Sodemann Heat & Power Co. v. Kauffman

• Decision Date: 16 July 1921
• Docket Number: 5819.,5818
• Citation: 275 F. 593
• Parties: SODEMANN HEAT & POWER CO. v. KAUFFMAN. KAUFFMAN v. SODEMANN HEAT & POWER CO.
• Court: U.S. Court of Appeals — Eighth Circuit

275 F. 593

SODEMANN HEAT & POWER CO. v. KAUFFMAN.

KAUFFMAN v. SODEMANN HEAT & POWER CO.

Nos. 5818, 5819.

United States Court of Appeals, Eighth Circuit.

July 16, 1921

Rehearing Denied November 26, 1921.

John H Bruninga, of St. Louis, Mo., for plaintiff.

James L. Hopkins, of St. Louis, Mo., for defendant.

Before HOOK, Circuit Judge, and TRIEBER and NEBLETT, District Judges.

TRIEBER District Judge.

These are an appeal and cross-appeal from a decree in an action instituted by Samuel Kauffman against the Sodemann Heat & Power Company, who will be referred to in this opinion as they appeared in the court below. 267 F. 435.

The plaintiff is the owner of patent No. 1,170,544, granted February 8, 1916, for radiator shields, and design patents No. 48,939, granted April 25, 1916, and No. 49,149, granted June 6, 1916, in connection with the radiator shields. The complaint charged the defendant with infringement of the three patents, and prays for an injunction and an accounting of accounts, profits, and damages, in addition to the penalties of $250 for infringement of each of the design patents, as prescribed by section 1 of the Act of Congress of February 4, 1887, c. 105, 24 Stat. 387 (section 9476, U.S Comp. St.). The complaint contains the usual allegations in such cases.

The answer denies that the alleged inventions, or either of them had not been known and used by others in this country, and had not been patented or described in any printed publication in this or any other foreign country, before the alleged invention or discovery by the plaintiff, and that they had not been in public use or on sale for more than two years preceding the respective applications upon which said letters patent were granted, and not abandoned to the public. It attacks the validity of all the patents upon the ground that, 'in view of the prior art, they are void for want of patentability, novelty of subject-matter, and for want of invention. ' No prior patents are pleaded in the answer, nor was any notice given of any of the intended defenses prescribed by section 4920, Rev. St., as amended (section 9466, U.S. Comp. St.). Infringement of each of the patents is denied.

As an additional defense it is alleged that since May 1, 1916, the plaintiff has threatened suit for the alleged infringement of one or more of said letters patents against defendant, its customers, and prospective customers; that said threats were not made in good faith, but in the course of unfair competition with the defendant; that the defendant has ever since continuously invited plaintiff to institute suits against it, in order to test the validity of his patents, and the truth and falsity of the charge of infringement, but plaintiff has failed and refused to do so, until the institution of this suit (it was filed August 10, 1918), by reason whereof it is claimed that plaintiff has acquiesced in all these acts of the defendant now complained of in this action, and should be adjudged guilty of laches, and estopped from asserting any claim of infringement against the defendant.

The evidence was adduced orally in open court, in conformity with equity rule 46 (198 F. xxxi, 115 C.C.A. xxxi). The decree adjudged the claims of patent No. 1,170,544, claimed to have been infringed, invalid, and dismissed the bill as to that patent, but sustained the validity of both design patents, and found that the defendant had infringed them. Both parties appealed.

The court below held that, notwithstanding section 4920, Rev. St., as amended by Act March 3, 1897, c. 391, 29 Stat. 692 (section 9466, U.S. Comp. St.), and the failure of the defendant to either plead or give notice in writing 30 days before the hearing of his intention to introduce proof that devices, anticipating plaintiff's patents, had been patented or described in some publication prior to the supposed invention or discovery thereof, and that the plaintiff was not the original inventor or discoverer of any material or substantial part of the thing presented, nor that it had been in public use or on sale in this country for more than two years prior to plaintiff's application for a patent, or had been abandoned to the public, evidence of previous patents anticipating plaintiff's was admissible.

The learned trial judge held that the previous patents were admissible to establish what was old and what was new, for the purpose of aiding the court in the construction of the patent, relying upon Brown v. Piper, 91 U.S. 37, 23 L.Ed. 200. This was error. While the court so held in that case, the patent in that case was held to be void on its face; the court holding that that may be done, as the courts may take judicial notice, without proof, and of course without allegations, of facts of universal notoriety. 91 U.S. 42, 23 L.Ed. 200. That that decision must be limited to a patent void on its face is shown in Dunbar v. Meyers, 94 U.S. 187, 198, 24 L.Ed. 34. The court there said:

'Old processes are sometimes applied to new subjects, and where that was so, in a case which did not require the exercise of the inventive faculty, and without the development of any idea, which could be deemed new or original in the sense of the patent law, it was held that the supposed improvement was not the subject of a patent, and that courts of justice may take judicial notice of a thing in the common knowledge and use of the people throughout the country'--citing Brown v. Piper.

The court then held that proof of the state of art is admissible in equity cases, without any averment in the answer and notice, to invalidate the patent, saying:

'It consists of proof of what was old and in general use at the time of the alleged invention, and may be admitted to show what was then old, or to distinguish what was new, or to aid the court in the construction of the patent.'

In Grier v. Wilt, 120 U.S. 412, 429, 7 Sup.Ct. 718, 729 (30 L.Ed. 712), it was held that, while prior patents are receivable in evidence to show the state of the art, although not set up in the answer, to aid in the construction of the plaintiff's claim, they are not admissible to invalidate that claim on the ground of want of novelty, when properly construed. In Eachus v. Broomall, 115 U.S. 429, 434, 6 Sup.Ct. 229, 231 (29 L.Ed. 419), it was held that such proof is admissible only 'for the purpose of defining the limits of the grant in the original patent and the scope of the invention described in its specifications. ' In Philadelphia Railway Co. v. Dubois, 79 U.S. 47, 65 (20 L.Ed. 265), it was held, quoting from the headnote:

'The novelty of a patented invention cannot be assailed by any other evidence than that of which the plaintiff has received notice. Hence the state of the art, at the time of the alleged invention, though proper to be considered by the court in construing the patent, in the absence of notice, has no legitimate bearing upon the question whether the patentee was the first inventor.' That patents not pleaded may be admitted as showing the prior art, but cannot be availed of as anticipations, is no doubt the law. Jones v. Cyphers, 126 F. 753, 62 C.C.A. 21; Morton v. Llewellyn, 164 F. 693, 694, 90 C.C.A. 514; United States Consolidated, etc., Co. v. Selma Fruit Co., 195 F. 264, 268, 115 C.C.A. 234; Simplex Window Co. v. Hauser Reversible Window Co., 248 F. 919, 161 C.C.A. 37.

Disregarding the prior patents introduced by the defendants, there has been no substantial evidence warranting a finding that plaintiff's patent had been anticipated or was invalidated by reason of the prior art. The presumption arising from the granting of the patent is that it is a patentable novelty, which can only be overcome by clear proof to the contrary. Fairbanks & Morse v. Stickney, 123 F. 79, 59 C.C.A. 209; Stead Lens Co. v. Kryptok Co., 214 F. 368, 131 C.C.A. 144. The patentee has the right to rely upon the presumption the patent affords, that he was the original and first inventor of the improvement in question and, if not advised by proper notice that it would be attacked, would in all likelihood fail to secure witnesses to rebut the evidence attacking his invention by reason of anticipation by older patents. He would be surprised by the introduction of such evidence, and may be unable to secure proof in rebuttal in time. To prevent this, section 4920, Rev. St. was...