1 MacA. Pat. Cas. 607 | D.C. | 1859
In this case, upon an interference declared, the Commissioner of Patents has awarded a patent to the applicant for an improvement in printing-presses, and an appeal has beep prayed and allowed by the Commissioner from that decision. It is insisted that no appeal will lie in such case, and that consequently the Commissioner erred in its allowance, and that the appeal should be dismissed. The case of Pomeroy v. Connison, decided by
Although the power and jurisdiction given by the patent laws are special and limited, I do not think that the polidy of the law ever contemplated that they should be construed strictly, in the sense in which strict construction is held to be the rule of interpretation of those statutes which confer powers in derogation of common rights, or clothe with authority special tribunals, to the curtailment of the jurisdiction of superior courts administering justice upon the principles and after the modes known to the common law. On the contrary, all the rights and powers affecting the subject of patents arise out of positive law, and have been so benignly regarded by the framers of our institutions that they have been specially secured and confided to the care of the Federal Government by the provisions of the Constitution itself One portion of the law is not to be construed more rigidly than another, but all the parts, having their common source in the statutes, are to be interpreted with a wise liberality of construction, in furtherance of justice, and to give equal aid and facility of vindication to every right which grows out of patentable discoveries. Taking this principle of construction for our guide, if we find the language of the statute broad enough to embrace an appeal by a patentee from a decision in favor of an applicant, as well as an appeal by an applicant where the decision has been against him and in favor of the patentee, and if we can also discover any advantage which might accrue to the patentee from allowing him the appeal, then the statute should be so interpreted, notwithstanding the law be susceptible of another stricter construction which would exclude him from that privilege.
Now, by the act of 1852, chapter 107, all the powers, responsi
But it is said that in the clause “if either be dissatisfied with the decision of the Commissioner, * * * he may appeal,” the word “ either” may be satisfied by applying it to the words 1 ‘ such applicants,’ ’ i. e., either of such applicants ; and that this construction is “probable, from the fact that they [the legislature] have only authorized the judge to determine between contending applicants, and'not between an applicant and a patentee; for, when they come to say what the judge is to do upon the appeal, we find it is to determine which, or whether either, of the applicants is entitled to receive a patent as prayed for. The word ‘ either ’ in the former part of the claim is here explained to mean either of the applicants. It cannot be contended that the judge is to decide whether a patentee is entitled to receive a patent which he has already received and which is still in his possession.”
But unquestionably the language quoted cannot be limited to the case of contending applicants, since an appeal has never been denied to the unsuccessful applicant as against the patentee; and upon such appeal the patentee has always had a standing before
This interpretation of the words of the statute appears to give vital energy to every word of a section which otherwise would be awkward and contradictory in its parts, and seems to be furthering the great object of the patent laws as well as administering equal justice to all parties, and to be in harmony with every other pro
Having, then, jurisdiction, I proceed to inquire into the merits of the case. Both parties claim a certain improvement in printing-presses, which need not be minutely described, as they admit the principles involved to be identical; and only two questions have been presented for my consideration, to wit, pxiority of invention and abandonment on the part of Degener, the applicant. On account of the great looseness in practice of solicitors in assigning reasons of appeal, I take occasion to remark that it is perhaps very questionable whether these points have been presented for my considei-ation with sufficient distinctness. The law of 1839, chapter 87, section 11, requires the Commissioner to lay before the judge the grounds of his decision, fully set forth in writing, touching all the points involved by the reasons of appeal, to which the revision shall be confined. Now, the nature of an assignment of reasons to which the revision of the judge is to be confined is entirely nullified by an assignment, in the sweeping terms of a single sentence, asserting that the decision of the Commissioner is erroneous, because against the weight of legal evidence and contrary to the principles of law. It is manifest that such an assignment does not assist the judge in ascertaining the precise issues of law and fact made before the Commissioner; and while I am far from intimating a desire for technical accuracy in an assignment,
The response of the Commissioner in the present case, however, shows with great distinctness the points made before him, and they are priority of invention and abandonment by Degener, the applicant. From an inspection of the testimony, it is apparent that Degener had made a complete model of his invention in the fall of 1853. The evidence of two witnesses — Kneeland and Kuck — stands uncontradicted on this point, while the earliest trace of Babcock’s invention was in a drawing shown to one Morrison Davis in October, 1855. This point, then, is with the applicant.
On the second point I am equally well satisfied with the correctness of the Commissioner’s decision. The counsel for Babcock have argued this question very elaborately in two aspects. They have endeavored to show that in point of fact the invention of Degener was not a practically operative machine, but rested only in immature experiment, furnishing no obstacle to Babcock’s patent and no right to a patent in Degener; that the amount of force necessary to operate the several cog-wheels which convey the desired motion to the several parts of the press, and the weakness of the frame, (it being open-armed, and not braced across the top, as Babcock’s,) were defects which made it practically useless and a mere vain experiment. Besides the official judgment of the examiners in the case — that the model represented a complete operative machine — at the request of the appellant’s counsel I examined, under oath, Examiners Baldwin and King, both of whom testified before me that in their opinions the model of Degener represented a practically operative machine; Examiner King concluding that the frame-work of Babcock’s machine was stronger than Degener’s, and to that extent perhaps better. Both being shown to be models of operative machines, this branch of the objection fails — an inquiry into the comparative merits of the two, beyond the naked question of capacity to operate, not being open for investigation. The remaining branch of the argument upon abandonment, in the proper sense of the term, remains to be considered. The true meaning of the word in the acts of Congress is an abandonment of the invention to the public — a dedication of his discovery to the free use of his fellow-
It has been supposed that the case of Gaylor v. Wilder, 10 Howard, 477, has introduced a new rule on this subject into the patent law ; but not so. The court there expressly affirms, on page 498, that the omission of a prior discoverer to try the value of his invention by proper tests, or his omission to bring it into public use, would not deprive it of its priority. “ 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 the junior patentee, “the latter would not, upon such grounds, be entitled to a patent, ’ ’ provided the former, “ and its mode of construction, were still in the memory” of the first inventor “before they were recalled” by the junior patent. What the court, then, does decide is a very important, but a different question, to wit: If the discovery of the first inventor had been so far laid aside that it was in point of fact absolutely and irrevocably forgotten by him and by the whole world but for its recall to his memory by the second invention, then the said inventor must be held equally meritorious as one who discovers a lost art or an unpatented and unpublished foreign invention, and like him entitled to a patent. Indeed, the circumstances in Gaylor v. Wilder were much stronger than the present case; and while the court affirmed the legal proposition, they intimated the strongest, doubt whether in that case the evidence was sufficient to warrant the inference which the jury then drew. There is no testimony in the present controversy from which one would be warranted in drawing a like conclusion; nor is there
Upon the whole case, I am of opinion, and accordingly certify to the Hon. Joseph Holt, Commissioner of Patents, that there is no error in his decision in the premises; that his judgment is affirmed, and that a patent must be issued to Frederick Q. Degener as prayed.