Paine v. Trask, 41.

• Decision Date: 11 April 1893
• Docket Number: 41.
• Citation: 56 F. 233
• Parties: PAINE v. TRASK. [1]
• Court: U.S. Court of Appeals — First Circuit

56 F. 233

PAINE v. TRASK. ^[1]

No. 41.

United States Court of Appeals, First Circuit.

April 11, 1893

Charles H. Drew, for appellant.

John L S. Roberts, for appellee.

Before PUTNAM, Circuit Judge, and NELSON and WEBB, District Judges.

PUTNAM Circuit Judge.

This is a bill in equity, brought by the appellant to protect a patent for an alleged improved automatic regulator for hot-air furnaces. With other defenses is that of an alleged assignment from the complainant to the American Automatic Furnace Regulator Company, said to bear date and to have been recorded in the patent office before this bill was filed. The bill alleges that the complainant was sole owner of the patent from the time of its issue to the time of the filing of the bill. The answer does not specifically meet this allegation; but it closes with a general denial. If this is not sufficient to meet the requirements of complainant, the only remedy, according to the practice of the federal courts is by exceptions under the sixty-first equity rule; and so the lack of sufficient denial of any allegation in the bill did not relieve the complainant from proving the truth of it. Moreover, in this case the parties have fully gone into the matter of title, and waived any possible question of pleading.

The defendant, now the appellee, did not put in evidence the original alleged assignment, nor sufficiently account for his omission to do so. In lieu thereof he put in a duly-certified copy of the patent-office record of the alleged assignment and this without objection from the complainant, and without any motion to strike it out. At the hearing in this court the appellee claimed that this certified copy has probative force of itself, and makes out a prima facie case of an assignment. He cited, as sustaining this proposition, Lee v. Blandy 1 Bond, 361, also found in 2 Fish. Pat. Cas. 89. He might also have cited Brooks v. Jenkins, 3 McLean, 432; Parker v. Haworth, 4 McLean, 370; Dederick v. Agricultural Co., 26 Fed.

Rep. 763; and Rob. Pat. § 1040. Walker on Patents, (2d Ed., § 495,) referring to these decisions, says that they have been generally acquiesced in for more than 20 years, and that few rules of patent law have been more frequently made the basis of action by counsel and by courts than the one which they apparently sustain. The author, however, adds: 'But it hardly seems justified by the statute upon which it is based, and may even yet be overthrown by the supreme court.'

It will be seen that this rule originated with Judge McLean; and it will also be found that, in the two earlier cases decided by him, he referred to the fact that the statute of 1836, (chapter 357,) the then existing patent code, directed (section 11) that every assignment should be recorded. The terms of the existing statute make no requirement, but leave it to the assignee to record the assignment or not, for protection of his interests, at his option.

Campbell v. Gaslight Co., 119 U.S. 445, 7 S.Ct. 278, recognizes the ordinary rules of evidence of the common law in connection with an analogous statute relating to the records of the general land office. The case turned on section 891 of the Revised Statutes, which provides that authenticated copies of records of the general land office shall be 'evidence equally with the originals thereof,' being by its letter much more favorable to the position of the appellee than anything in any statute touching copies from the patent-office records; yet the supreme court held that the words 'evidence equally' were not intended to mean that in all cases a copy should have the same probative force as the original instrument, but that 'it should be regarded as of the same class in the grades of evidence as to written and parol and primary and secondary.'

Rev St. § 892, which provides for certified copies from the patent office, relates only to records, books, papers, or drawings 'belonging to' that office, and letters patent. If the law required the original assignments to remain on file, and that certified copies should be given of them, a different principle would be involved; but the only thing in this case 'belonging to' the patent office is the...