Warren Bros. v. City of New York
187 F. 831
2d Cir.
1911
Check Treatment
LACOMBE, Circuit Judge.

[1] This patent was discussed by the Court of Appeals for the Sixth Circuit in a carefully considered opinion. The patent was held valid and the claims construed. Warren v. City of Owosso, 166 Fed. 309, 92 C. C. A. 227. Referring to this circumstance Jttdge Coxe states the principles which should control when application for a preliminary injunction is subsequently made and resisted on ex parte affidavits, as follows:

“There can be no doubt that the doctrine of comity not only, but the orderly administration of justice, recluiros that the Circuit Court should adopt and follow the decisions of the Circuit Courts of Appeals in other circuits than their own, rendered upon facts substantially identical. Any other rule would lead to confusion and Injustice. Of course in such circumstances the defendant in patent causes may introduce new evidence of anticipation and may'show that the facts on which infringement is based are essentially different from those in the adjudicated case. Such proof must carry conviction with it.”

Appellant’s brief bitterly attacks this statement, hut we understand it to be an accurate presentation of the law and find nothing in Mast, Foos & Co. v. Stover Mfg. Co., 177 U. S. 488, 20 Sup. Ct. 708, 44 L. Ed. 856, which calls for any different conclusion. In that case new evidence introduced in a later suit on the same patent did convince the Circuit Court of Appeals that the patent was invalid, and it quite properly decided in accordance with its convictions. The practice indicated by Judge Coxe has been uniformly followed in this circuit, since this court was .established. Box Co. v. Paper Co., 51 Fed. 229, 5 C. C. A. 165; Doig v. Morgan Machine Co., 91 Fed. 1001, 33 C. C. A. 683; New York Filter Co. v. Niagara Falls Waterworks Co., 80 Fed. 924, 26 C. C. A. 252; Consolidated Rubber Tire Co. v. Diamond Rubber Co., 157 Fed. 677, 85 C. C. A. 349.

The record in the Owosso Case is filed as a physical exhibit, the defendant’s record alone in that case consisting of over 1,800 printed pages. We fully concur with Judge Coxe’s finding, upon an examination of that record, that the state of the art as disclosed by prior patents and publications in evidence there is substantially the same as that disclosed here. Practically the only new questions are as to the effect of three alleged prior uses not testified to in the Owosso Case and as to infringement.

This conclusion of the Circuit Court is also bitterly assailed, and we must confess that we find it difficult to understand some of the statements in appellant’s brief. It is stated that in the Owosso suit “the only defense made to the patent was an assertion of its invalid*836íty by reason of a single instance of prior use in the shape of a sidewalk laid at Long Island City.” Reference to Owosso record, however shows numerous prior patents and prior publications introduced and commented upon by expert witnesses, and page after page of discussion of the art generally and of the meaning of the specifications and claims of this and other patents taken out by Warren and by others. The most cursory examination shows that the 1,800 pages were not wholly devoted to the history and characteristics of the pavement at Long Island City; and the opinion of the Circuit Court of Appeals shows that pi'ior patents were discussed and considered.

The appellant’s brief also contains the statement: That counsel have high confidence that this court “will not even assume that the question of double patenting was considered by the court in the Owosso Case, or any attention paid thereto.” This theory of “double patenting” is based on two earlier patents to Warren, Nos. 675,430 and 695,421. Both of these patents were in the Owosso record, and defendant’s expert, referring to them, testified (at page 758) that:

“Tbe admixture of mineral aggregate specified in patent 675,430 comes absolutely within, and is covered by, the terms of claims o and 6 of the patent .in suit.”

The briefs on the Owosso appeal are not before us, but they were before'Judge Jones in Warren Bros. v. City of Montgomery, 172 Fed. 414, who says:

“I find, from examination of the defendant’s briefs before the Circuit Court of Appeals in that case, that the defense of double patenting was brought to the attention of the court and relied on.”

Under these circumstances the “assumption” which we are here asked to make is certainly remarkable. In Rosenstern v. U. S., 171 Fed. 71, 96 C. C. A. 175, we suggested that it would be charitable for counsel to assume that, in disposing of the appeals which come before this court, it is our practice to listen to the arguments and to read the briefs. Certainly it would be most uncharitable for this court to assume that some other federal court fails to read the briefs or to consider the arguments therein advanced. All that we are here disposed to assume is that the suggestion in the brief was an inadvertence.

[2] As to the three new alleged prior uses and the question of infringement, we are in entire accord with Judge Coxe’s reasoning and conclusions. The order is affirmed.