Appleton v. Ecaubert

COXE, District Judge. The question presented by this controversy is whether Frederic Ecaubort or Adolph W. Hofmann was the first to invent and perfect a method of ornamenting the peripheries of wajch-case centers by holding' the surface of an embossing die in contact with, the surface to be ornamented, imparting a reciprocating motion to one of said surfaces, and at the same time movinglaterally the point of contact of the die with the surface being ornamented. This question was argued, upon substantially the same facts, before Commissioner Mitchell, on an appeal from "the examiners in chief, in interference» proceedings, and a decision was reached in favor of Hofmann. That decision is reported in 52 O. G. 2107 (issue of September 20, 1890). It contains a statement of the salient points of the testimony, and is such a clear and full exposition of the facts and the law that additional statement is un necessary. I do not think this decision is res judicata, but it is certainly entitled to great weight. Wire Co. v. Stevenson, 11 Fed. 155; Shuter v. Davis, 16 Fed. 564; Swiff v. Jenks, 39 Fed. 641; Box Co. v. Rogers, 32 Fed. 695: Smith v. Halkyard, 16 Fed. 414; Butterworth v. Hoe, 112 U. S. 50, 5 Sup. Ct. 25; Morgan v. Daniels, 153 U. S. 120, 14 Sup. Ct. 772. [748] The commissioner finds that if Ecaubert conceived of the invention prior to December, 1887, he certainly did not reduce it to practice; that at the time Hofmann made his operative machine the whole matter was in a nebulous and experimental state, so far as Ecaubert was concerned. I see no reason to disagree with these conclusions. Though a commissioner’s decision is entitled to respect and consideration in every controversy, particularly is this so when, as in the present cause, it comes from a lawyer of conceded ability, fairness and diligence. After giving considerable time to the consideration of the questions involved, I cannot resist the conclusion that the controversy was properly disposed of in the patent office, and that nothing has been presented since which will justify the court in setting aside the judgment then pronounced. The same argument which convinced the supreme court in the Telephone Cases (8 Sup. Ct. 778) seems equally persuasive here. Can it be that Ecaubert, familiar with patents as he undoubtedly was, if he had made an invention of conceded importance in 1879, or in 1885, would have remained inactive and taken no steps to secure the fruits of his genius for eight or even for two years? His excuses for this supineness are wholly inadequate, especially in view of the fact that during this period he took out several patents for comparatively trivial improvements in the same art. But, if it be conceded that the idea of the invention was clearly defined in his own mind, he certainly failed to embody it in a perfected machine. Hof-mann was the first to do this. He made a simple but successful machine, and used it almost immediately in ornamenting centers' for practical business purposes. With this issue of priority determined in favor of Hofmann there is nothing patentable left in the Ecau-bert patent. It follows that the complainants are entitled to the relief demanded in the bill.