1. When, in a patent case, a person claims as an original
inventor and the defense is a prior invention by the defendant, if
the defendant prove that the instrument which he alleges was
invented by him was complete and capable of working, that it was
known to at least five persons and probably to many others, that it
was put in use, tested, and successful, he brings the case within
the established severe tests required by law to sustain the defense
set up.
2. Barthol Erbe anticipated William S. Kirkham in the invention
of door locks with reversible latches.
Appeal from the Circuit Court for the Southern District of New
York, in which court Coffin filed a bill against Ogden
et
al. to enjoin them from making door locks of a certain kind,
the exclusive right to make which he alleged belonged by the
assignment of a patent right to him.
The case was one chiefly of fact, involving the question of
priority of invention. The court below was of the opinion that the
complainant, or rather the person under assignment of whose patent
he claimed and was working, had been anticipated in his invention,
and dismissed the bill. From that decree the defendants took this
appeal.
MR. JUSTICE SWAYNE stated the case, recited the evidence, and
delivered the opinion of the Court.
The appellant was the complainant in the court below, and filed
this bill to enjoin the defendants from infringing the
Page 85 U. S. 121
patent upon which the bill is founded. The patent is for a door
lock with a latch reversible, so that the lock can be applied to
doors opening either to the right or the left hand. It was granted
originally on the 11th of June, 1861, to Charles R. Miller,
assignee of William S. Kirkham, and reissued to Miller on the 27th
of January, 1863. On the 10th of June, 1864, Miller assigned the
entire patent to the complainant. No question is raised as to the
complainant's title, nor as to the alleged infringement by the
defendants. The answer alleges that the thing patented, or a
material and substantial part thereof, had been, prior to the
supposed invention thereof by Kirkham, known and used by divers
persons in the United States, and that among them were Barthol
Erbe, residing at Birmingham, near Pittsburg, and Andrew Patterson,
Henry Masta, and Bernard Brossi, residing at Pittsburg, and that
all these persons had such knowledge at Pittsburg. The appellees
insist that Erbe was the prior inventor, and that this priority is
fatal to the patent. This proposition, in its aspects of fact and
of law, is the only one which we have found it necessary to
consider.
Kirham made his invention in March, 1861. This is clearly shown
by the testimony, and there is no controversy between the parties
on the subject.
It is equally clear that Erbe made his invention not later than
January 1, 1861. This was not controverted by the counsel for the
appellant, but it was insisted that the facts touching that
invention were not such as to make it available to the appellees,
as against the later invention of Kirkham and the patent founded
upon it. This renders it necessary to examine carefully the
testimony upon the subject.
Erbe's deposition was taken at Pittsburg upon interrogatories
agreed upon by the parties and sent out from New York. He made the
lock marked H. E. (It is the exhibit of the appellees, so marked).
He made the first lock like it in the latter part of the year 1860.
He made three such before he made the exhibit lock. The first he
gave to Jones, Wallingford & Co. The second he sent to
Washington when he applied for a patent. The third he made for
a
Page 85 U. S. 122
friend of Jones. He thinks the lock he gave to Jones,
Wallingford & Co. was applied to a door, but is not
certain.
Brossi. In 1860, he was engaged in lockmaking for the
Jones and Nimmick Manufacturing Company. He had known Erbe about
seventeen years. In 1860, Erbe was foreman in the lock shop of
Jones, Wallingford & Co., at Pittsburg. In that year, and
before the 1st of January, 1861, he went to Erbe's house. Erbe
there showed him a lock, and how it worked, so that it could be
used right or left. He says:
"He (Erbe) showed me the follower made in two pieces. One piece
you take out when you take the knob away. The other part -- the
main part of the follower -- slides forward in the case of the lock
with the latch, so you can take the square part of the latch and
turn it around left or right, whichever way a person wants to."
He had then been a lockmaker eight years. He examined the lock
carefully. He had never seen a reversible lock before. He has
examined the exhibit lock. It is the same in construction. The only
difference is that the original lock was made of rough wrought
iron. It was a complete lock, and capable of working. Erbe thought
it a great thing. Erbe showed him the lock twice afterwards at
Jones, Wallingford & Co.'s. He saw such a lock attached to the
office door there and working, but doesn't know whether it was the
first lock made or one made afterwards.
Masta. In 1860, he was a pattern maker for Jones,
Wallingford & Co. Had known Erbe fourteen or fifteen years.
Erbe showed him his improvement in reversible locks New Year's day,
1861. He examined the lock with the case open.
"You had to pull out the spindle, and the hub was fitted so that
it would slide between the spindle and the plate and let the latch
forward. . . . The whole hub was made of three pieces. One part was
solid to the spindle or hub shanks, and then the hub that slides
between the plate and case, and a washer at the other side of the
spindle. . . . There is not a particle of difference between the
exhibit and the original lock. It is all the same."
He identifies the time by the facts that he commenced building a
house in 1861,
Page 85 U. S. 123
and that year is marked on the water conductor under the
roof.
Patterson. Until recently, he was a manufacturer of
locks and other small hardware. In the year 1860, he was the
superintendent of the lock factory of Jones, Wallingford & Co.,
and their successors in Pittsburg. He had known Erbe since 1856.
About the 1st of January, 1861, Erbe showed him an improved
reversible lock of his invention like the exhibit lock. The
improvement
"consisted in constructing the hub or follower, so that when the
spindle was withdrawn, the hub would slide forward between the
cases so that the head of the latch would protrude beyond the face
of the lock, so as to permit its reversal from right to left; the
latch head being connected with the yoke by a swivel joint, so that
it might be reversed. . . . It was our uniform practice to put our
new locks on the doors about the office to test them, and I believe
that one was put on; but at this distance of time, I cannot say
positively that it was."
There is no proof that Erbe made any locks according to his
invention here in question but those mentioned in his testimony. He
applied for a patent in 1864, and failed to get it. Why is not
disclosed in the record.
The appellants called no witnesses at Pittsburg or elsewhere to
contradict or impeach those for the appellees. Brossi was subjected
to a rigorous cross-examination, but, in our judgment, it in nowise
diminishes the effect of his testimony in chief. The counsel for
the appellants asked with emphasis in the argument here why the
defendants had not called Jones, of the firm of Jones, Wallingford
& Co.? The question was well retorted why was he not called by
the other side? He does not appear in a favorable light. He
prevented Erbe, who was in his employ, from going to New York to
testify in behalf of the defendants, and avowed a determination to
prevent, if it were possible, their obtaining the testimony of
Brossi, Masta, and Patterson. It is difficult not to regard him
with a feeling akin to that which attends the presumptions
in
odium spoliatoris. We entertain no doubt that the testimony of
all these witnesses is true in
Page 85 U. S. 124
every particular, including the statement of Brossi as to
putting the lock on the door. If that were false, doubtless Jones
would have been called to gainsay it. His hostility to the
defendants is a sufficient reason for their not calling him for any
purpose.
The case arose while the Patent Act of 1836 was in force, and
must be decided under its provisions. The sixth section of that act
requires that to entitle the applicant to a patent, his invention
or discovery must be one "not known or used by others before his
invention or discovery thereof." The fifteenth section allowed a
party sued for infringement to prove, among other defenses, that
the patentee "was not the original and first inventor of the thing
patented, or of a substantial and material part thereof claimed to
be new."
The whole act is to be taken together and construed in the light
of the context. The meaning of these sections must be sought in the
import of their language, and in the object and policy of the
legislature in enacting them. [
Footnote 1] The invention or discovery relied upon as a
defense, must have been complete, and capable of producing the
result sought to be accomplished, and this must be shown by the
defendant. The burden of proof rests upon him, and every reasonable
doubt should be resolved against him. If the thing were embryotic
or inchoate; if it rested in speculation or experiment; if the
process pursued for its development had failed to reach the point
of consummation, it cannot avail to defeat a patent founded upon a
discovery or invention which was completed, while in the other case
there was only progress, however near that progress may have
approximated to the end in view. The law requires not conjecture,
but certainty. If the question relate to a machine, the conception
must have been clothed in substantial forms which demonstrate at
once its practical efficacy and utility. [
Footnote 2] The prior knowledge and use by a single
person is sufficient.
Page 85 U. S. 125
The number is immaterial. [
Footnote 3] Until his work is done, the inventor has given
nothing to the public. In
Gayler v. Wilder, the views of
this Court upon the subject were thus expressed:
"We do not understand the circuit court to have said that the
omission of Conner to try his safe by the proper tests would
deprive it of its priority, nor his omission to bring in into
public use. He might have omitted both, and also abandoned its use
and been ignorant of the extent of its value; yet if it was the
same with Fitzgerald's, the latter would not, upon such grounds, be
entitled to a patent, provided Conner's safe and its mode of
construction were still in the memory of Conner before they were
recalled by Fitzgerald's patent."
Whether the proposition expressed by the proviso in the last
sentence is a sound one it is not necessary in this case to
consider.
Here it is abundantly proved that the lock originally made by
Erbe "was complete and capable of working." The priority of Erbe's
invention is clearly shown. It was known at the time to at least
five persons, including Jones, and probably to many others in the
shop where Erbe worked, and the lock was put in use, being applied
to a door, as proved by Brossi. It was thus tested and shown to be
successful. These facts bring the case made by the appellees within
the severest legal tests which can be applied to them. The defense
relied upon is fully made out.
Decree affirmed.
[
Footnote 1]
Gayler v.
Wilder, 10 How. 496.
[
Footnote 2]
Reid v. Cutter, 1 Story 590.
[
Footnote 3]
Bedford v. Hunt, 1 Mason 302.