Schmeiser v. Thomasian

• Decision Date: 27 July 1955
• Docket Number: No. 14447.,14447.
• Parties: Ethel R. SCHMEISER and R. George Anderson, Executrix and Executor of the Estate of Theodore George Schmeiser and Ethel R. Schmeiser, Appellants, v. Y. THOMASIAN (Sometimes Known as Yeppie Thomas), an Individual Doing Business Under the Fictitious Name and Style of Thomas Welding & Manufacturing Co., Appellee.
• Court: U.S. Court of Appeals — Ninth Circuit

227 F.2d 875 (1955)

Ethel R. SCHMEISER and R. George Anderson, Executrix and Executor of the Estate of Theodore George Schmeiser and Ethel R. Schmeiser, Appellants, v. Y. THOMASIAN (Sometimes Known as Yeppie Thomas), an Individual Doing Business Under the Fictitious Name and Style of Thomas Welding & Manufacturing Co., Appellee.

No. 14447.

United States Court of Appeals Ninth Circuit.

July 27, 1955.

Naylor & Lassagne, James M. Naylor, San Francisco, Cal., William C. Crossland, Fresno, Cal., Frank A. Neal, San Francisco, Cal., for appellants.

Lyon & Lyon, Lewis E. Lyon, John B. Young, Los Angeles, Cal., for appellees.

Before STEPHENS, FEE and CHAMBERS, Circuit Judges.

JAMES ALGER FEE, Circuit Judge.

This is a suit for infringement of Letters Patent No. 2,538,167, granted January 16, 1951, to Theodore G. Schmeiser, and for infringement of Letters Patent No. Des. 137,446, granted March 14, 1944, to Theodore G. Schmeiser. Defendant Y. Thomasian does business under the fictitious name of Thomas Welding & Manufacturing Co., denies infringement of No. 2,538,167. Validity of both patents was denied, and, specifically, it was claimed that Letters Patent No. 2,538,167 is invalid in view of the prior art pleaded and that each of the claims is invalid because the invention defined thereby had been on sale and in public use more than one year prior to the effective date, May 8, 1944, of the patent application therefor. After trial, the District Court held that Letters Patent No. 2,538,167 were invalid and void on the ground, first, that a sale of a machine had been made to Chezick in 1941, that a sale of a machine had been made to Britton before May 8, 1933, and that Henderson Patent No. 1,190,257 was anticipatory to the patent of plaintiff. The court also held that Letters Patent No. Des. 137,446 were invalid. Appeal is taken only as to the decision of the court as to No. 2,538,167.

The earth-working roller unit claimed as the invention of the patent in suit comprises a tube or draft cylinder and a plurality of externally toothed hubless rings, freely sleeved on said tube for independent radial movement thereon with the differential between the internal diameter of said rings and the outer diameter of said tube being substantially in excess of the thickness of said rings, whereby, when the assembly is towed over ground to be worked, adjacent rings may move radially with respect to each other a sufficient distance to disclose the dirt accumulating space between the tube and the rings to the atmosphere to enable dirt to be discharged therefrom.

If we turn first to the defense as to public use and sale, the trial court found that on or about December 8, 1941, Schmeiser sold to Alvin Chezick, of Chowchilla, California, a ground pulverizer of a nonflexible type, having rollers that had no free play, and before December 8, 1941, at the request of Chezick, said machine was changed by Schmeiser to embody all elements of each of the four claims of the Schmeiser patent in suit. It was further found that this was not an experimental device.

The invoice relating to the sale of the machine was produced from the files of defendant, and this bore the date of December 8, 1941. It is argued that this was the date of delivery of the nonflexible machine, but the evidence seems not to bear out the contention and the trial court flatly found to the contrary.

There was another positive finding:

"The Court, having heard the oral testimony of the witnesses and considered the documentary proofs, finds that this evidence conclusively establishes that on or about May 1, 1943, and before May 8, 1943, Theodore G. Schmeiser sold to Vernon C. Britton of Firebaugh, California, a ground pulverizer embodying all of the elements of each of the four claims of the Schmeiser patent No. 2,538,167 in suit, and which ground pulverizer was not experimental."

This finding was supported by the testimony of three witnesses and by documentary evidence. It was therefore properly founded. From the testimony of other witnesses, it seems well established that defendant built and sold machines which embodied all elements claimed in the patent more than a year prior to the effective filing date of the application. 35 U.S.C.A. § 31. While courts carefully scrutinize such testimony, nevertheless the public interest is involved and, if a device has been in the public domain, the exclusive privilege therein cannot be granted even to the inventor. It must be kept in mind that the "heavy burden of persuasion" is upon a defendant seeking to show such use. Stearns v. Tinker & Rasor, 9 Cir., 220 F.2d 49, 55. But a record sometimes contains evidence clearly sufficient. Paraffine Companies v. McEverlast, Inc., 9 Cir., 84 F.2d 335, 339-340.

Likewise, of course, simply because this Court has reversed the trial court where there was no substantial evidence to sustain findings of prior public use is not an indication that such a finding properly supported by the record will not be sustained. The question is one of fact. The demeanor of witnesses and appraisal of inferences to be drawn from the testimony and the supporting documents enter so largely into the determination that caution should be used by an appellate court.

Here the trial judge was not sympathetic toward defendant. In ruling upon the case, the judge said:

"* * * he worked for Mr. Schmeiser and copied his machine, and it certainly does not create any feeling of sympathy in the mind of the Court."

Still, in the face of this, findings were made adverse to Schmeiser on the questions of fact.

Recently this Court has said:

"If the evidence as to prior public use is such that it would be accepted as satisfactory and convincing in any other kind of case, criminal or civil, then the degree of proof fixed by law to establish such use is attained." Whiteman v. Mathews, 9 Cir., 216 F.2d 712, 716.

The mere fact that other courts have found particular evidence as to prior public use unsatisfactory cannot militate against findings of the trial court here. If this Court discovered by reference to the record that the...