SEIBERT CYLINDER o:n:;cup CO. ". MICHIGAN LUBRICATOR CO.
33
although' the ad falls within the provisions of that der sectl\)n. With reference to such suggestion it is sufficient to say that if it be conceded that a falsification of the books ora national bank, committed under such circumstances as to amount to a forgery, could not be punished under section 5209, yet such concession cannot avail the defendant on demurrer, for the reason that the demurrer admits the facts pleaded in the indictment; and as the offense is there stated, it clearly did not amount to a forgery. In re Windsor, 6 Best & S. 522, 10 Cox, Crim. Cas. 118; State v. Young, 46 N. H. 266; 1 Bish. Crim. Law. § 586. I think the demurrer should be overruled, and it is so ordered.
SEIBERT CYLINDER OIL-CuP Co. 'V. MIOHIGAN LUBRICATOR Co. SAME ". GRACE
et ale
(Oircuit Oourt. B.IJ. Michigan. February 8,1888.) PATENTS FOR INVENTION-APPLICATION FOR INJUNCTION-SUSTAINED PATENTEVIDENCE TO OVERTHOWPRESUMPTION OF VALIDITY.
Upon an application for a preliminary injunction in an action for infringement of a patent, the validity of which has· been sustained in three former suits, defendant, a witness and party in one of the former suits, corroborated by one other witness, testified that a machine with the one used by him was perfected and in use more than two years prior to the issuance of plaintiff's patent, but admitted that he did not apply for a patent for more than niue lears after perfecting his invention, and the evidence tended.to show that the invention as patented by him ditrered essentially from the one originally.Dsed. Heidi. that this testimony not having been introduced in the former suits, does not establish prior invention and use beyond a reasonable doubt, so as to overcome the presumption arising from the issuance of plaintiff's patent, supported by three adjudications in his favor.
In Equity. On motion to dissolve an injunctiiJri, and motion for junction. On motions for injunctions under the Gates "Sight-Feed Lubricator ent, No. 138,243, of April 29; 1873. An interference proceeding was had in the patent-office, in 1880, between Parshall and others, who are strangers to· these suits. The record in the interference proceeding was stipulated into the case of OilrOup Cb. v. Lubricator 00., 10 Fed. Rep. 677, in which the patent was sustained on final hearing. Subsequently, new defenses having arisen, a suit was commenced under this patent against William Burlingame, the agent of the Detroit Lubricator Co., and counter-suits were commenced,by the Detroit IJubricator Co., against the vendees of the complainant. The prior proceedings in the patentoffice and in the Phillips Ch8e were stipulated into this . Burlingame case. Parshall was again examined, and his alleged anticipation further in. quired into, This case was argued at length, and taken under advisement, and, having been held under advisement for seven m6nths, was settled, v.34F.no.1-3
34:
F!lDERAL· I.tEl'ORTEU. "
the: settlement involvingft 'CQDSf'nt deeree sustaining tl111:Gatespateut.' SUbsequently complainant QOnuuenced suit against Nightingale. 1\.1l the into this Cl\$e,. and on final prior. proceedings and proof were hearing the patent WM sustained·. ,V,ide,.32 Fed. Rep,l71. On the, strength· of,these. on motion",Lan injunction pendente lite 'Was issuedN,)vMtpeJ;, 27, 1887, as to the Mi.cbigan Lubricator Co., and: 'subsequently. 4i m9tion was made. and pre!lented,and is pendente lite as to Parshall. now re-presented,for to.estabHsh tbe.pUiblic .U8iJ.and The defendants here sale for more than two years prior to the date of the application for the. Gates patel\lt,ofJubricators 9Jladeill.OO,sold by whiqh, it is alleged, involved the patentable subject-matter of the Gates patent. subject-matter of this controParshall took out a patent versy, in 1879. Defendants' contentlon IS that the testimony establishing the statutory defense of prior public use and sale by Parshall in 1869 has, in'tbe,priorprdceedings;15een .sUppressed, fOIl thtltoosons: that, if developed, not only would the Gates patent be defeated, but also that the Parshall patent of 1879 w.6uld be,defeated, hut that now, priority of invention having been established in favor of Gates, Parshall for the first time presents (the testimony as to,the pUb'lic Use and Bale, of, his device in 1869. a. and,Edmund Wetmqre, fof bomplainant. Ct»#S8 and Rod-ueY for Michigan Lupricator Co. Wells W;' Leggett, for ,Grace' and :Parshall. .JAcKSOlil, (orally after statingtkjact8 as above.) ,From the facts that bavelJee,Ii in adjudications, 'and also in this new if'they be facts, evidelloo; ,t1l.e ,difficulty;gro;ws,'9f course, out of the connected'with Baugh's use'·of the machine in 1869-1870. It is perfectly pleat previous'adjudicati()na,......the Phillips Case, the Burlingame Case, ami, 'the Nightingale on the original applications, presented to the court a prima facie case,":"'a clear prima, j'aoie',ease, which 'warranted the issuance of the preliminary injunction. They had the presumption growing out of the issuance of the patent,on;the,,29th of.A:{:\ril,J873, in favor of Gates,[and that presumption bas ,beeosppported by 'three adjUdications. It is ,true that in the Phillips.Ut8e all the questions were not presented that could have been. presellted, or that were presented in the subsequentlitigation. ,We come now tocthe Burlingame Case, in ,which Mr. Parshallis called as a witness. lIithatoaseMr. Pnrshal1:testifies, and so does Mr. Willetts, the pattern maker, that they used two ofthe machines of the character indicated in the exhibit ,to,his testin::lOny; in, that ,case, and· in' the form designated by a model now, bef()re the'Oourt.'['hose two machines were used, one at the and the other. at· the Champion :flour-ll1il1s. It is perfectlyclear,.under the smteIUents of the witnesses themselves in that case; that the courts werejustifiedin,arriving at the conclusion thatmachines thus introduced at,the Champion mills and at the were imperfect and defective, and were not It completed invention. I
SEIBERT cYLINDER
oitt:CJtip .Co.
ti./XJ'dlfIGAN LUBRICATOR CO.
85
think the and::wJ will not review that now. They haa'the facts before them, and Mi-. Parshall, the alleged original inventor was before thet;n, and testified to the use oHhe machines in those two instances. Now, if human testimony is to be credited, Willetts and Pa:rshall both identified the mabhines that they made in 1869 as corresponding identically with' the machine here presented, and which was tested at the copper-works and at the Champion mills. Mr. Baugh says,-and the difficulty arises on MI'. Baugh's testimony,-Mr. Baugh sayS that was notthemachine he used, atleast not in that form. Mr. Baugh identifies the form of a different machine corresponding with a photograph now presented, and which the 'proof indicates, from Mr. Parshall's own statements, previously made, was made at a later period than 1869. , Now, what was Parshall engaged in, and what are the probabilities? When we c9me to consider. evidence, we mqst consider probabilities. Mr. Parshall was engaged in an effort to invent a lubricator' that would do its work, and conform to the needs of the business and of the trade. He was engaged in the effort to invent an up-drop lubricator, and. we have him,' according to the testimony of Mr. Baugh, noW introduced; as having perfected that sort of Ii machine in June, 1869, and Y6t we find Mr. Parshall postponing an application, although an inventor, and engaged in the effort at inventing and thatwant,-we find him failing to make any application for an up-drop luhricator·until1878. Now, is it not probable that Mr. Parshall must have known more about this than any other Ii ving man? Is it probable that, if he had had 'a completed invention or a thing that performed its work as efficiently as it is now alleged that the plaintiff's does he would have postponed his application for a patent upon that invention until 1878, when he presented a different instrument. The probabilties are against that theory. . Matters of importance are not conducted in that way. Inventors do not act in that way. If Mr. Parshall had in 1869 what is how claimed, Mr. Parshall would undoubtedly have applied for a patent for it. Theprobabilities'from Mr. Parshall's conduct, and the probabilities from Mr. Parshall's previous testimony, are all very decidedly in favor of the fact that Mr. Baugh is in some way mistaken as to what he had or as to the date at which he had it. Now, in f!:ddition to that, the abandonment by Parshall is some evidence of an incomplete instrument. Looking at him in his situation 80S an inventor engaged in an effort to make a machine that would work, the abandonment of the Baugh machine is evidence, and strongly persuasive evidence, of some incompleteness in the machine itself, such as was found by Judge LOWELL and by JUdge COLT in the preceding cases, in which they found that the machine as used at the copper-works and at the Champion mills was a defective and incomplete machine. We have this strong prima facie case besides the presumption of the patent, and in view of thedecisioI)s we are not satisfied that Mr. Baugh's evi· dence breaks down that strong prima facie case. We will, therefore, allow the injunction to stand.
86
FEDERAL
As to laches, I ought say that. we do not think that can be attributed to the complainant in this case, under. the facts surrounding it. Parties are not required to litigate at all points at the same time. They may give notice to an infringer that he is infringing, and from that forward no acquiescence will be presumed, provided the suit is instituted within a reaspnable time. There are cases under the general equitable doctrine that.after notice of a superior right Ii party who procel'lds'proceeds at his peril, and canacquire no benefits as against the party who has given nO,tice ofhis superior right. We think the doctrine of laches has ,no, foundation in. tllis case. The facts fail to break down, we think, stl'ong prima facie case made on behalf of the complai.nant. So we continue the injunctiqn in the Clj,se against the Michigan Lubricator Co. and order an injunction to issue in the case against Grace and. Parshall. . BROWN, J., (oraUy;) I am very glad to have had the assistance of the circuit judge in this case, as it seems to me a very close one, and I should have hesitated to take the responsibility of continuing this injunction, if I had notbeeu advised by him npon this hearing. While I am not free from doubt with regard to the caset I think, upon the whole, the defendants have not established an anticipation oUhis patent beyond a reason,able. doubt. , I should not be surprised that, jfthis case were furtherheard, it might resolve itself into something like a question of law. While if the affidavits produced on behalf of the defendants here are taken broadly for their face value, the anticipation would be proven, I think that w;e should look upon them with a good deal ofsuspicion. The fens!,! really is that Mr.. Parshall made certain machines in 1869 anticipatorY,ofthis device, and his testimony seems so to il).dicate this. The reply is virtually that these machines were not operative, and so Judge LOWEI.I. found witll regard to the Champion mills and the copper-works machine,...,-that they burst and wer!'l, not operative 4evices. The testimonyor Mr. Baugh would tend to show that the IIlachine which was put his mill was an operative device, but in reply t(} that it may be said that Mr. Parshall. who is engagl;ld in the patent business, who is an inventor ,})y profession, and wJ;lO h!1s' shown himself rery alert to secure patents for his own benefit, had not sufficient confidefl.pe in this machine to him to apply: for a patent for it until 1878.. Now, we have to consider too, in this connection, the fact that when Parshall was ined asa witness in the other cases, and in his interference in the .he never set up any of these machines except those which were sold to the Champion mills and to the .and no allusion is lUade i.A his testimony to the other Ilfachines upon which reliance is placed in. this case. His excuse is,.as 1 understand, that the glass was not gqalienougll, was not.strong enough, to machine operative; tllat while the same thing would have been operative upon a low pres.8\Jre engine, the extra pressure of the. steam in the high pressure engine burst the glass, and rendered the maclline inoperative,-that is, when .tsed upon that class of engines. lIis explanatioll amounts to this: that
MORSS V. UFFORD.
87
there was no dMect in the construction of the machine; but merely in the strength oftheglass. Now, that may bell. question of law. It comes pretty near being a question of law,whether a machine can be said to anticipate another machine which is not operative, when its inoperativeness is caused by reason of not employing sufficiently strong material. We have. the testimony of Mr. Parshall that he made three machines like the exhibit in the Burlingame Chse, now produced, and no mention is made of other devices which are alleged to have been made about the same time. The testimony of Mr. Bangh indicates that his was not the one that was used, but a devies with a ,smaller glass. That tends to throw, in my mind, a good deal of doubt upon his whole testimony, and I find it impossible to reconcile the testimony of Mr. Parshall and Mr. Baugh. Was his a machine which Mr. Parshall made? Mr. Baugh says it was. Mr. Parshall said he had but one set of patterns. There is It mystery here I do not understand, and in reply I can only say that I do not think there is any equity here which calls upon us to dissolve this injunction. Here is It machine for which Mr. Gates obtained a patent in 1873, and they have been making that machine year after year for 14 or 15 years. I think when a party comes in at this late day and sets up practically a new defense to this patent, that he ought to establish it beyond a reasonable doubt. I think that the equities of this case are entirely with the complainant. Of course, we cannot anticipate what developments may be made when these witnesses come to be examined and cross-examined, but upon the whole my own conclusion is, although, I confess. not without some doubt, that the injunction ought to be continued.
MORSS 'V. UFFORD
et al. February 23, 1888.)
«(Jircuit (Jourt,
n. Massachusett8.
PATENTSlI'OR INVENTIONS-INFRINGEMENT-DRESS FORMS.
Letters patent No. 233.240. issued October 12, 1880, to John Hall, for imin dress forms, in which the skirt form consists of ribs suspended from braces hinged at each end to a block, supported by rests, and sliding up and down an upright central standard, is infrmged by a device for the same purpose, having similar standard, ribs, and braces, in which a collar tlxed to the standard takes the place of the upper block, and II nut, working on a thread in the standard, takes the place of the lower block, sU(lh collar and nut being merely an equivalent for the sliding blocks supported by rests.
J. K. Beach, for defendants.
In Equity. On hill for injunction. a.F. Perkins, for complainant.
COLT, J. The complainant is the owner ofletters pa.tent No. 233,240. dated October 12,1880, issued to John Hall, for improvements in dress forms. The invention relates to improvements "by means of which