of the United States which, had they been decided prior to the hearing and decision of this cause, would have caused this court to rule that the defense above set forth was well taken, and refers to the case of Mahn v. Harwood, 112 U.S. 354, S.C. 5 S.Ct. 174, and cases there cited, as holding that where the commissioner of patents has exceeded his authority in granting or reissuing a patent, such fact furnishes a good defense to a suit brought for its infringement.
The petition also sets forth that in several cases in which the validity of a reissue was in question the supreme court of the United States has held that the question was properly raised upon pleadings no more explicit and exact than those in the case at bar.
The petition also sets forth that a defense urged in behalf of the defendant was that the patent was not infringed by him; that there have been several cases in the supreme court of the United States which, had they been decided prior to the hearing and decision of this cause, would have caused the defendant's contention in that behalf to prevail; that the tendency of the decisions referred to has been to confine a patentee to a strict construction of his claims, and to include within a claim nothing which was not included within its language, and not to extend it beyond the objects set forth in the specification as those designed to be accomplished by the inventor; that, in accordance with that rule, nothing contained in the claim can be excluded from it to prevent a narrowing of its scope; and that this relates to claims 3 and 4 of the patent in suit.
The petition also sets forth that a defense urged as to claim 4 was the non-patentability of its subject-matter in view of the state of the art; that an adjusting roller exactly like that mentioned in claim 4 is shown by the record to have been previously used for similar or analogous purposes; and that, under decisions made by the supreme court of the United States since the hearing and decision of this cause, it must be held that the subject-matter of claim 4 was not patentable.
The petition also sets forth that the petitioner is desirous of being further heard on the effect of the filing of the caveat by Hoe; and on the question whether the alleged inventions of claims 3 and 4 were those of Hoe alone or of the plaintiffs jointly; and as to the anticipation of the alleged inventions by Campbell; and as to whether the patent, in any event, was not surreptitiously and unjustly obtained for that which was in fact invented by Campbell, who was using reasonable diligence in adapting and perfecting the same; and as to whether, as a matter of law and public policy, inventors can be allowed to keep their invention dormant for so many years.
As reasons for the delay in applying for the rehearing, the petition sets forth that the plaintiffs did not proceed with the accounting till near the end of the year 1884, and that the practical effect of the decree has recently become much more onerous than before, because the defendant is now largely interested in making printing-presses, and the decree is now being used to the detriment of his interests, and to prevent the sale of machines to parties who would otherwise purchase them.
The petition prays that the court will order a rehearing; that, if it deems it necessary, the proofs may be opened to show the practice in the patent-office in regard to preserving papers filed in applications for patents, and letters to and from the office, and in regard to the record of the proceedings, and the dates of filing papers, and of receiving and sending communications, and the scope and functions of a file-wrapper and contents, in the matter of a patent; and that the defendant may be allowed to amend his answer, and allege that the patent is void in that Hoe never made oath to the application, and the commissioner exceeded his jurisdiction in issuing the patent.
The petition is not sworn to by the defendant, but is sworn to by one of his solicitors, for the reason stated in the affidavit that the defendant resides in Chicago, Illinois, and is absent from the state of New York.
The petition is supplemented by an affidavit made by the defendant on the first of October, 1885, which sets forth that in November, 1884, he became largely interested in the Bullock Printing-press Company, an Illinois corporation, which owns his patent, in accordance with which the machine complained of as an infringement in this case was made; that that corporation is deterred from using the device in controversy by reason of the injunction ordered against him, and is desirous of making machines containing it; that no effort was spared prior to the original hearing to obtain every possible defense and present it to the court; that he made exhaustive inquiries among printing-pressmen and others, and experts were employed to examine into the state of the art, and an exceptional amount of time and labor was spent in so doing; and that at the time of the first hearing he knew of no defense which had not been set up.
At the hearing on the petition the defendant presented to the court an affidavit sworn to September 26, 1885, by Mr. B. F. Lee one of his solicitors, setting forth that the plaintiffs had sought to carry back the date of their invention to the date of the caveat filed by Hoe in 1854; that in 1876, the affiant was also counsel for the Bullock Printing-press Company the plaintiff in a case against George Jones as treasurer of the New York Times; that in that case Stephen D. Tucker, one of the plaintiffs in this suit, was examined as a witness, and there testified, in substance, that the efforts of Hoe and himself to construct a delivery apparatus were in the experimental stage, and were still unsuccessful, as late as 1859 or 1860; that during the taking of the testimony in this cause he had entirely forgotten the fact that the examination of Tucker in the suit against the New York Times contained that piece of evidence, as he had been engaged in a large number of other cases, and had been very busy with other matters in the interval; that he considers that the introduction of that evidence is of great importance in this cause, for the following reasons: that the plaintiffs contend, and the court has decided, that claim 3 of the plaintiffs' patent is to be so construed as to include merely the device of the caveat, consisting of a switch, a long tape path and a short tape path, and the invention is thus sought to be carried back to 1854; that Tucker shows, by his evidence in the Times Case, that Hoe...
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