34 F. 33 | U.S. Circuit Court for the District of Eastern Michigan | 1888
(orally after stating the facts as above.') From the facts that
have been presented in the preceding adjudications, and also in this new evidence, the difficulty grows, of course, out of the facts, if they be facts, connected with Baugh’s use of the machine in 1869-1870. It is perfectly clear that under these previous adjudications, — the Phillips Case, the Burlingame Case, and the Nightingale Case, — the plaintiffs, on the original applications, presented to the court a prima facie case, — a clear prima facie case, which warranted the issuance of the preliminary injunction. They had the presumption growing out of the issuance of the patent on the 29th of April, 1873, in favor of Gates, and that presumption has been supported by three adjudications. It is true that in the Phillips Case all the questions were not presented that could have been presented, or that were presented in the subsequent litigation. We come now to the Burlingame Case, in which Mr. Parshall is called as a witness. In that cáse Mr. Parshall testifies, and so does Mr. Willetts, the pattern maker, that they used two of the machines of the character indicated in the exhibit to his testimony in that case, and in the form designated by a model now before the court. Those two machines were used, one at the copper-works and the other at the Champion flour-mills. It is perfectly clear, under the statements of the witnesses themselves in that case, that the courts were justified in arriving at the conclusion that machines thus introduced at the Champion mills and at the copper-works were imperfect and defective, and were not a completed invention. I
Now, what was Parshall engaged in, and wdiat are the probabilities? When we come to consider evidence, we mu§t 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. Baugli, now introduced, as having perfected that sort of a machine in June, 1869, and yet we find Mr. Parshall postponing an application, although an inventor, and engaged in the effort at inventing and discovering that want, — we find him failing to make any application for an up-drop lubricator until 1878. Now, is it not probable that Mr. Parshall must have known more about this than any other living 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 aro not conducted in that way. Inventors do not act in that way. If Mr. Parshall had in 1869 what is now claimed, Mr. Parshall would undoubtedly have applied for a patent for it. The probabilities from Mr. Parshall’s conduct, and the probabilities from Mr. Par-shall’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 lie had it.
Now, in addition to that, the abandonment by Parshall is some evidence of an incomplete instrument. Looking at him in his situation as 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 Jade case besides the presumption of the patent, and In view of tlio decisions we are not satisfied that Mr. Baugh’s evidence breaks down that strong prima, facie case. We will, therefore, allow the injunction to stand.
(orally.) 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 liad not been advised by him upon this hearing. While I am not free from doubt with regard to the case, I think, upon the whole, the defendants have not established an anticipation of this patent beyond a reasonable doubt. I should not be surprised that, if this case were further heard, 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 we should look upon them with a good deal of suspicion. The defense really is that Mr. Parshall made certain machines in 1869 anticipatory of this device, and his testimony seems so to indicate this. The reply is virtually that these machines were not operative, and so Judge Lowell found with regard to the Champion mills and the copper-works machine, — that they hurst and were not operative devices. The testimony of Mr. Baugh would tend to show that the machine which was put into his mill was an operative device, hut in reply to that it may be said that Mr. Parshall, who is engaged in the patent business, who is an inventor by profession, and who has shown himself very alert to secure patents for his own benefit, had not sufficient confidence in this machine to induce 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 examined as a witness in the other cases, and in his interference in the patent-office, he never set up any of these machines except those which were sold to the Champion mills and to the copper-works, and no allusion is made in his testimony to the other machines upon which reliance is placed in this case. His excuse is, as 1 understand, that the glass was not good enough, was not strong enough, to make the machine operative; that while the same thing would have been operative upon a low pressure engine, the extra pressure of the steam in the high pressure engine burst the glass, and rendered the machine inoperative, — that is, when used upon that class of engines. His explanation amounts to this: that