Standard Elevator Co. v. Crane Elevator Co. · 239

Court

Circuit Court of the United States for the Northern District of Illinois

Decided

Oct 5, 1896

Judge

SHOWALTER, Circuit Judge

Posture

Decree entered on March 12, 1895, granting perpetual injunction for patent infringement, referring case to master for accounting, and reserving costs

Defendantss (4)

Standard Elevator Company, Herbert A. Beidlor, and Wm. H. Wells, Jr.

F. T. Brown, Benj. Harrison

Plaintiffs/Complainants (1)

Crane Elevator Company et al.

J. H. Raymond, Edwin H. Brown

Overview

The decree appealed from is affirmed in all respects except as to claim 6 of patent No. 328,614, and as to that claim the decree is reversed, with direction that the order of reference be vacated to that extent, and the bill dismissed for want of equity as to that claim; cause remanded to circuit court.

Case summary

This patent infringement case involves appeals from a decree granting a perpetual injunction against Standard Elevator Company et al. for infringing claims of patents No. 328,614 and No. 456,122, owned by Crane Elevator Company et al. The Circuit Court of Appeals for the Seventh Circuit addressed jurisdictional issues, holding the decree final and appealable under Section 6 of the 1891 Act, as it conclusively determined patent ownership, validity, infringement, and injunction, despite a pending accounting. On the merits, the court affirmed the validity and infringement of patent No. 456,122 (elevator control device with two counterbalancing cables), finding Reynolds the first inventor over Smith. For patent No. 328,614 (hydraulic elevator improvements), claims 2 and 4 were upheld as valid and infringed, but claim 6 was valid not infringed. The court also ruled that certified copies of patent office assignments provide prima facie proof of title. The majority opinion by SHOWALTER was joined by BUNN, with WOODS dissenting on several points, including the finality of the decree and priority of invention.

Abstract

The appeals court upheld jurisdiction, deeming the decree final and appealable despite a pending accounting, as it conclusively resolved patent ownership, validity, infringement, and injunction. On the merits, it affirmed validity and infringement for one patent and most claims of the other, establishing the patentee as the first inventor and certified assignments as prima facie proof of title, while reversing as to one specific claim due to non-infringement. The decree was affirmed except for that claim, with directions to vacate the reference and dismiss the bill for want of equity, and the case remanded.

Opinion of the court

Majority
opinionSHOWALTER, Circuit Judgejoined by BUNN, District Judge

Decree is final appealable decision under Section 6
Patent No. 456,122 valid and infringed
Claims 2 and 4 of patent No. 328,614 valid and infringed; claim 6 valid not infringed
Patent office records prima facie prove assignments

Concurring opinions

Concurring BUNN, District Judge

Dissenting opinions

Dissenting WOODS, Circuit Judge

Jurisdiction

challenged

Statutory basis

Section 6 of the act of March 3, 1891, establishing circuit courts of appeals

Subject matter

Patent infringement case under federal patent laws

Jurisdictional holding

Court has jurisdiction under Section 6 as the decree appealed from is a final decision on patent ownership, validity, infringement, and injunction, despite accounting and costs being reserved

Jurisdictional facts

Appeal from final decision in patent case
Case involves patents No. 328,614 and No. 456,122

Procedural posture

Posture at trial

Decree entered on March 12, 1895, granting perpetual injunction for patent infringement, referring case to master for accounting, and reserving costs

Posture on appeal

Direct appeal from decree

Preserved issues

Whether decree is final or interlocutory for appeal purposes
Validity and infringement of patents
Title to patent No. 328,614

Subsequent history

Petition for rehearing

filed and denied

Rehearing en banc

not filed

Petition for certiorari

not filed

Remand proceedings

Cause remanded to circuit court for further proceedings per decree

Mandate issued

Not specified

Legal categories

Business

Case record

Full case name

STANDARD ELEVATOR CO. et al. v. CRANE ELEVATOR CO. et al.

Docket number

No. 239

Court

Circuit Court of Appeals, Seventh Circuit

Trial court

Circuit Court of the United States for the Northern District of Illinois

Trial court judge

Judge Jenkins

Decided

Oct 5, 1896

Opinion author

SHOWALTER, Circuit Judge

Opinion type

published

Precedential status

precedential

Judges on panel

WOODSSHOWALTERBUNN

Issues & holdings

Issues raised

affirmed

modified

Holdings

Whether the decree appealed from is a final decision appealable under Section 6 of the act of March 3, 1891, or an interlocutory order appealable under amended Section 7

affirmed

Standard of review

de novo

Disposition rationale

Decree is final as to patent ownership, validity, infringement, and injunction; accounting and costs reservation do not make it interlocutory

Preservation

Issue preserved for review

Whether patent No. 456,122 is valid and infringed

affirmed

Standard of review

clearly erroneous

Disposition rationale

Reynolds was first inventor; patent not anticipated by Lampe or Baldwin; appellants infringe

Preservation

Issue preserved for review

Whether patent No. 328,614 is valid and infringed as to claims 2, 4, and 6

modified

Standard of review

clearly erroneous

Disposition rationale

Claims 2 and 4 valid and infringed; claim 6 valid but not infringed

Preservation

Issue preserved for review

Whether appellees proved title to patent No. 328,614 through assignments

affirmed

Standard of review

de novo

Disposition rationale

Certified copies from patent office are prima facie proof of assignments; no objection based on non-production of originals

Preservation

Issue preserved for review

Holdings of the court

Finality of decree for appeal

The decree is a final decision appealable under Section 6 of the act of March 3, 1891, not an interlocutory order under amended Section 7

Decree adjudicates patent ownership, validity, infringement, and grants perpetual injunction without reservation; accounting and costs reservation do not affect finality of these portions; contrast with interlocutory orders that preserve court control

2-1 (SHOWALTER and BUNN; WOODS dissenting)binding precedent

Validity and infringement of patent No. 456,122

Patent No. 456,122 is valid and infringed by appellants

Reynolds was first inventor as shown by September 1884 sketch; not anticipated by Lampe or Baldwin patents; appellants' device uses two cables attached to car as in claims

2-1 (SHOWALTER and BUNN; WOODS dissenting)binding precedent

Validity and infringement of patent No. 328,614

Claims 2 and 4 of patent No. 328,614 are valid and infringed; claim 6 is valid but not infringed

Claims 2 and 4 not in prior art; appellants' construction infringes by having separate air and water exits joining later. Claim 6 requires single valve in passage for flow both ways; appellants use two valves in separate passages

2-1 (SHOWALTER and BUNN; WOODS dissenting)binding precedent

Proof of title to patent No. 328,614

Certified copies from patent office records are prima facie proof of assignments, establishing appellees' title

Section 4898 and 892 of Revised Statutes imply record presumes genuine assignment; objections did not specify need for originals; prior rule from Brooks v. Jenkins followed

2-1 (SHOWALTER and BUNN; WOODS dissenting)binding precedent

Error analysis

Decree is interlocutory, not final, so appeal improper — procedural · no error foundNot applicable · not applicable
Patent No. 456,122 invalid due to anticipation by Lampe or Baldwin — evidentiary · no error foundNot applicable · not applicable
Claims 2 and 4 of patent No. 328,614 invalid or not infringed — evidentiary · no error foundNot applicable · not applicable
Claim 6 of patent No. 328,614 infringed — evidentiary · error foundError not harmless as affects part of decree · not harmless
Appellees failed to prove title to patent No. 328,614 — evidentiary · no error foundNot applicable · not applicable

Statutory interpretation

Statute

Section 6 of the act of March 3, 1891

Question

Whether 'final decision' includes decree granting perpetual injunction after merits hearing, with accounting pending

Court's reading

Yes, such decree is final for appeal purposes

Canons applied

Plain meaningContext with amended Section 7

no legislative history

Statute

Section 7 of the act of March 3, 1891, as amended February 18, 1895

Question

Whether 'interlocutory order or decree' includes perpetual injunction after full hearing

Court's reading

No, such injunction is not interlocutory as it concludes merits without reservation

Canons applied

Plain meaningContrast with final decree

no legislative history

Statute

Sections 4898 and 892 of Revised Statutes

Question

Whether certified copies of patent office assignments are prima facie proof of execution

Court's reading

Yes, record presumes genuine assignment

Canons applied

Statutory purposePrior precedent

no legislative history

Burden of proof

Prosecution burden

Preponderance of evidence for patent validity and infringement in equity

Defence burden

Burden to prove anticipation or invalidity

Burden met

true

Burden-shifting issues

Priority of invention between Reynolds and Smith for patent No. 456,122

Standards of review

Jurisdiction and finality of decree — de novo Court reviews statutory interpretation and legal classification of decree de novo
Patent validity and infringement — clearly erroneous Factual findings by trial court on invention priority, anticipation, and infringement reviewed for clear error
Evidentiary rulings on patent assignments — de novo Legal question of probative force of patent office records reviewed de novo

Timeline

Events

3,844

Days, incident to ruling

Sep 1, 1884 — Mar 12, 1895

Span

Sep 1, 1884factual eventcited in opinion

Reynolds allegedly made original sketch showing conception of invention for patent No. 456,122

Evidence of Reynolds' priority of invention

Validity of patent No. 456,122

Reynolds

Dec 1, 1884factual eventcited in opinion

Reynolds and Smith conversed about inventions; Reynolds sketched pendent-weight device, Smith sketched cables attached to car

Dispute over priority of invention for patent No. 456,122

Validity of patent No. 456,122

Reynolds · Smith

Feb 1, 1885factual eventcited in opinion

Reynolds reduced invention to practice by attaching cable ends to car in Chicago building

Reduction to practice of patent No. 456,122

Validity of patent No. 456,122

Reynolds

Dec 1, 1891filingcited in opinion

Appellees filed bill of complaint alleging patent infringement

Procedural history

Crane Elevator Company et al. trial court

Mar 12, 1895rulingcited in opinion

Circuit court entered decree granting perpetual injunction for infringement of claims 2, 4, 6 of patent No. 328,614 and both claims of patent No. 456,122, referring to master for accounting, reserving costs

Outcome: Decree for appellees

Final adjudication on merits leading to appeal

Whether decree is final or interlocutory

Judge Jenkins trial court

Mar 12, 1895filingcited in opinion

Appellants filed petition for appeal to Circuit Court of Appeals

Appeal process

Standard Elevator Company et al. trial court

Facts & evidence

Incident

Date

December 1, 1891

Location

Not specified

Key facts

5 facts

Appellees filed bill alleging infringement of multiple patents by appellants
Decree of March 12, 1895, dismissed some patents, found infringement of claims 2, 4, 6 of patent No. 328,614 and both claims of patent No. 456,122
Perpetual injunction granted without reservation
Reference to master for accounting of damages and profits
Question of costs reserved

Disputed questions

Whether decree is final or interlocutory
Priority of invention between Reynolds and Smith for patent No. 456,122
Infringement of specific patent claims

Procedural history

5 steps

Bill filed December 1, 1891
Hearing on bill, answer, replication, and proofs
Decree entered March 12, 1895
Appeal petition filed by appellants
Appeal allowed with bonds filed

Evidence in the record

Direct

Original sketch by Reynolds from September 1884
Testimony of Reynolds and Smith about December 1884 conversation
Certified copies of patent office assignments

Physical

Elevator devices in buildings

Testimonial

Witness testimony from Wells, Cartright on reduction to practice
Expert testimony on patent functionality

Documentary

Patent specifications and drawings
Interference proceeding records
Letters about patent agreements

Circumstantial

Admissions by Reynolds about Smith's priority
Conduct of Reynolds in not claiming cables attached to car initially

Challenged

Evidence type: Certified copies of patent office assignments · Challenge basis: Lack of proof of execution of originals · Trial court ruling: admitted · Reasoning: Prima facie proof under Sections 4898 and 892 · Challenged on appeal: true · Appellate outcome: affirmed
Evidence type: Reynolds' sketch from September 1884 · Challenge basis: Authenticity and clarity · Trial court ruling: admitted · Reasoning: Shows conception of invention · Challenged on appeal: true · Appellate outcome: affirmed

Objects of relevance

Hydraulic elevator cylinders and pistonsCables and pulleys for elevator control

Policy considerations

Need for finality in patent litigation to prevent prolonged disputes
Balance between appellate review and trial court control over interlocutory matters
Public interest in clear rules for patent assignment proof

Authorities

Cited authorities (4)

Forgay v. Conrad, 6 How. 202

appliedprecedent

Finality of decrees with multiple parts

Bissell Carpet-Sweeper Co. v. Goshen Sweeper Co., 19 C. C. A. 25, 72 Fed. 545

criticizedprecedent

Effect of affirmance on interlocutory decrees

Brooks v. Jenkins, 3 McLean, 432, Fed. Cas. No. 1,953

followedprecedent

Patent office records as proof of assignments

City of New York v. American Cable Ry. Co., 9 C. C. A. 336, 60 Fed. 1016

disapprovedprecedent

Patent office records not proof without originals

Related cases (4)

Forgay v. Conrad, 6 How. 202

precedent

Cited on finality of decrees with multiple parts

Bissell Carpet-Sweeper Co. v. Goshen Sweeper Co., 19 C. C. A. 25, 72 Fed. 545

precedent

Discussed but disapproved on affirmance giving finality

Brooks v. Jenkins, 3 McLean, 432, Fed. Cas. No. 1,953

precedent

Followed on patent office records as proof

City of New York v. American Cable Ry. Co., 9 C. C. A. 336, 60 Fed. 1016

precedent

Disapproved on patent office records

Statutes

Section 6 of Act of March 3, 1891
Section 7 as amended 1895
Sections 4898 and 892 of Revised Statutes

Standards & doctrines

Clearly erroneous standard for factual findings in patent cases

Legal principles applied

One portion of decree can be final and appealable while another is interlocutory

Notable quotes

“The judicial function of considering involves the function of determining.”

SHOWALTER, Circuit Judge — Discussing appellate court's role in reviewing decrees

Emphasizes that review entails decision-making power

“There is no power in the court of appeals whereby its affirmance, or approval on review, of a decree of the circuit court, can give a finality to that decree which it did not have when entered of record in the circuit court.”

SHOWALTER, Circuit Judge — Arguing against idea that affirmance makes interlocutory decree final

Highlights limits of appellate authority

Index terms54

Summary terms

Legal mechanisms

Various actions

Various actors

Legal concepts

Legal outcomes

Legal issues

Legal procedures

Legal remedies

Legal evidence

Legal arguments

Legal defenses

Legal penalties

Legal procedural steps

Geo locations

Judges

Attorneys

Procedural terms

Substantive offenses

Entities and documentation

Legal actions

Action type

affirmed in part, reversed in part, and remanded

Target

trial court decree

Appealed from

Circuit Court for Northern District of Illinois

Context

Majority affirms decree except as to claim 6 of patent No. 328,614, which is reversed, and cause remanded

Scope

in part

Further instructions

Order of reference vacated as to claim 6, bill dismissed for want of equity as to that claim

Disposition vote

2-1

Physical materials

Search facets

Parties

Judges

BunnShowalterWoods

Courts

Locations

Statutes cited