A. Schrader's Sons v. Wein Sales Corporation, 361.

• Decision Date: 13 June 1925
• Docket Number: No. 361.,361.
• Citation: 9 F.2d 306
• Parties: A. SCHRADER'S SONS, INC., v. WEIN SALES CORPORATION.
• Court: U.S. Court of Appeals — Second Circuit

9 F.2d 306 (1925)

A. SCHRADER'S SONS, INC., v. WEIN SALES CORPORATION.

No. 361.

Circuit Court of Appeals, Second Circuit.

June 13, 1925.

William H. Davis, James L. Steuart, and R. Morton Adams, all of New York City, for appellant.

Eugene V. Myers, Arthur C. Fraser, and William A. Redding, all of New York City, for appellee.

Before ROGERS, HOUGH, and HAND, Circuit Judges.

HAND, Circuit Judge (after stating the facts as above).

We do not consider whether the plaintiff's evidence was sufficient to carry the date of invention back of Turner's sealing dates in April and May, 1907. The appellant has assigned no error on that point, and did not argue it before us. We assume, therefore, that Twitchell antedated Turner, and the validity of the patent depends upon whether the evidence showed that the use was public. We observe at the outset that the use must have occurred before October 9, 1906; the application having been filed two years from that date. On this issue of public use the defendant has the burden. Loew Filter Co. v. German American Filter Co., 107 F. 949, 47 C. C. A. 94 (C. A. 6); Maast Foos & Co. v. Dempster Mill Mfg. Co., 82 F. 327, 27 C. C. A. 191 (C. C. A. 8). The classic exposition of the doctrine is Mr. Justice Brown's in the Barbed Wire Patent Co. Case, 143 U. S. 275, 12 S. Ct. 443, 36 L. Ed. 154, there being no distinction in this regard between prior use by another and by the inventor himself.

The proof, though scanty, is that no one was allowed in Twitchell's factory but himself and his assistants, who had not, however, apparently been pledged to secrecy. Had the factory been a large one, to which many employees had access, such a pledge was necessary; but this was the case of a man working confessedly upon an experiment in leather tires, and meaning to keep his work secret. Before October 9, 1906, he had but one employee, Stine, who was aware of the experimental nature of the business. Considering that the whole work was experimental, and that only these two had access to it, we think that it was unnecessary to exact from Stine a formal pledge of secrecy. It was implicit in the situation. We, of course, recognize that the use may be public, although concealed by the nature of the invention itself. Egbert v. Lippmann, 104 U. S. 333, 26 L. Ed. 755; Hall v. MacNeale, 107 U. S. 90, 2 S. Ct. 73, 27 L. Ed. 367. Again, we agree that the use of a single specimen, even in a factory and in the presence only of the employees, may be public. Brush v. Condit (C. C.) 20 F. 826, affirmed 132 U. S. 39, 10 S. Ct. 1, 33 L. Ed. 251; Smith, etc., Co. v. Sprague, 123 U. S. 249, 8 S. Ct. 122, 31 L. Ed. 141; Perkins v. Nashua (C. C.) 2 F. 451; Bliss Co. v. So. Can Co. (D. C.) 251 F. 903. But in these cases the factory was open for many employees to come and go, a distinction we regard as critical. A majority of the court does not believe that the defendant has shown the use to have been public.

However that may be, we all agree that, whether public or not, it was experimental. Confessedly Twitchell was engaged in experiment. The answer is that the experiments concerned only the making of leather tires, and that the gauge had passed the stage of experiment, though the main business had not. We agree that in law the distinction is good. Thompson-Houston Electric Co. v. Lorain Steel Co., 117 F. 249, 54 C. C. A. 281 (C. C. A. 2). Furthermore, we recognize that, once the use be shown to be public, the plaintiff must establish by convincing proof that it was experimental.

In spite of both considerations, we are satisfied that the use during the period in question was only experimental....