Warren Bros. Co. v. City of New York

• Decision Date: 10 April 1911
• Docket Number: 223.
• Citation: 187 F. 831
• Parties: WARREN BROS. CO. v. CITY OF NEW YORK et al.
• Court: U.S. Court of Appeals — Second Circuit

187 F. 831

WARREN BROS. CO. v. CITY OF NEW YORK et al.

No. 223.

United States Court of Appeals, Second Circuit.

April 10, 1911

This is a motion for a preliminary injunction restraining the threatened infringement of claims 5, 6 and 11 of letters patent No. 727,505, granted to Frederick J. Warren, May 5 1903, for a new and useful improvement in pavements. The claims in controversy are as follows:

5. In a street-pavement, a bituminous mineral structure, the mineral ingredients of which are mixed and of several grades, so graded as to give the structure an inherent stability.

6. A bituminous street-pavement structure containing mixed mineral ingredients of such grades as to give the structure an inherent stability.'

11. A street-paving structure composed of a mixture of mineral or wearing ingredients, and a plastic binder, the space between the mineral ingredients being less than twenty-one per cent of the whole, and the plastic binder occupying said space.'

The Circuit Court of Appeals for the Sixth Circuit in a carefully considered opinion held that the patent was valid and that these claims were infringed. Warren v. City of Owosso, 166 F. 309, 92 C.C.A. 227. Thereafter a petition for a writ of certiorari was presented to the Supreme Court of the United States and denied May 24, 1909. The refusal to grant writs of certiorari in patent causes is so general that no important inference can be drawn therefrom. I think it may be said, however, that if the court had entertained the opinion that even a small proportion of the errors pointed out by the defendants existed, the writ would have been granted.

In Warren Bros. v. City of Montgomery (C.C.) 172 F. 414 the Circuit Court for the District of Alabama followed the Owosso decision and sustained the patent. Whatever view may be entertained as to the obligation of the Circuit Court of one circuit to follow the decisions of the Circuit Courts of other circuits, I think there can be no doubt that the doctrine of comity not only, but the orderly administration of justice, requires that the Circuit Courts should adopt and follow the decisions of the Circuit Courts of Appeals of other circuits than their own, rendered upon facts substantially identical. Any other rule would lead to confusion and injustice.

Of course in such circumstances the defendant in patent causes may introduce new evidence of anticipation and may show that the facts on which infringement is based are essentially different from those in the adjudicated case. Such proof must carry conviction with it. It should not avail the defendant if the court be clearly convinced that it is condemned by the reasoning of the decision of the appellate court and would not have changed the result had it been there presented. This court must, therefore, consider as established the following propositions, which were at issue in the Owosso Case:

First. The validity of the patent.

Second. That the patent is not invalid for double patenting.

Third. That the patent is not anticipated by any of the alleged prior uses proved in the Owosso Case.

In brief, every proposition decided by the Owosso Case, upon substantially similar facts, is stare decisis.

This leaves only to be considered the Washington, Chicago and Cincinnati prior uses and the question of infringement. It must be remembered, however, that in the Montgomery Case the alleged Washington anticipation was considered and held to be unavailable. It is proper to say, however, that the Washington evidence was also before the court in the Illinois case, where an injunction was refused, but as no opinion is reported, it is impossible to say what consideration was given to it by the court.

The record in the Owosso Case is very voluminous. The defendant was represented by counsel experienced in the law of patents. The Barber Asphalt Paving Company, which laid the Owosso pavement and assumed the defense, was familiar with the art and amply able to produce any proof of anticipation existing in the United States. It would seem improbable that in such circumstances the pavements of Washington, which city was the first, or among the first, in this country, to adopt asphalt pavements should have been overlooked, if the present contention regarding them is true. The general character of those pavements must have been familiar, not only to the officers of the defendant company, but to the officials of the Patent Office as well, and it is surprising, if a complete anticipation were to be found in the principal streets of the nation's capital, that some one did not discover it before. I do not overlook the fact that one of the counsel who represented the defendant in the Owosso Case has presented an affidavit in which he states that it was the judgment of the defendants and their counsel that they should rest the defense solely upon the prior use at Long Island City. Nevertheless, there is a presumption that the testimony now adduced was not presented because the defendant believed that it related to an entirely different construction. Assuming all that is said in favor of the experimental sidewalk at Long Island City, it is hardly to be supposed that the defendant would have omitted to give the proof if the precise construction had been used in the streets of Washington for years prior to the patent. If the fact were so, it might easily have been ascertained. The failure to present the proof suggests the probability that, in the opinion of the Barber Company, the fact was not so.

I have examined the affidavits and the specimens taken by both sides from the Washington pavements and am confident that the testimony does not establish anticipation beyond a reasonable doubt. Some of the specimens produced by the defendants have a general resemblance to the patented composition. Others, taken by the complainant from the same locality, have no resemblance to the particular features upon which patentability rests. It would, in my judgment, be setting a dangerous precedent to overthrow a patent which has been sustained by a Circuit Court of Appeals upon an alleged prior use, supported only by the controverted statements of affidavits. The presumption is against the existence of such a prior use and it should be supported by clear and cogent testimony, which has stood the test of cross-examination. It cannot be accepted if contradicted by proof of equal weight. It is not necessary that the court should reject such proof altogether; it is enough that there is doubt about it. The fact that the samples furnished differ so materially in structure and appearance seems to indicate that the influence of heat and cold and the use of the streets for heavy traffic during long periods of time have worked changes in these pavements, so that their present structure is not what it was when originally laid. The pavement on Corcoran street, for instance, is shown to have been laid under the patent to Scharf, which provides for three distinct layers. It would not avail the defendants if they were able to show that in the process of time, these layers have in some places been broken up and something resembling the complainant's structure has thus been sporadically produced. This would not be a prior use, but a prior misuse.

The Cincinnati use is even more remote. The pavement there is laid in blocks and is not intended at all for vehicular traffic. The Chicago uses need not be discussed as they are no better references than those to which attention has been called. It is enough to say that in my judgment the proof does not establish the invalidity of the patent beyond a reasonable doubt.

Upon the question of infringement no especial equities exist in favor of the defendants. They both had full knowledge of the Warren patent. Indeed, a contract was made in July, 1910 with the Uvalde Company to lay a pavement in the borough of Richmond. Suit was commenced and a motion for a preliminary injunction was made, but before the motion was argued an agreement was made between the defendants, by which the contract was canceled. The suit was thereafter discontinued. The only inference which can be drawn from this action of the defendants is that they were convinced that the specifications of the first contract, if carried out, would result in an infringement of the Warren patent. Within a few weeks after the...