Gates Iron Works v. Fraser

This was a suit by the Gates Iron Works against David R. Fraser, Thomas Chalmers, and Hiram H. Scoville for infringement of eight patents for improvements in stone or ore crushing machines. The circuit court dismissed the bill. 42 Fed. 49. Complainant appeals.

At the March term, 1890, of the circuit court of the United States for the northern district of Illinois, the Gates Iron Works, a corporation organized under the laws of the state of Illinois, filed its bill of complaint against David R. Fraser, Thomas Chalmers, and Hiram H. Scoville, alleging that the said complainant was the sole owner of several letters patent of the United States, namely, No. 56,793, issued to Henry Pearce, July 31, 1866; No. 201,646, issued to Charles M. Brown, March 26, 1878; No. 237,320, issued to George and Albert Raymond, February 1, 1881; No. 110,397, issued to John H. Rusk, December 20, 1870; No. 243,343, issued to P. W. Gates, June 21, 1881; No. 243,545, issued to P. W. Gates, June 28, 1881; No. 246,608, issued to P. W. Gates, September 5, 1881; and No. 250,656, issued to P. W. Gates, December 13, 1881,-and which said letters patent, and the inventions and improvements therein described, had, by assignments in writing, prior to the commencement of the suit, become vested in the complainant. The bill further alleged that the defendants were making, using, and vending machines embodying the said inventions, in disregard of the rights of complainant, and prayed for the usual relief.

The defendants filed a joint and several answer, admitting that the letters patent mentioned in the bill had been issued, but denying that the persons to whom they had been granted were the original and first inventors of the several inventions described and claimed therein, or that the defendants had infringed, or were infringing, the rights of the complainant in the said inventions.

The answer further averred that the defendant Hiram H. Scoville had, prior to the filing of the application by Charles M. Brown for a patent for the improvements described and claimed in said patent No. 201,646, dated March 26, 1878, by and with the consent of the said Brown, made and put into use two machines containing the inventions secured by said patent No. 201,646, and that the defendants had a right to make and sell machines containing said inventions by virtue of an oral license given by Brown to Scoville before the application for said patent was filed.

The answer further alleged that P. W. Gates was not the original and first inventor of the improvements described in the several patents Nos. 243,343, 243,545, 246,608, 250,656, but that substantially those improvements were invented by said Charles M. Brown before the supposed invention thereof by Gates, and were embodied and exemplified in certain full-sized working machines built by the said Hiram H. Scoville, which were publicly used more than two years before Gates made application for any one of the said four patents.

The answer further stated that Henry Pearce was not the original and first inventor of the improvement patented by said patent No. 56,793, dated July 31, 1866, and that substantially the same thing was shown and described in letters patent No. 28,031, issued to one G. H. Wood, dated April 24, 1860.

Subsequently, the defendants, with leave of court, filed the following amendment to the answer, to wit:

'Letters patent to J. F. Ostrander, granted and dated April 25, 1846, No. 4,478, 'grain mill.'

'And as to the patent mentioned in said bill of complaint as having been granted and issued to J. H. Rusk, Charles M. Brown, G. and A. Raymond, and the four patents to P. W. Gates, numbered, respectively, 243,343, 243,545, 246,608, and 250,656, they further aver upon information and belief, that the said Brown, Raymond, Rusk, and Gates were not the original and first inventors of the things patented by or to them, respectively, and that substantially the same things were patented by, or shown and described in, the following letters patent, to wit:

'As to patent to H. Pearce, No. 56,793:

'Letters patent to J. F. Ostrander, granted and dated April 25, 1846, No. 4,478, for improvement in grain mill.

'Letters patent to G. H. Wood, granted and dated April 24, 1860, No. 28,031.

'As to patent to J. H. Rusk, No. 110,397:

'Letters patent to A. C. Ellithorpe and I. Scoville, granted and dated November 23, 1858, for improvements in machine for breaking stones, etc., No. 22,113.

'Letters patent to Hiram H. Scoville, granted and dated May 26, 1868, No. 78,332, for improvement in stone breaker.

'As to patent to C. M. Brown, No. 201,646:

'Letters patent to Charles Tripp, granted and dated November 10, 1857, No. 18,610, for improvement in grinding mill.

'Letters patent to Conrad P. Wagner, granted and dated January 30, 1866, No. 52,347, for improvement in quartz mill.

'Reissue letters patent to James W. Rutter, granted and dated September 7, 1869, No. 3,633, for improvement in ore crusher.

'As to chilled iron: V. I. Knight's American Mechanical Dictionary, published in New York (1874), p. 537, title 'Chill.'

'As to patent to P. W. Gates, No. 243,343:

'Letters patent to L. Fagin, granted and dated October 30, 1866, No. 59,201, for improvement in hanging millstones.

'Letters patent to S. N. Taylor, granted and dated February 27, 1866, No. 52,908, for improvements in knuckle joint.

'As to patent to P. W. Gates, No. 243,545:

'Letters patent to Charles Tripp, granted and dated November 10, 1857, No. 18,610, for improvement in grinding mill.

'Letters patent to Conrad P. Wagner, granted and dated January 30, 1866, for improvement in quartz mill, No. 52,347.

'Letters patent to Thomas Varney, granted and dated April 9, 1867, No. 63,675, for improvement in quartz mill.

'As to patent to P. W. Gates, No. 246,608:

'Letters patent to H. Pearce, granted and dated July 31, 1866, No. 56,795, for improvement in quartz mill.

'As to patent to P. W. Gates, No. 250,656:

'Letters patent to P. W. Gates, granted and dated June 28, 1881, No. 243,545, for improvement in rock or stone breaker.

'Letters patent to Daniel Hughes, granted and dated February 20, 1866, No. 52,716, for improvement in quartz crusher, etc.

'Letters patent to L. Fagin, granted and dated October 30, 1866, No. 59,201, for improvement in hanging millstones.

'English letters patent to Claude Marie Savoye, No. 6,195 of 1831, for improvement in machinery for grinding grain and other substances.

'The defendants, further answering, say, upon information and belief, that some of the older ones of complainant's said patents show and describe improvements which are claimed in other and later of the complainant's said patents; and they further say that as to the said several patents by them herein and hereintofore mentioned are shown and described devices, parts, or combination of parts that are substantially the same as the devices and combinations set forth in other patents than those to which they are specifically named as relating, and that any and all of said patents will be referred to as containing the substance of any or either of the complainant's said patents, as may be deemed appropriate.'

The cause was put at issue, a large amount of evidence taken, and after argument, on March 31, 1890, the court below dismissed the bill at complainant's costs. From this decree an appeal was taken to this court.

L. L. Coburn, for appellant.

L. L. Bond and C. E. Pickard, for appellees.

Mr. Justice SHIRAS, after stating the facts in the foregoing language, delivered the opinion of the court.