Rousso v. Boyle

• Decision Date: 03 September 1924
• Docket Number: No. 80.,80.
• Citation: Rousso v. Boyle, 2 F.2d 299 (D. Minn. 1924)
• Parties: ROUSSO v. BOYLE et al.
• Court: U.S. District Court — District of Minnesota

2 F.2d 299 (1924)

ROUSSO v. BOYLE et al.

No. 80.

District Court, D. Minnesota, Fifth Division.

September 3, 1924.

Joshua R. H. Potts, of Chicago, Ill., and Fryberger, Fulton, Hoshour & Ziesmer, of Duluth, Minn., for plaintiff.

Allen & Allen, Alfred M. Allen, and Marston Allen, all of Cincinnati, Ohio, and Abbott, MacPherran, Gilbert & Doan, of Duluth, Minn., for defendants.

CANT, District Judge.

We are here concerned with two patents issued to the plaintiff, a mechanical patent and a design patent. Such patents are numbered, respectively, 1,157,046 and 42,398. Each having been regularly issued, each is prima facie valid. The defense has been carried on largely by and on behalf of one Stephen B. Fetherolf. Fetherolf is a manufacturer of devices and designs which plaintiff claims are infringements of his patents. Under a contract with Fetherolf, these devices and designs are being used by defendants.

As to the mechanical patent, the defense is that because of prior invention and use of a similar device by Fetherolf, it is invalid. If the patent is valid, the infringement is unquestioned. As to the design patent, the defenses are: (1) That because of lack of invention, it is invalid; and (2) that, if valid, it is not being infringed. As to the mechanical patent, the question here is largely one of fact; as to the design patent, the question is largely one of law. As to the latter patent, the facts are not in serious dispute. The two patents will be discussed separately in the order above mentioned.

When oral evidence only is relied upon to prove prior invention and use, and thereby to defeat a patent, such evidence must be clear, satisfactory, and beyond a reasonable doubt. The Barbed Wire Patent, 143 U. S. 275, at page 284, 12 S. Ct. 443, 450, 36 L. Ed. 154; Deering v. Winona Harvester Works, 155 U. S. 286, at page 301, 15 S. Ct. 118, 39 L. Ed. 153; Adamson v. Gilliland, 242 U. S. 350, 36 S. Ct. 450, 61 L. Ed. 356. With a single exception, and that of a character not at all controlling, the evidence upon the question of prior invention and use was oral.

The stories related by the witnesses present many infirmities. The witnesses speak with respect to times and incidents long past. Most of them have been in touch with Fetherolf, and in a vague way they know what he wants and what will further his interests. Generally speaking, they have been willing to go as far as they could along that line. We need not be surprised, and may well assume that there has been some zeal in this respect. Most of them have not been able to go very far. There is uncertainty and conflict as to dates. The uncertainty as to what was actually done by Fetherolf in the way of experimentation and use is no less. Fetherolf himself is apparently involved in various contradictions. On the whole, it is a rather hazy and to some extent confusing and jumbled story. It does not convince, and therefore falls short of what the law requires in such cases. In my opinion, it would not do to strike down an otherwise valid patent upon evidence of a character so unsatisfactory.

Counsel for defendants have properly emphasized the distinction which, in some authorities, has been made between an abandoned experiment and an abandoned invention. Whatever the stage which Fetherolf reached with reference to the development or use of the device, Exhibit A, upon which the defendants rely in this case, it was all so primitive and so abortive that he certainly and thoroughly abandoned the whole project. This abandonment was quite certainly without any clear appreciation on his part that his device, whatever it then was, was of any...