# Standard Elevator Co. v. Crane Elevator Co.

> Court of Appeals for the Seventh Circuit · October 5, 1896 · 76 F. 767

URL: https://www.frixlaw.com/law-library/cases/8856595

## Case

- **Full name:** STANDARD ELEVATOR CO. v. CRANE ELEVATOR CO.
- **Court:** Court of Appeals for the Seventh Circuit
- **Decided:** October 5, 1896
- **Citations:** 76 F. 767; 22 C.C.A. 549; 1896 U.S. App. LEXIS 2180
- **Precedential status:** Published
- **Opinion:** Dissent by Woods
- **Judges:** Bunn, Showalter, Woods
- **Cited by:** 11 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/8856595

## Opinion text

WOODS, Circuit Judge
(dissenting). There is manifestly no present necessity for considering whether the decree appealed from is final or interlocutory, but that it is interlocutory only has been der termined too often to admit of further question. Barnard v. Gibson, 7 How. 650 ; Humiston v. Stainthorp, 2 Wall. 106 ; Iron Co. v. Martin, 132 U. S. 91 , 10 Sup. Ct. 32; McGourkey v. Railway Co., 146 U. S. 536 , 13 Sup. Ct. 170; Latta v. Kilbourn, 150 U. S. 524 , 14 Sup. Ct. 201; David Bradley Manuf’g Co. v. Eagle Manuf’g Co., 6 C. C. A. 661 , 57 Fed. 980 , and 18 U. S. App. 349; Dudley E. Jones Co. v. Munger Improved Cotton Mach. Manuf’g Co., 1 C. C. A. 668 , 50 Fed. 785 . and 2 U. S. App. 188; Richmond v. Atwood, 2 C. C. A. 596 , 52 Fed. 10 , and 5 U. S. App. 151; Marden v. Manufacturing Co., 15 C. C. A. 26 , 67 Fed. 809 , and 33 U. S. App. 123; Bissell Carpet-Sweeper Co. v. Goshen Sweeper Co., 19 C. C. A. 25 , 72 Fed. 545 ; Lockwood v. Wickes, 75 Fed. 118 ; Brush Electric Co. v. Western Electric Co. (this court, Oct. 5, 1896) 76 Fed. 761 ; Raymond v. Baking Powder Co. (this court, Oct. 12, 1896), 76 Fed. 465 .
What shall he the effect of theraffirmance or reversal of an interlocutory order can properly be considered when the question arises out of subsequent, action of the court, of which an instance is found in the case of Bissell Carpet-Sweeper Co. v. Goshen Sweeper Co., supra, where, after affirmance by the- court of appeals, the circuit *794 court, without proof or suggestion of any change in the situation after the decree was entered or after it was affirmed, modified the injunction in material respects, and on a second appeal it was held that the modification ought not to have been made. That, I think, is the extent of the ruling, though there are dicta in the opinion to the effect that, after the affirmance, the circuit court had no power to alter the decree, which, when appealed from, was conceded to be only interlocutory. I agree with the writer of the principal opinion in this case that “there is no uower 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.” In the case of Andrews v. Pipe Works, 24 U. S. App. 81, 10 C. C. A. 60, 68 , and 61 Fed. 782, 790 , this court, in an opinion concurred in by Justice Harlan, said:
“Notwithstanding the rule in respect to final judgments, that on a mandate from the supreme court affirming k decree the circuit court must execute its decree as affirmed (Durant v. Essex Co., 101 U. S. 555 ), it has been decided that the affirmance of an interlocutory order of injunction does not operate to deprive the circuit court of its inherent power to suspend the injunction whenever the ends of justice call for the exercise of such power (United States Electric Lighting Co. v. Edison Electric Light Co., 11 U. S. App. 600, 8 C. C. A. 200 , and 59 Fed. 501 ); and by the same principle, we think, a decision on appeal reversing or modifying such an order should be deemed conclusive only in respect to the particular order reviewed, and in the further progress and upon final hearing of the case in the circuit court the opinion and ruling on the appeal should be regarded as advisory only, — more or less controlling, according to the circumstances. In this ease the circuit court looked upon the mortgage of the appellants as a nullity. Eor the reasons given in the opinion, this court reached the opposite conclusion; but if, instead of the positive conviction declared, we had entertained grave doubt upon the point on which the question turned, it would have been our duty to rule just as we did, because an injunction before final hearing should be allowed only when the right to it is clear. Standard Elevator Co. v. Crane Elevator Co., 9 U. S. App. 556, 6 C. C. A. 100 , and 56 Fed. 718 . It is plain, therefore, that our decision did not involve, and should not be regarded as, a technical and final adjudication, for the purposes of the case, of the points which we considered in reaching our conclusion that the order of the circuit court was wrong, or of the questions propounded in the petition for a rehearing.”
While in that case the order appealed, from was only a temporary one, the decision suggests what it seems to me must become the practice in respect to interlocutory injunctions or orders which result from a hearing on the merits. Indeed, that is the scope of the decision in United States Electric Lighting Co. v. Edison Electric Light Co., supra. Such orders, being interlocutory, if not appealed from, it is certain, remain subject to modification or revocation; and, if appealed from and affirmed, it must still be true, from their very nature, that they remain interlocutory, and, technically speaking, not beyond the power of modification by the circuit court until made final by a further order or decree. But, as a matter of practice, the right of the circuit courts to make such modifications, without new proofs showing the necessity or propriety of so doing, on grounds not presented and considered on the appeal, ordinarily will not be recognized, and on a second appeal the original order as affirmed, if modified or set aside after affirmance, will be summarily reinstated, *795 unless the court of appeals shall choose to reconsider the merits, as unquestionably it would have the power to do. On the other hand, if an interlocutory order is reversed because upon the face of the bill or upon the proofs the suit cannot be maintained for want of equity, the mandate, as in Richmond v. Atwood, and in Dudley E. Tones Co. v. Munger Improved Cotton Mach. Manuf’g Co., supra, may be that the order for an accounting be set aside, and that the bill be dismissed; but it was not decided in those cases, and does not follow, that the circuit court, notwithstanding such a mandate, may not, upon request, permit an amendment of the bill, if that be necessary and possible; or, upon proper showing, allow the introduction of new or additional evidence. All this seems to me to be the logical outcome of the legislation whereby congress has authorized appeals from interlocutory orders; and, instead of involving an “impossible and absurd result,” the practice, under limitations always within the discretion of the courts, will prove in the highest degree salutary, because in every suit, so long as it remains pending, it will be possible, in the light of later decisions of other courts, and especially of the supreme court, or of further investigation by the same court, to correct any error of law which may have intervened, and likewise to give the parties the benefit of the discovery of new evidence, without formal proceedings to review or to open the decree for that purpose. The practice suggested involves no undue prolongation or increase of litigation, to the injury of the public.
It is said that “this court has no power to review its own adjudications,” but, while true in respect to adjudications upon appeals from final decrees or judgments, except upon petitions for rehearing, the proposition is not, and cannot reasonably be deemed, applicable to decisions upon appeals from interlocutory orders. The same is true of the proposition, taken from the opinion in the case of the Bissell Carpet-Sweeper Co., that “the judicial function of considering involves the function of determining.” That is unquestionable, but it does not follow, under a statute authorizing the review of interlocutory orders, pending further proceedings in the court below, that in such cases “the decision of an appellate court is final.” The determination of a final matter is final, but a decision upon an interlocutory matter ex vi termini must be interlocutory.
Coming to the merits of the appeal, the third specification of error presents the question whether the complainants had proved title to patent No. 328,614. The proof made consisted in certified copies of the record in the patent office of assignments purporting to have been made by Reynolds, the patentee, to the Crane Bros. Manufacturing Company, and by that company to the Crane Elevator Company, and by the last-named company to James H. Raymond, trustee. For the purpose of showing that the alleged assignments had been recorded in the patent office, as provided in section 4898 of the Revised Statutes, the copies were admissible in evidence, over the objection of incompetence and irrelevancy; but that they constituted no proof of the execution or genuineness of the original instruments seems clear both on principle and authority. It has been so declared in well-considered cases by the courts of appeals in both the First *796 and Second circuits (Paine v. Trask, 5 C. C. A. 497 , 56 Fed. 233 , and 5 U. S. App. 283; City of New York v. American Cable Ry. Co., 9 C. C. A. 336 , 60 Fed. 1016 ); and, even if those decisions were doubtful, this court ought not now to assert a different rule. But it is to be observed in this instance that the assignments of which copies were put in evidence were in the possession of the complainants, or their trustee; and, that being so, even under the rule in respect to office copies of conveyances of real estate under the registry laws, the production of the originals, or an excuse for the failure, was necessary. _ As the rule is stated in Ward v. Fuller, 15 Pick. 185 , 187, cited in Chamberlain v. Bradley, 101 Mass. 188 : “Where the party relying upon a deed of conveyance is the grantee, or person who is entitled to the possession of it, he must produce the original, or lay a foundation, in the usual manner, for the production of secondary evidence.”
I am of opinion that claim 2 of patent No. 328,614 shows no invention. An exactly similar construction, it is admitted, existed in the prior art, and if it be true, as said, that the prior device “was at once an air and water pipe,” it was no less an anticipation. It is not shown that air and water both do not pass off through this pipe. They certainly would but for the presence of the bottom connection, covered by claim 4; and the fact that the escaping water is diverted through a new channel does not make of the unchanged old device a new invention.
That claim 4 contains nothing patentable is so evident that counsel for appellees are constrained to insist that, while claim 2 is for the air escape per se, claim 4 is for the combination of the bottom discharge and air escape with the reversing valve. The wording of the claim admits of no such interpretation. Railroad Co. v. Mellon, 104 U. S. 112 ; Day v. Railway Co., 132 U. S. 98, 102 , 10 Sup. Ct. 11; Wollensak v. Sargent, 151 U. S. 221, 227 , 14 Sup. Ct. 291.
The third claim, — for the stop valve, — if not anticipated by the prior art, as I am inclined to think it- is, especially by the Curtis patent, No. 314,167, is certainly subject to a narrow construction, and is not infringed by the valve of the appellants, which is different both in construction and mode of operation.
In respect to patent No. 456,122, it is agreed that the invention is covered by the Smith patent, No. 334,907, and is anticipated thereby, unless it has been established that Reynolds rvas in fact the first inventor. The burden of proof in that respect was upon the appellees, and, unless the proof is clear and convincing, the prior patent' should prevail. Smith’s application was filed December 15, 1885, and the patent issued .January 26, 1880. Reynolds filed his application January 26, 1887, and obtained his patent July 14, 1891. The evidence is not only not conclusive that Reynolds was the first inventor, but, as I view it, preponderates in favor of Smith’s priority. Reynolds’ own testimony on the point, together with that of Smith, is the most direct and satisfactory. As witnesses they were both inclined to favor the appellees, and whatever there is in their testimony favorable to the appellants should be given full credence. They agree that in December, 1884, Reynolds made a *797 statement to Smith of .his invention for which patent No. 317,202, in which one end of the cables is connected with weights, was after-wards issued, upon an application filed January 5, 1885; and that at the same time Smith explained to Eeynolds that he had invented a similar device, in which both ends of the cables were to be connected with the car. Smith also told Eeynolds, as the latter testifies, that he had sent drawings of his design to his attorney, and wondered that he had heard nothing from the patent office. This strongly corroborates the testimony of Smith that he had sent such drawings to the attorney; but whether he had done so in fact is a collateral and comparatively immaterial question. Smith and Eeyn-olds, in December, 1884, were under no mistake in respect to what each claimed to have invented, their devices being substantially alike in respect to levers, and in the fact that the cables of both were to run with the cars, but different in that the cables of Eeynolds were attacked at the upper end to weights, and those of Smith were attached at both ends to the car. With this proposition the subsequent conduct of both Eeynolds and Smith is consistent. In the belief of both, probably, and certainly in the mind of Eeynolds, the chief feature of invention in both designs was the double cable attached to the double lever in the car and running with the car, and in that view Eeynolds feared conflict between them, and obtained of Smith a written agreement not to prosecute, without Reynolds’ consent, an application for a patent upon his design. His own application for a patent Reynolds promptly presented, claiming the cables with weights, but making no claim for cables attached at both ends to the car, nor any suggestion, either in the specification or drawing, that they could be so attached; and on that application he accepted the patent awarded Mm (No. 317,202), though he knew, by practical experiments made as early as February or March, 1885, that the preferable method was to attach both ends of the cables to the ear. Had he not been conscious that that mode of construction was not his, but was the conception of Smith, it is incredible that he would not have described and claimed it as his own, either by an amendment of bis application, after the value; of the conception had been demonstrated by experiment, or by a new and in despondent application. On the contrary, through a period of two years or more he made repeated statements, in some instances to parties proposing to invest money on the faith thereof, to the effect that Smith was the first inventor; and. not until persuaded thereto by others interested, did he make the application wherein he claimed as his own the idea of attaching both ends of the cables to the ear, and in respect to that application he afterwards made affidavit disavowing his right in that particular. He testifies that that affidavit contains the language of another, and not Ms own, but the force of that assertion is removed by the further statement and admission: “l then believed, and now believe, the statements were true.” It is not a sufficient or satisfactory explanation of his repeated declaration, contrary to his testimony, that they were made on the faith of what Smith had told him. What he had done and when he had done it were facts within his own knowledge; and when, *798 in December, 1884, be was told by Smith .of the latter’s mode of attaching the cables, he knew whether that conception was then new to him; and if, in fact, in the September before, he had thought it out, and, as is now asserted, had produced a drawing wherein it was illustrated, in connection with weights, he would hare so asserted to Smith at the time, and would not in silence then, and by repeated declarations afterwards, have conceded Smith’s priority in that particular, and certainly would not have gone so far as to pay a price for an option to buy Smith’s patent when issued, and to bargain for delay by Smith until he could patent his own conception. The drawing, which is produced as an illustration of Reynolds’ first conception,
is not the original, but an alleged copy, made after the date of Smith’s patent. If conceded to be a true copy of a genuine original, it is of obscure meaning, and falls far short of showing an attachment of the cables to the upper parts of the car; and upon the entire evidence I am satisfied that, if in September, 1884, Reynolds, as he has testified, made a drawing like the alleged copy, there was then in his mind no conception beyond what is shown in his patent No. 317,202, for which he applied within a few days after his talk with Smith. The rule is that a drawing may be the foundation of a claim of priority of invention "if it be sufficiently plain to enable those skilled in the art to understand it.” Loom Co. v. Higgins, 105 U. S. 580, 594 . There is in the drawing in question, as the fac simile in the margin demonstrates, no sign of a connection between the end of one of the cables and the top of the cart, and, if the lines or scratches which are said to indicate such attachment of the ropes to the upper end of the car can be said to indicate anything more than other meaningless lines apparent in the drawing, they may fairly be said to suggest ropes extending from one of the weights to the car, and from one weight to the other, designed rather for the purpose of steadying the weights than to indicaté that they may be dispensed with, and the cables connected directly with the car. If Reynolds, when he produced the drawing, intended to illustrate such direct connection, and so explained to members of his family, there is no evidence of the facts, unless it can be found in his own uncertain testimony; and manifestly he is not a witness whose unsupported word, however explicit, should prevail against a patent which, in numerous *799 Instances and once upon deliberate oath, he has declared entitled to preference over the later patent granted to himself.
The testimony of Smith is clear, and, by reason of his avowed and evident friendliness to the appellees, is the more convincing. Besides, he is strongly corroborated by Wells, Cartright, and others, and by circumstances of which there can be no doubt; and, as it seems to me, there can be no other reasonable conclusion, upon the entire contention over these patents, than that Smith first conceived the idea of cables attached at both ends to the car, that he communicated the idea to Reynolds; and that when, in February and March, 1885, the conception was reduced to practice in the shops of the Crane Company, in whose service both Smith and Reynolds were then employed, and in the Memory Building, in Chicago, it was the idea of Smith, and not of Reynolds, and was so understood at the time by Reynolds himself. To that effect is the explicit tes-' timony of Weils, who gives a detailed and clear account of the facts, showing that it was upon his insistence that Smith’s idea, illustrated by drawings which Smith produced, was put to the practical test. That Smith’s design was in fact so used the circumstances make probable, and the only evidence to the contrary is the testimony of Reynolds, discredited by his prior conduct and statements, and by his affidavit.
Stress has been laid upon the decision against Smith in the interference with Baldwin, but, aside from the lack of relevancy of that matter to the present issue, it is clear enough that the contest in behalf of Smith’s patent was purposely allowed to go by default,— Smith himself refusing to testify in support of it, — because his employers, who owned the patent, had on the other side an equal or greater interest. Besides, if in respect to the matter now in dispute Baldwin was prior to Smith, he was also prior to Reynolds. But, if Reynolds’ priority were conceded, it would be a grave question whether the holders of the patent are entitled to relief in equity. Their rights, I suppose, are not better than Reynolds’ would be if lie had made no assignment of his title; and, it being clear that he entered into an arrangement with Smith, the evident purpose of which was to enable each to obtain a patent on similar devices without an interference with the other, ought either of them, or the assignee of either, to be allowed a standing in equity? I think not. In respect to the public, and to the assignees of either, the agreement which they made was essentially fraudulent. Letters in evidence demonstrate that solic.il ors so understood when prosecuting Reynolds’ application for a patent; and, but for the fact of the agreement, and the subsequent manipulation by which a declaration of interference between Reynolds’ application and Smith’s patent was improperly prevented, it is probable that this litigation would not have occurred.

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/8856595. Public record. Not legal advice.