Overview
Case summary
C. & A. Potts & Co. sued Frank P. Creager et al. for infringing patents on clay disintegrating machines. The trial court initially dismissed the bill, but the Supreme Court reversed and remanded. On remand, an interlocutory decree for injunction and accounting was entered. Complainants then petitioned for rehearing based on newly-discovered evidence of prior patents and uses. The rehearing was granted, and the court considered whether this new evidence anticipated the Potts patents. The court examined prior uses (Moore disintegrator, Rossi machine, Watson machine) and prior patents (Gregg, Mills, Dodson, Anderson, Cook), focusing on the Archenbronn apple-grinding mill. It found that the disintegration of clay was already known in the art, and adapting the Archenbronn mill by substituting steel bars for knives did not involve invention. Thus, the Potts patents were invalid due to anticipation, and the decree was entered for defendants.
Abstract
Plaintiffs sued defendants for infringing patents on clay disintegrating machines. After reversal and remand by the Supreme Court, an interlocutory decree for injunction and accounting was entered, but a rehearing based on newly-discovered evidence of prior patents and uses led to examination of prior art including various machines and patents. The court found the patents invalid due to anticipation, as clay disintegration was known and the claimed adaptation did not constitute invention, resulting in a decree for defendants.
Opinion of the court
opinionSAGE, District Judge
- New evidence of prior uses and patents shows clay disintegration was not novel.
- Archenbronn apple-grinding mill anticipates Potts patent; substitution of bars for knives lacks invention.
- Complainants are not pioneers in the art.
- Prior art establishes anticipation, invalidating patents.
Jurisdiction
not challenged- Suit in equity for alleged infringement of patents
Procedural posture
- Whether new evidence of prior patents and uses anticipates complainants' patent
Subsequent history
Legal categories
Case record
Issues & holdings
De novo consideration of new evidence
New evidence shows prior art anticipates complainants' patents, making them invalid.
Issue preserved for review
Holdings of the court
Error analysis
- Failure to consider prior art that anticipates patent — evidentiary · error foundNew evidence shows prior art existed, making patent invalid. · not harmless
Statutory interpretation
1Burden of proof
- Defendants presented new evidence shifting burden to show lack of novelty
Standards of review
- Anticipation by prior patents and uses — de novo Court considers whether new evidence makes it clearly apparent that Supreme Court would have affirmed dismissal if evidence had been in original record.
Timeline
Patent No. 322,393 issued to O. and A. Potts for improvements in clay disintegrating machines.
Basis of complainants' infringement suit.
Patent No. 368,898 issued to O. and A. Potts for improvements in clay disintegrating machines.
Basis of complainants' infringement suit.
Original decree dismissing bill entered by trial court.
Outcome: Bill dismissed
Initial ruling against complainants.
Supreme Court reversed and remanded with directions for further proceedings.
Outcome: Reversed and remanded
Supreme Court found for complainants initially.
Interlocutory decree for injunction and accounting entered after remand.
Outcome: Injunction and accounting ordered
Temporary relief granted to complainants.
Complainants filed petition for rehearing based on newly-discovered evidence.
Outcome: Granted
Allowed consideration of new prior art evidence.
Rehearing held on new evidence of prior patents and uses.
Outcome: Decree for defendants
Court found patents invalid due to anticipation.
Facts & evidence
Key facts
5 facts- Complainants hold patents for improvements in clay disintegrating machines (Nos. 322,393 and 368,898).
- Original decree dismissed the bill; Supreme Court reversed and remanded.
- On remand, interlocutory decree for injunction and accounting entered.
- Complainants petitioned for rehearing based on newly-discovered evidence of prior patents and uses.
- Rehearing granted to consider whether new evidence anticipates complainants' patent.
Procedural history
5 steps- Original decree dismissing bill (44 Fed. 680).
- Supreme Court reversed and remanded (15 Sup. Ct. 194, 155 U.S. 597).
- Interlocutory decree for injunction and accounting entered.
- Petition for rehearing granted (71 Fed. 574).
- Rehearing on new evidence of prior patents and uses.
Evidence in the record
- Testimony about Moore disintegrator used at Elizabethport, N.J., in 1878.
- Testimony about Rossi's constructed disintegrator with steel bars on rolls.
- Testimony about Watson machine for disintegrating clay.
- Testimony about Archenbronn mill for grinding apples and its adaptation to clay.
- Moore disintegrator with two sectional rolls and teeth.
- Rossi machine with steel bars on rolls.
- Watson machine with round teeth set in rows.
- Archenbronn mill with cylinder and knives.
- Witness Rossi's testimony on Moore, Rossi, and Watson machines.
- Testimony on Archenbronn mill and its suggestion for clay use.
- Testimony on Smith's model and machine development.
- Patents: Gregg (1867), Mills (1873), Gregg (1879), Dodson (1883), Anderson (1881), Cook (1874).
- English publication on brick making (1878).
- Potts patents Nos. 322,393 and 368,898.
- Evidence that prior machines accomplished shredding of clay.
- Evidence that Archenbronn mill suggested idea for clay disintegrator to McKinley and Smith.
- Evidence type: Prior patents and uses · Challenge basis: Anticipation of complainants' patent · Trial court ruling: admitted · Reasoning: New evidence presented on rehearing to show lack of novelty. · Challenged on appeal: false · Appellate outcome: not applicable
Objects of relevance
Policy considerations
- Encouragement of innovation vs. prevention of patents on obvious adaptations.
Authorities
Cited authorities (4)
Related cases (4)
Statutes
- Patent laws governing validity and infringement
Standards & doctrines
- Law of the case doctrine
- Patent anticipation doctrine
Legal principles applied
- Law of the case doctrine applied to rehearing
- No invention in mere substitution to achieve known result
Notable quotes
“The opinion of the supreme court will, of course, be recognized as the law of the case; and unless the defendants, upon the matters suggested in the application for rehearing, can make a case radically different from that presented to the supreme court, the rehearing will not avail.”SAGE, District Judge — Court's qualification in granting rehearing.Sets standard for considering new evidence on rehearing.
“I am not able to see that the mere substitution of the steel bars for the steel blade, in order to accomplish a known result, i.e. the disintegrating and pulverizing of clay, involves invention.”SAGE, District Judge — Analysis of Archenbronn mill as anticipation.Key holding that adaptation lacks patentable invention.