CONSOLIDATED CONTRACT CO. et al. v. HASSAM PAVING CO. et al., 227 F. 436

MORROW, Circuit Judge (after stating the facts as above). The defendants place their defense on three grounds: First. That the processes patented are the result of mechanical skill, and not the product of inventive genius, and the patents are therefore void. Second. That the processes embodied in the Hassam patents were anticipated by prior patents, by prior use, and by prior publications. Third.

That the appellees, by their acts in inducing the officers of the city of Portland to include their process of paving in an ordinance defining the method, manner, and kind of street pavement to be laid in the city of Portland, with knowledge that all street improvements must, under the city charter, be let to the lowest responsible bidder, waived all rights under their patents, and granted to the appellants the right to utilize the processes covered thereby. 1. There are five elements entering into the construction of a pavement in accordance with the alleged infringed claims of the patents in suit:

(1) A bottom layer of uncoated stone.

(2) The rolling of the stone.

(3) A grouting of cement placed upon the stone and filling all the voids therein.

(4) Agitation of the mass to expel the air and fill the voids.

(5) A top layer of small uncoated stones compressed into the surface of the grout before it sets. It is contended by the appellants that each of these elements had been employed, prior to the issuance of the patents, in the construction of roads or streets, or in structures. But this of itself would not negative invention.

It is true the mere bringing together of old elements, which in their new places do no more than their original work, and do not co-operate with other elements in doing something new and useful, is not invention; but if they coact with each other in a new and unitary organization, so as to produce a more beneficial result than by their separate operation, it may constitute a patentable combination. Loom Co. v. Higgins, 105 U. S. 580, 591, 26 L. Ed. 1177; Expanded Metal Co. v. Bradford, 214 U. S. 366-381, 29 Sup. Ct. 652, 53 L. Ed. 1034; National Tube Co. v. Aiken, 163 Fed. 254, 91 C. C. A. 114.

In the present case it does appear that some of tire features covered by the Hassam patents were used in the construction of roads and streets long prior to the issuance of the patents to Hassam; but it does not appear that all of the elements entering into the processes-as described in and covered by the Hassam patents were ever before-joined together or utilized as a combination in the manner therein disclosed. In the type of road known as macadam, broken stone was used; brjt the building thereof was purely mechanical. Concrete grout played no

part in the construction of such road. In the construction of the ordinary cement concrete road foundation broken stone was used; but it was thoroughly covered by and mixed with the cement prior to being placed in position. In the Hassam method the broken stone is applied to an uncoated condition, the stone is then rolled, and the cement grout is then poured into the mass for the purpose of filling the voids or interstices.

This, indeed, so far as the foundation work is concerned, is the distinguishing feature of the Hassam process —the grouting, or cementing of the broken uncovered stones after the laying and rolling of the latter. We think this process, considered in connection with the process of(. agitating the mass during and after the application of the cement grout, as embodied in the second Hassam patent, and the compressing of fine stones into the grout before hardening, as. embodied in the third Hassam patent, called for something more than the application of mechanical skill to well-known methods of road building.

We reach this conclusion without resorting to the well-known rule that the burden of proof is upon the defendant to establish the defense that the patent is void for the want'of invention or discovery. The grant of the letters patent.is prima facie evidence that the patentee is the first inventor of the device, or the discoverer of the art or process described in the letters patent, and its novelty. Smith v. Goodyear Dental Vulcanite Co., 93 U. S. 486, 489, 23 L. Ed. 952; Lehnbeuter v. Holthaus, 105 U. S. 94, 96, 26 L. Ed. 939; San Francisco Cornice Co. v. Beyrle, 195 Fed. 516, 518, 115 C. C. A. 426.

But there is a more exacting rule, that might he applied in' this case, which holds that, not only is the burden of proof to make this defense upon the party setting it up, but that every reasonable doubt should be resolved against him. Coffin v. Odgen, 18 Wall. 120, 124, 21 L. Ed. 821; Cantrell v. Wallick, 117 U. S. 689, 695, 6 Sup. Ct. 970, 29 L. Ed. 1017; San Francisco Cornice Co. v. Beyrle, supra.

In the first of these cases, which was a suit for infringement, the defense was a prior invention, and in respect to this defense the court observed: “The invention of discovery relied upon aa a defense must have been complete, and capable of producing the result sought to be accomplished ; and this must be shown by the defendant.

The burden of proof rests upon him, and every reasonable doubt should be resolved against him.” In the second case the same defense in a suit for infringement was set up-, and there the -court again stated the rule to- be: “The burden of proof is upon the defendants to establish this defense.

For the grant of letters patent is prima facie evidence that the patentee is the lirst inventor of the device described in the letters patent and of its novelty. * * * Not only is the burden of proof to make good this defense upon the party setting it up, but it has been, held that ‘every reasonable doubt should be resolved against him.’ ” It follows that we are clearly of the opinion that the defendants have not made out their defense that the device or process described in plaintiff’s patent was the result of mechanical skill, and not the product of inventive genius. 2.

In support of the defense of anticipation, the appellants rely upon a patent for pavement issued to one John Murphy on March 8, 1881, a patent for concrete pavement issued to Thomas F. Hagerty on October 22, 1889, a patent for concrete pavement issued to George A. Bayard on April 24, 1888, and a patent for pavement or roadway issued to Frederick J. Warren on June 4, 1901. The processes covered by these patents are readily and clearly distinguishable from the processes embodied in the Hassam patents. Under the Murphy patent the broken stone or slag is grouted before rolling.

The first Hassam. patent calls for a “bottom layer of hard rolled uncoated stone.” In the Bayard patent the foundation consists of broken stone and ashes or pebbles, and a second layer consists of stone, cinders, and pebbles mixed with tar. Ashes, cinders, and tar play no

part in the Hassam processes. In the Hagerty patent there is no preliminary hard rolling of the broken stone, nor is there any filling of the voids between the stones with grout. In the Warren patent no grouting whatever is used. With respect to alleged prior uses, the only testimony which we deem necessary to particularly advert to is that of J. Y. McClintock, a witness for the appellants. In 1893 McClintock was city surveyor of Rochester, N. Y. Owing to the unsatisfactory condition of the streets, he asked and obtained permission from the city authorities to try an experiment on one of the streets.

The experiment was not satisfactory, but, as the witness said, “demonstrated that 1 might have something of practical value, but that I had not carried it far enough, or experimented enough at length, to demonstrate its-practical value.” The pavement laid by McClintock was never used elsewhere or tried again. We agree with the learned judge of the court below that McClintock’s venture comes clearly within the category of an abandoned experiment, which is not sufficient in law to anticipate a successful patent. The Cornplanter Patent, 23 Wall. 181, 23 L. Ed. 161; Smith v. Goodyear Dental Vulcanite Co., 93 U.

S. 486, 23 L. Ed. 952; Dcering v. Winona Harvester Works, 155 U. S. 286, 15 Sup. Ct. 118, 39 L. Ed. 153; King County Raisin & Fruit Co. v. U. S. Consolidated Seeded Raisin Co., 182 Fed. 59, 104 C. C. A. 499. We have examined with care each of the prior publications, consisting of excerpts from encyclopedias, dictionaries, scientific notes, etc., introduced by the appellants and claimed by them to show anticipation.

The rule is that a description in a prior publication, in order to defeat a patent, must contain and exhibit a substantial representation of the patented improvement in such full, clear, and exact terms as to enable any person, skilled in the art or science to which it appertains, to make, construct, and practice the invention patented. It must be an account of a complete and operative invention, capable of being put into practical operation. Seymour v. Osborne, 78 U. S. (11 Wall.) 516, 20 L. Ed. 33.

Tested by this rule, the publications in the present case are not sufficient to support a claim of anticipation. 3.

On the question of estoppel the learned judge of the court below was of opinion that the fact that the city of Portland saw fit to- specify Plassam paving for its streets at the request of the holder of the patents did not excuse one who underbid the owner of the patents- for an infringement thereof, any more_ than if the owner of a rock quarry should induce the city to specify rock for use in a street of a quality to be obtained only from his quarry would justify the successful bidder in appropriating the rock without paying for it. This is undoubtedly true.

Nor does the application of such a rule work any hardship upon the appellants. Having bid for and secured the contract for the paving of the city streets, the appellants had only to enter into a satisfactory arrangement with the appellees for the payment of royalties for the use of the processes covered by the- Plassam patents in the performance of the contract with the city of Portland. This they did not do. Under such circumstances, the defeqse of estoppel is not open to the appellants.

The decree of the court below is affirmed. <&wkey; For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes <&wkey; For other cases see same topic & K1SY-NUMBER in all Key-Numbered Digests & Indexes