McCreery Engineering Co. v. Massachusetts Fan Co.

• Decision Date: 03 February 1911
• Docket Number: 667.
• Citation: 186 F. 846
• Parties: McCREERY ENGINEERING CO. v. MASSACHUSETTS FAN CO. et al.
• Court: U.S. District Court — District of Massachusetts

186 F. 846

McCREERY ENGINEERING CO. v. MASSACHUSETTS FAN CO. et al.

No. 667.

United States Circuit Court, D. Massachusetts.

February 3, 1911

Samuel D. Elmore, for complainant.

Stewart Coolidge & Rand and Roberts, Roberts & Cushman, for defendants.

LOWELL Circuit Judge.

This is a bill in equity to restrain the infringement of letters patent No. 917,185, issued April 6, 1909, to Taylor, for improvements in apparatus for tempering and purifying air. The original bill was brought against several parties, but all the defendants have now been eliminated except the Fan Company. This defendant has pleaded in substance that, during the pendency of his application, Taylor represented to the Commissioner of Patents that the subject-matter of his application, shown in his specification and drawings, had been 'in public use and on sale and had been sold in the United States of America more than two years before (Taylor's) application was filed' in the Patent Office, March 5, 1908; that the patent was therefore void because of the Commissioner's error in granting the patent. There was no public use of the invention, and the question before the court comes to this: Was the invention on sale before March 5, 1906? Rev. St. Sec. 4886, reads as follows 'Any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter or any new and useful improvement thereof, not known or used by others in this country, and not patented or described in any printed publication in this or any foreign country, before his invention or discovery therof, and not in public use or on sale for more than two years prior to his application, unless the same is proved to have been abandoned, may, upon payment of the fees required by law, and other due proceedings had, obtain a patent therefor.'

It will be observed that the phrase of the statute is 'on sale for more than two years prior to his application. ' Were the question a new one, it might be argued that, in order to defeat the patent, the law requires a substantially continuous sale of the invention throughout the two years; but the cases dealing with the matter have assumed that the patent is void if the invention was ever on sale more than two years before the application was filed.

The defense is here rested by the plea on the evidence contained in the file wrapper, which is annexed thereto. This shows that Taylor's application was originally rejected by the Patent Office because of a prior disclosure of the invention in certain patents which did not lay claim to it. There was disclosure, but no interference. The file wrapper goes on to show that Taylor, in order to meet the effect of the admitted disclosure, and to overcome the action of the Patent Office, filed there, under rule 75, two affidavits for the purpose of carrying back his invention beyond the date of the disclosure.

These affidavits set out in substance that, on March 16, 1905, Taylor was engineer in charge of the manufacture and installation of plants made by the complainant; that on or about February 27, 1905, the complainant entered into a contract with the Second Church of Christ, Scientist, in Kansas City, Mo., to furnish it with a structure made in substantial accordance with Taylor's application; that this contract provided for the completion of the work on February 27, 1906, but that the work was not completed at that time, but later, and just before July 3, 1906, when there was a settlement of a contract, and the apparatus was paid for. The price of the apparatus, as shown by letters included in the file wrapper, was $1,875, which sum included a commission to the builders or architects of 10 per cent. The apparatus was built in the church, and was not manufactured outside of it and delivered to it as a completed article. As stated by the complainant in its brief, at page 2:

'It appears that an executory contract was entered into for the installation of an apparatus, the terms of the contract calling for its completion more than two years prior to the filing of the application. The affidavits further show, however, that the contract was not complied with in this respect, and that the apparatus was not completed and delivered more than two years prior to the

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