Swain v. Holyoke Machine Co.

• Decision Date: 20 September 1901
• Docket Number: 353.
• Citation: 111 F. 408
• Parties: SWAIN v. HOLYOKE MACHINE CO.
• Court: U.S. Court of Appeals — First Circuit

111 F. 408

SWAIN v. HOLYOKE MACHINE CO.

No. 353.

United States Court of Appeals, First Circuit.

September 20, 1901

Before COLT and PUTNAM, Circuit Judges, and WEBB, District Judge.

PUTNAM Circuit Judge.

I agree that the complainant's petition for a rehearing in this case should be denied, but I desire to express my special reasons for that conclusion. The opinion passed down on May 24, 1901, contained the following:

'In the case at bar the patentee has failed to show, by the clear and convincing proofs required, that the sale of the Moodus machine was for experimental use. The only evidence in support of such use is Swain's testimony.'

In this connection the opinion observed that:

'If Swain had supplemented his testimony by showing that he at once proceeded, after the Moodus machine was installed, to test its efficiency, as compared with outward-discharge machines or inward-discharge machines, without his central partition; if he had made such experiments as he has conducted since his suit was begun, or the best tests he was able to, under the circumstances,-- the case would be different.'

The brief supporting the petition for rehearing apparently fails to apprehend the effect of this observation. It was the usual one, that, if Swain had been able to support his testimony and had supported it, by some concrete act, he might thus have afforded the kind of proof required to establish the proposition on which he relied. It did not necessarily have any connection with the question whether it was practically possible for him to make experiments; but it pointed out that, because he did not do so or could not do so, his oral testimony was not supplemented. His lack in that respect was the same whether it arose from inability or indisposition, so that the observation applied equally to one alternative as to the other.

The application for the patent in issue was filed on January 10 1881, and the installment at Moodus of the machine which the complainant claims was experimental was a few days more than two years earlier. Swain testified in reference to the Moodus installation in June, 1899. This was more than 20 years after the event. The rule of law applicable under these circumstances has been positively stated in Smith & Griggs Mfg. Co. v. Sprague, 123 U.S. 249, 264, 8 Sup.Ct. 122, 31 L.Ed. 141, as follows:

'In considering the evidence as to the alleged prior use for more than two years of an invention, which, if established, will have the effect of invalidating the patent, and where the defense

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