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AMERICAN SODA FOUNTAIN CO. V. SAMPLE.

(Circuit Court of Appeals, Third Circuit. April 27, 1905.) PATENTS-SUIT FOR INFRINGEMENT-POWER TO GRANT REHEARING AFTER DE

CISION ON APPEAL.

Where the Circuit Court of Appeals has adjudged invalid the claims of a patent in issue in an infringement suit, reversing the Circuit Court, and issued its mandate directing the entry of a decree in conformity with its opinion, the authority of the Circuit Court is limited to the entry of a decree executing the mandate by dismissing the bill, and it has no discretion to grant a rebearing on the ground that complainant has filed a disclaimer in the Patent Office which avoids the grounds of invalidity

found by the appellate court, unless by leave of the latter court. On petition for a writ of mandamus to enforce the mandate of the court in the case of the American Soda Fountain Company and another against George W. Sample.

Joshua Pusey, for petitioner.
W. G. Henderson, for Sample.
Before ACHESON, DALLAS, and GRAY, Circuit Judges.

ACHESON, Circuit Judge. George W. Sample brought his bill of complaint against the American Soda Fountain Company and Alfred H. Lippincott in the Circuit Court of the United States for the Eastern District of Pennsylvania for the alleged infringement of letters patent No. 498,962 for an improvement in draft tubes for soda-water fountains, and, the cause having been heard upon the pleadings and proofs, the court made a decree adjudging that the first and fifth claims of the patent were valid, and that the defendant, the American Soda Fountain Company, had infringed these claims. 126 Fed. 760. Upon appeal by the said defendant, this court held that the first and fifth claims of said patent were invalid for want of patentable novelty, and we reversed the decree of the Circuit Court. 130 Fed. 145, 64 C. C. A. 497. On the 16th day of December, 1904, the mandate of this court was issued to and filed in the Circuit Court, directing that court to enter a decree in conformity with the opinion of this court. Undoubtedly, the inandate required the entry by the Circuit Court of a decree dismissing the bill. Before the court had acted upon our mandate, the complainant below (Sample), on December 30, 1904, presented his petition to the Circuit Court, setting forth that on December 27, 1904, he had filed a disclaimer (copy of which was attached to his petition), and prayed that the court “give further consideration to this cause, in view of said disclaimer being made a part of the patent in suit.” On January 15, 1905, the Circuit Court granted a rehearing, upon condition that the petitioner pay all costs that had accrued both in the Circuit Court and in the Court of Appeals. In the opinion (134 Fed. 402) announcing the allowance of a rehearing, the court describes the disclaimer as one by which the complainant “seeks to restrict the claims in controversy" so as to “avoid the effect of the anticipating devices referred to by the Court of Appeals." And then, after recognition of the rule that the Circuit Court has no power, upon the ground of newly discovered evidence, to reopen a question which has been finally decided by the Court of Appeals, without the permission of the appellate tribunal, the opinion proceeds thus:

"But in the present case the complainant's patent, as it now stands, has never been before the Circuit Court of Appeals, and has therefore never been considered. It is in effect a new patent, and the subject of its validity or invalidity has never been decided by any tribunal."

Do these considerations justify the action of the Circuit Court in granting a rehearing without leave of this court?

The decisions of the Supreme Court require a negative answer. That court has held repeatedly that the authority of the court below extends only to executing the mandate. Ex parte Sibbald, 12 Pet. 488, 492, 9 L. Ed. 1167; Ex parte Dubuque & Pacific Railroad, 1 Wall. 69, 17 L. Ed. 514; Stewart v. Salamon, 97 U. S. 361, 362, 24 L. Ed. 1044. In the last-cited case the court, speaking by Chief Justice Waite, said:

"This is an appeal from a decree entered upon our mandate. No complaint is made as to its form, and it seems to be in all respects according to our directions. The effort of the appellant was to open the case below, and to obtain leave to file new pleadings introducing new defenses. This he could not do. The rights of the parties in the subject-matter of the suit were finally determined upon the original appeal, and all that remained for the Circuit Court to do was to enter a decree in accordance with our instructions, and carry it into effect."

In re Potts, 166 U. S. 263, 267, 17 Sup. Ct. 520, 521, 41 L. Ed. 994, the court, speaking by Mr. Justice Gray, said:

“When the merits of a case have been once decided by this court on appeal, the Circuit Court has no authority, without express leave of this court, to grant a new trial, a rehearing, or a review, or to permit new defenses on the merits to be introduced by amendment of the answer."

In view of these controlling decisions, we are constrained to allow a writ of mandamus in accordance with the prayer of this petition.

There is no good reason for withholding (as was done in Re Potts, supra) the writ of mandamus until the complainant below can apply to this court for leave to file a petition for a rehearing in the Circuit Court. We are unable to see that the entry of the decree directed by our mandate can at all prejudice the rights of the complainant, based on his disclaimer, or prevent any proper proceeding which is now open to him.

It is ordered that a writ of mandamus issue as prayed for.

ATWOOD-MORRISON CO. V. SIPP ELECTRIC & MACHINE CO.

(Circuit Court, D. New Jersey. May 1, 1905.)

1. PATENTS-EVIDENCE OF PATENTABILITY.

The issuance of a patent is of itself evidence of the patentability, usefulness, and novelty of a device.

(Ed. Note.-For cases in point, see vol. 38, Cent. Dig. Patents, $8 53, 62.) 2. SAME-EVIDENCE OF PRIOR USE.

Evidence of prior use, to overcome the presumption of validity of a patent, must be clear and convincing in character and of weight sufficient to overcome every reasonable doubt.

[Ed. Note.-For cases in point, see vol. 38, Cent. Dig. Patents, $ 104.] (Syllabus by the Court.)

In Equity. Letters patent No. 729,084 sustained on the evidence.

Charles Neave, for complainant.
Edward Q. Keasbey, for defendant.

CROSS, District Judge. The complainant corporation is owner of letters patent No. 729,084, which it alleges in its bill of complaint has been infringed by the defendant, and it asks for the usual relief in such cases. The complainant's title to said patent is unassailed, and its infringement is admitted. Indeed, the proofs show that the defendant copied its device after the complainant's and that they are practically alike. The patent in suit is for certain "new and useful improvements in swift-brackets," and its inventor described its purposes as follows:

“The object of my invention is to provide a bracket for supporting a swift for winding silk, cotton, or other threads or filaments. As commonly used the brackets supporting the swifts are rigid and not capable of adjustment, while the conditions of use require a vertical change of position of the swift in order to obtain the best results.

In the form of swift supports commonly used, the arm supporting the swifts is secured rigidly to the frame, and by my invention I have provided means whereby the swifts are adjustably supported in place on the frame, thereby securing better results in the winding operation."

There are five claims in the patent. Of these the complainant relies upon the first, second, and fourth only, as follows:

(1) In combination in a winding-frame, a swift-supporting rail, a plural number of bases adapted to be secured to the rail, a swift-arm pivoted to each base at or near the rail, each arm having on its outer end means for supporting the ends of two adjucent swifts, and means for locking each arm against pivotal movement.

"(2) In combination with a winding-frame, a swift-supporting rail, a plural number of bases adapted to be secured to the rail and having means of adjustment lengthwise of the rail, a swift-supporting arm pivoted to each base at or near the rail, each arm having at its outer end means for supporting the ends of two adjacent swifts, and means for locking the arm against pivotal movement."

"(4) In combination in a winding-frame, a swift-supporting rail, a series of two or more bases adjustably mounted upon the rail, a swift-supporting arm pivoted to each base at or near the rail, each arm having at its outer end

recessed pockets on opposite sides to receive the swift-bearing of the ends of two adjacent swifts, and means for preventing pivotal movement of the swiftarm."

The patent, it may be said, is a combination of known elements; but this does not affect its validity, if the new combination and arrangement of such elements produces a new and beneficial result. The defendant corporation contends that the patent in suit is invalid because of the prior art, and seeks to show, not only that all of its elements had been embodied in combination in previous patents, but that similar devices had been made and sold for several years prior to the date of the patent in question, and consequently that the invention lacks novelty. In other words, it claims that any mechanic skilled in the art could have done exactly what the complainant's patentee did.

The testimony clearly shows that it is of great advantage to have the brackets which support the swifts adjustable. This is done by the complainant's device in two directions_vertically by having the arm pivoted near the base, and horizontally by means of a slot where it is attached to the rail. Many advantages are attained by the use of these adjustments, among them the following: By the use of the pivoted adjustment the "swifts” can be supported at a height convenient to the operator; swifts of different sizes can be used when skeins of different sizes are to be wound; the axis of each swift can be maintained in a horizontal line, and the axes of all the swifts on the same frame supported at the same height; and by the use of the horizontal adjustment, which may be either a slot in the base of the bracket or a slot in the rail (both being embraced in claim 2), the brackets can be adjusted on the rail to suit the varying widths of the swifts, and, when so adjusted, can be conveniently and securely fastened to the rail.

It is unnecessary to cite authority to show that the issuance of the complainant's patent is in itself evidence of the patentability, usefulness, and novelty of the device, and that such presumption can be overcome only by reliable and certain proof; while as to its utility it is enough to say that it has been adopted and used by the defendant corporation, and this fact is sufficient to establish its utility, at least as against it. Lehnbeuter v. Holthaus, 105 U. S. 94, 26 L. Ed. 939; Young v. Wolfe (C. C.) 120 Fed. 956, 958.

To show the want of novelty or invention in the patent of the complainant, the defendant has cited a number of prior patents, and has also offered proof to show that the complainant's device was used and sold several years before its patent was issued. Some of the patents cited by the defendant, notably the Betz, Hayes, and Sweett patents, show that an adjustable joint or pivot was old in the art at the time the patent in suit was issued, and this is not de. nied by the complainant. None of the patents just referred to, however, have anything to do with winding machinery.

The Atkinson and Wrigley patents, issued in 1873 and 1883, respectively, both relate to winding frames in which the silk is wound from “risers" and not from "swifts.” These devices, "risers" and "swifts,” are unlike each other and have different uses. In the use

of a “riser" the bracket supporting it is not held in a fixed position vertically, but, on the contrary, it is purposely movable, since the bracket must frequently be raised or lowered to increase or decrease the tension of the skein which is being unwound. Furthermore, each bracket supports a single reel, and the adjustment of the lower bracket of a "riser" frame is not at all for the purpose of alignment of all the reels. Again, this bracket has two arms between which the reel is held, one longer than the other, and some of the models show a handle at the end of the longer arm for the purpose of quick and ready adjustment in case the skein should become tangled, which, as said before, is not the case with the swiftarm; for the adjustment of the swift-arm, when once made, is locked to prevent pivotal action in a vertical direction.

Adjustable brackets for "risers," the evidence shows, had been generally known and used for years, yet they do not seem to have suggested the use of adjustable brackets for "swifts"; for Mr. Ryle, the well-known silk manufacturer of Paterson, N. J., testified that swift-brackets were made rigid for 45 years, to his knowledge, and the president of the defendant company admits in his testimony that before he saw the Morrison machines he had never seen a winding machine having brackets supporting adjacent swifts, the brackets being made of a base portion fastened to the rail, and the arm portion attached to the base portion in such a way as to provide for vertical adjustment.

The only anticipating patent offered by the defendant which relates to swift-hangers is the Atwood patent of 1882. Under this patent the bracket or bar was constructed with “upwardly converging slide-ways or slots, and means for holding said bars in said slide-ways or slots," and with the beam to which the brackets or bars were attached movable, so that all the brackets or bars could be adjusted at the same time. But this device is not at all like the complainant's; that is, it does not show a swift-arm pivoted to each base at or near the rail, nor was there any means of adjustment of each arm separately, lengthwise of the rail, or means for locking each arm separately against pivotal movement. Other patents have been cited, but it is unnecessary to discuss them. The Atwood patent seems to be the only one at all like the patent in suit, and even this, when considered in detail, is, as we have shown, wholly unlike it.

The defendant, however, has not rested his case upon the patents cited, but has endeavored to show prior use and sale of the device in question. To maintain this position, the courts require that the proofs shall be clear, satisfactory, and beyond reasonable doubt. The burden of proof rests upon the defendant, and every reasonable doubt should be resolved against him. In the case of Young v. Wolfe (C. C.) 120 Fed. 956, 959, the following rule is laid down:

"In approaching the defense of prior use the rule of evidence applicable thereto should constantly be borne in mind. The defense must be established beyond a reasonable doubt. The reason for the rule is obvious. It is so easy to fabricate or color testimony which lies almost wholly in the control of the person producing it, the infirmities of the human memory are so great,

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