No. 12092 | 5th Cir. | Feb 5, 1948
The validity of the patent to Holmes, as to the matters discussed by the district judge and in our opinion, needs no further examination. The ground for rehearing now pressed is that the case in the district court should have been reopened on the timely motion there made to receive newly discovered, evidence as to .use by others of the patented device more than two years prior to the' application of Holmes. Gairing Tool Co. v. Eclipse, 6 Cir., 48 F.2d 73" court="6th Cir." date_filed="1931-04-07" href="https://app.midpage.ai/document/gairing-tool-co-v-eclipse-interchangeable-counterbore-co-1569018?utm_source=webapp" opinion_id="1569018">48 F.2d 73, is specially relied on.
Prior use was briefly pleaded, but Zachos testified and contended that his device, though used prior to the Holmes application, was not an infringement of Holmes, and it was therefore not an anticipation. The judge found that prior use was not shown. A motion for new trial was at once made, setting up by affidavits of two apparently disinterested witnesses the construction for Zachos and the use by his customers of. devices which they say were substantially what Zachos is now using, except that a metal tube was. used where a lucitc rod is now used. If this be true there was an anticipation of the Holmes patent which covers both the tube and rod, for we have held either is an infringement. But. no drawings, models or devices made before Holmes’ application were offered to be proved. The stand or base which Zachos .has found does not show the device itself. Mere oral testimony, though from disinterested witnesses, has rarely been thought sufficient, to show .prior use to overthrow a patent on this ground. In the Barbed Wire Patent (Washburn & Moen Mfg. Co. v. Beat ’Em All Barbed Wire Co.), 143 U.S. 275" court="SCOTUS" date_filed="1892-02-29" href="https://app.midpage.ai/document/the-barbed-wire-patent-93267?utm_source=webapp" opinion_id="93267">143 U.S. 275, 284, 12 S.Ct. 443, 36 L.Ed. 154, the unsatisfactory character of such evidence is discussed, and it was said the'proof must be clear and satisfactory, and beyond a reasonable doubt. This was repeated in Eibel Process Co. v. Minnesota, & Ontario Paper Co., 261 U.S. 45" court="SCOTUS" date_filed="1923-02-19" href="https://app.midpage.ai/document/eibel-process-co-v-minnesota--ontario-paper-co-100120?utm_source=webapp" opinion_id="100120">261 U.S. 45, 60, 43 S.Ct. 322, 67 L.Ed. 523, and Smith v. Hall, 301 U.S. 216" court="SCOTUS" date_filed="1937-04-26" href="https://app.midpage.ai/document/smith-v-hall-102819?utm_source=webapp" opinion_id="102819">301 U.S. 216, 222, 57 S.Ct. 711, 81 L.Ed. 1049. But the testimony of a single witness, corroborated by circumstances, may be sufficient to create conviction. Corona Cord Tire Co. v. Dovan Corporation, 276 U.S. 358" court="SCOTUS" date_filed="1928-04-09" href="https://app.midpage.ai/document/corona-cord-tire-co-v-dovan-chemical-corp-101248?utm_source=webapp" opinion_id="101248">276 U.S. 358, 381, 382, 48 S.Ct. 380, 72 L.Ed. 610. If Zachos - can yet discover among his former customers one of the devices of sufficient age, corroboration might be complete. Other less cogent circumstances may exist. The motion ought not to work a general new trial, but there is much good sense in the position taken in Gairing Tool Co. v. Eclipse, supra, that, it is better now to investigate fully the matter of anticipation than to allow other infringers of Holmes, who -now by this record are informed of the claimed anticipation, to establish it and
Judgment on appeal suspended, and direction given for further proceedings.