Interurban Ry. & Terminal Co. v. Westinghouse Elec. & Mfg. Co.

• Decision Date: 24 March 1911
• Docket Number: 2,080.
• Citation: 186 F. 166
• Parties: INTERURBAN RY. & TERMINAL CO. v. WESTINGHOUSE ELECTRIC & MFG. CO.
• Court: U.S. Court of Appeals — Sixth Circuit

186 F. 166

INTERURBAN RY. & TERMINAL CO. v. WESTINGHOUSE ELECTRIC & MFG. CO.

No. 2,080.

United States Court of Appeals, Sixth Circuit.

March 24, 1911

C. V Edwards, for appellant.

L. F H. Betts, for appellee.

Before SEVERENS, WARRINGTON, and KNAPPEN, Circuit Judges.

SEVERENS Circuit Judge.

This is an appeal from an order granting a preliminary injunction by the court below, restraining the appellant from infringing pendente lite, claims 13 and 14 of patent No. 518,693 granted to Lange & Lamme for improvements in controlling switches for electric railways. The patent was issued April 24, 1894. This patent was the subject of a former suit in equity brought by the same complainant against the Electric Controller & Supply Company of Ohio in the Circuit Court for the Northern District of Ohio, for the infringement of the same claims as are herein alleged to be infringed by the present defendant. In that case the validity of this patent, so far as respects the claims 13 and 14, was upheld, and upon proof showing infringement thereof the court entered a decree for the complainant. The defendant appealed to this court, where, in an opinion delivered by Judge Knappen, upon full consideration of all the grounds alleged, particularly the former patents relied upon as anticipating the Lange & Lamme invention, this court sustained the validity of the invention and affirmed the decree of the lower court. 171 F. 83, 96 C.C.A. 187. In the present case, in addition to the former patents shown in the former case, the defendant relies upon newly discovered evidence, and claims that this additional evidence is so conclusive of anticipation and former use as to satisfy the court that these claims of the patent in suit are invalid; in other words, that the proof of the anticipatory matter is now so complete as to show that the lower court was in error in granting the preliminary injunction here complained of. It seems to be conceded by counsel for the appellant that this court would not depart from its former ruling on the patent in suit without satisfactory evidence of other facts which ought to induce a different conclusion in respect to the validity of the patent, and undoubtedly that is the reasonable thing for the appellant to expect.

We come, then, to the consideration of the question, and it is really the only question presented by the case, whether in fact the showing now made is such that the court ought to reach a different conclusion and hold the patent to be invalid. The new facts principally relied upon consist of an application for a patent filed in the Patent Office by one Frank B. Rae on April 13, 1891, for an electric motor controller of an improved construction so nearly resembling that of the Lange & Lamme patent as to seriously endanger the latter patent, if Rae's application had been diligently prosecuted to the issuance of a patent thereon. But for some reason, after having rested in the Patent Office, it was abandoned and allowed to become forfeited on February 20, 1896, about five years after the application had been filed. Evidence was offered which it is claimed tends to show that, before and after this application was filed, public use was made of this invention, extending back more than two years before the filing of the application of Lange & Lamme. We will consider first the application and the filing thereof in the Patent Office.

The defendant claims that the pendency of that application at the time of the filing of the later application was sufficient to defeat the patent obtained by Lange & Lamme. But this contention cannot be maintained. It may be conceded that, if Rae had pursued his application and had obtained a patent, such a consequence might have followed. But Rae's application was not pursued. No patent was ever granted. The result was that, on the forfeiting of his application, the whole proceeding became void. There was nothing in the circumstance that it had been in the files of the Patent Office which was of a character such as to defeat the validity of the Lange & Lamme invention.

'Novelty is not negatived by any prior abandoned application for a patent. Abandoned applications for patents are not, by the statutes, made bars to patents to later applicants. They furnish no evidence that the processes or things they describe were ever made or used anywhere. Being only pen and ink representations of what may have existed only as mental conceptions of the men who put them upon paper, they do not prove that the processes or things which they depict were ever known in any country. Nor can they be classed among printed publications, for they are usually in writing, and are not published by the Patent Office. ' Walker on Patents (4th Ed.) c. 3, Sec. 58.

The statute defines the circumstances required to effect such a result. The applicable provision is that of the third clause of section 4920 of the Revised Statutes (page 3395, U.S. Comp. St. 1901), which in defining the defenses which may be made to a patent says:

'(3) That it had been patented or described in some printed publication prior to his supposed discovery or invention thereof.'

As has been said, an application for a patent pending in the office is not such a printed publication as the statute contemplates, and, indeed, it is not a publication at all. Then with regard to the alleged prior use of the Rae invention. While his application for a patent is of no importance, so far as it is to be regarded as an anticipation of Lange & Lamme's...