Zachos v. Sherwin-Williams Co.

• Decision Date: 18 November 1949
• Docket Number: No. 12092.,12092.
• Parties: ZACHOS v. SHERWIN-WILLIAMS CO.
• Court: U.S. Court of Appeals — Fifth Circuit

177 F.2d 762 (1949)

ZACHOS v. SHERWIN-WILLIAMS CO.

No. 12092.

United States Court of Appeals Fifth Circuit.

November 18, 1949.

B. F. Garvey, Washington, D. C., Devereaux F. McClatchey, Atlanta, Ga., Noah J. Stone, Atlanta, Ga., E. T. Newton, Atlanta, Ga., for appellant.

William K. Meadow, Atlanta, Ga., Clair W. Fairbank, New York City, for appellee.

Before HUTCHESON, McCORD, and SIBLEY, Circuit Judges.

HUTCHESON, Circuit Judge.

Pursuant to our order¹ on motion for rehearing, the district judge has now heard "further evidence solely on the issue of prior use, and made findings of fact² and conclusions of law,³ and caused same to be certified" to us.

The parties have been heard orally and on briefs. The question whether the findings will be approved by us or set aside as clearly erroneous is now before us for decision.

Pointing to the testimony adduced by it, appellant, attacks the reasons given by the court for its findings as unsound, insists that its evidence established prior use in the full measure required of such evidence, and that the findings should be disapproved and judgment, establishing the invalidity because of prior use of the assailed patent to Holmes, should be now entered.

Appellee, invoking the rule of the authorities, that proof of prior use must be beyond a reasonable doubt, and that without some authentic documentary support, mere oral evidence adduced to fix the date of the prior use will not suffice, and pointing to the evidence in this case and the findings of the trial court, insists that appellant has not sustained its burden, and the judgment of affirmance heretofore ordered suspended should now be put into effect.

We agree with appellee. Despite appellant's contention to the contrary, we find no relaxation or modification of the rule of the cases establishing the requirements of proof when prior use is relied on to defeat the presumption arising from the grant of a patent. This rule is that prior use must be proved beyond a reasonable doubt, and that as a practical matter, it may be said that oral testimony alone, unsupported by writings, has not been, and will not be accepted as sufficient.

The reason for this is well and soundly stated in some of the earlier decisions.⁴ It is true that in Cowles Co. v. Frost White Paper Mills, 2 Cir., 174 F.2d 868, relied on by appellant,⁵ some dicta indicating slight wavering and a query whether, in view of the changed attitude toward patents in the last twelve years, so strict a stand would any longer be enforced. But these dicta aside, we have found nothing to indicate that a departure from the rule is, or should be, imminent or probable. On the contrary, we believe that the reasons for the rule so well stated by Mr. Justice Brown in the Barbed Wire and Deering cases and approved and relied on in cases following are still potent and compelling. Indeed, with the modern tendencies toward easy swearing, they are even more so.

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