Warren Bros Co. v. Evans

• Decision Date: 17 June 1916
• Citation: 234 F. 657
• Parties: WARREN BROS. CO. v. EVANS.
• Court: U.S. District Court — Eastern District of Pennsylvania

234 F. 657

WARREN BROS. CO. v. EVANS.

United States District Court, E.D. Pennsylvania.

June 17, 1916

Edward G. McCollin, of Philadelphia, Pa., and James M. Head and W K. Richardson, both of Boston, Mass., for plaintiff.

Walter Biddle Saul and Cornelius D. Ehret, both of Philadelphia Pa., for defendant.

DICKINSON District Judge.

Due to the interesting subject-matter of this controversy, or to its admirable presentation by counsel, or doubtless to both, it is with a feeling almost of regret that we accept the compulsion to take the excluding view of it which we have taken. The case in its formal features is the ordinary one of the claim of a proprietary right in a product based upon the issue of letters patent and a denial of their validity. The patent bears the number 727,505, was issued for the claimed invention of Frederick John Warren, and now belongs to the plaintiff by assignment. The invention is based upon the discovery or recognition of a fact which, however familiar it may be to the initiated, seems so startling to the uninformed mind that there is a hesitation in its statement for fear of misconception. The fact, however, as we understand it, is this: If a delimited space be occupied, as nearly as may be by broken material of a uniform unit size of the parts of which it is made up, the proportion of the total volume of the space which will be void or unoccupied by the material will be about the same, no matter what the size of the unit parts. If it is desired to relatively reduce the voids, this result is accomplished, not by reducing the size of the unit parts (still retaining their uniformity), but by varying the sizes of the parts. The desired condition of a road when perfected is that the material of which it is composed should present the feature of a solid mass, in that the whole road space should be free from voids. Time and use direct their efforts toward bringing this about, and would eventually accomplish this result were it not for the faster working disrupting influences of water, frost, and the displacing pressure of heavy travel. This solidity must, in consequence, be produced before the road is used. The ideal construction is then the mosaic. The large voids between the large units to be filled as nearly as may be with units as large as the space will accommodate and to repeat this down to the smallest units, and then to cement the whole by a binder, so that you have a road unit made up of solid material. The vital elements of the defense presented require the claims of the patent to be so interpreted that the defendant's pavement can be held to not infringe or to compel an interpretation so broad as to open them to the successful assertion of anticipation.

The real, at least in the sense of the first, question involved is whether there is now any question which is an open one, always excepting, of course, the question of infringement. There is a substantial (although not a formal) concession that the present case is to be so determined. Independently of the merits of the question of the validity of a patent, there must come a time when that question must be deemed to have been settled, whether rightly or wrongly; nevertheless, settled. If this be not so, rights evidenced by letters patents are no rights at all. All which can profitably be said upon the subject of the validity of this patent (except upon subsequently discovered evidence of anticipation) is embraced in the opinion accompanying rulings already made. That of Judge Lurton and the comments of Judge Anderson afford a sufficient reference. This patent was issued May 5, 1903. Time will therefore soon heal any hurt which the upholding of its validity may have done to the rights of others. Such validity is supported by the prima facie findings of the Patent Office. It has confirmation in a juridical experience so extensive that a mere list of the cases in which it has been litigated would unduly lengthen this opinion. This experience has embraced adjudications, not only in a number of the District Courts but in the Circuit Courts of Appeals in two different circuits and recognition in three other circuits supplemented by consideration in almost, if not quite, a round dozen of applications for preliminary injunctions. Out of all of this judicial consideration something in the nature of the establishment or denial of some definite rights must have resulted. What we find has resulted is the establishment of the validity of claims 5, 6, 9, and 11 of this patent beyond the reach of successful attack upon any grounds then litigated. Warren v. Owosso, 166 F. 309, 92 C.C.A. 227; Warren v. New York, 187 F. 831, 109 C.C.A. 591.

However free courts of different territorial jurisdictions, having equal powers and of like authority (such as the appellate courts of the several states and Circuit Courts of Appeal) may be to accept or refuse guidance from each other, trial courts ordinarily do not enjoy and cannot, without just criticism, assert a like freedom. We deem ourselves controlled by the rulings of Circuit Courts of Appeal of other circuits until the court of our own circuit has passed upon the same question. This, of course, is not because of the res adjudicata principle, but of comity and the acceptance of decided cases as a statement of what the law is. Because of these rulings there remains in this case only the question of infringement and the consideration of any evidence of anticipation not before...