Searls v. Worden

• Decision Date: 06 February 1882
• Citation: 11 F. 501
• Parties: SEARLS v. WORDEN and others. [1]
• Court: United States Circuit Court, District of Michigan

11 F. 501

SEARLS v. WORDEN and others. ^[1]

United States Circuit Court, D. Michigan.

February 6, 1882

This was a bill in equity, to establish the validity of reissued letters patent No. 5,400, dated May 6, 1873, to Erastus W Scott, for an improvement in whip sockets, and to recover damages for the infringement of the same by the defendants. Complainant was the assignee of the inventors. The alleged improvement consists in the combination with the whip socket of a lever swinging upon a fulcrum midway between the two ends of the lever, the office of which was to hold the whip upright, and prevent its wabbling in the socket. The three claims alleged to have been infringed were as follows:

'(1) The combination of the stationary part of a whip socket and a lever, the lever being hinged or pivoted, so that the lever bears against the whip, at or near the end of the lever, to hold the whip in position for the purpose set forth. (2) The lever, B, curved or inclined inward from its point of pivot and used in connection with the stationary part, A substantially as and for the purpose specified. (3) The lever, B, pivoted at a point inside of its center of gravity so that when left free the upper part of the lever will fall outward, substantially as and for the purpose set forth.'

The defendants insisted in their answer:

First. That the reissued patent was not for the same invention as the original. Second. That Scott was not the first and original inventor of the improved claim, but that he was anticipated by a large number of patents, which were offered in evidence to substantiate this defence. Third. That the whip sockets made and sold by the defendants do not infringe complainant's patent.

It appeared upon the hearing that in a suit brought by the complainant against certain persons in the city of New York who were selling the whip sockets manufactured by the defendants, these several defenses were set up and overruled; that complainant recovered a decree; and that the case was then in the hands of a master upon a reference to assess the complainant's damages.

J. P. Fitch, for complainant.

Sprague & Hunt, for defendants.

BROWN, D.J.

It would be quite sufficient authority for a decree in favor of the complainant in this cause to simply refer to the opinion of Judge Wheeler, sitting in the southern district of New York, declaring the validity of complainant's patent and the reissue, and pronouncing the device of the defendants in that case, who were vendees of the defendants in this case, an infringement. Except in some minor particulars the two cases are identical. While it is conceded that the decree in that case would not operate as an estoppel here, the opinion of the court is entitled to something more than respectful consideration. Upon general questions of law we listen to the opinions of our brother judges with deference, and with a desire to conform to them if we can conscientiously do so, but we do not treat them as conclusive. In patent causes, however, where the same issue has been passed upon by the circuit court sitting in another district, it is only in case of a clear mistake of law or fact, of newly-discovered testimony, or upon some question not considered by such court, that we feel at liberty to review its findings.

A division of opinion upon the same issue might give rise to litigation in a dozen different districts, to conflicting decrees, and to interminable contests between rival patentees. In case the defeated party is dissatisfied with the first decision, it is his right to resort to the appellate court, where a final decision can be obtained which all inferior courts are bound to respect. This subject was so elaborately discussed by the late Judge Emmons, and the authorities so fully collated in the Goodyear Dental Vulcanite Co. v. Willis, 1 Flip. 388, that it is unnecessary to consider it further. We are content simply to announce our adherence to his views. But the recent decision of this court upon a question of reissue (Kells...