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and Territorial capitols, and to all the United States District Court clerk's offices, except those which are located at the capitals of the States and Territories.'
Where prior foreign patents are duly pleaded to negative novelty, they may be proved prima facie, by duly certified copies of those copies thereof, which are kept in the United States Patent Office. If plenary proof of foreign letters patent is required, it can be made by producing a copy thereof, duly certified by that officer of the foreign government which issued the patent, who corresponds to the Commissioner of Patents in the United States.' Where an error creeps into a certified copy of any letters patent, it may be corrected by another and more carefully compared certified copy from the same office. Letters patent, to be admissible, must agree in name and date with the statements in the pleadings, in proof of which they are offered."
$ 507. Prior printed publications must be proved by the introduction of a specimen of the printed thing which is relied upon, and by satisfactory evidence that it was published before the date of the patent in suit. Parol testimony of the contents of such printed matter is generally inadmissible. The testimony of a person, that the printed thing produced was published before the date of the invention in suit, if believed by the jury, would be sufficient evidence on that point. What evidence short of that in convincing force, would answer the purpose in hand, has not been judicially settled. Printed publications are not generally evidence of the truth of the statements which they contain.' But where a book or public periodical appears to have been published in a specified year, or on a specified day, and where it contains matter which furnishes
1 Revised Statutes, Sec. 490. ? Revised Statutes, Sec. 893.
3 Schoerken v. Swift & Courtney & Beecher Co. 7 Fed. Rep. 469, 1881.
+ Brooks v. Jenkins, 3 McLean, 432, 1844.
5 Bellas v. Hays, 5 Sergeant & Rawle (Penn.) 427, 1819.
6 McMahon 0. Tyng, 14 Allen (Mass.), 167, 1867.
Seymour o. McCormick, 19 Howard, 106, 1856.
collateral evidence of the genuineness of the date, and where it is free from the suspicion of having been changed after it was put forth, it will probably be received in evidence, without direct testimony that it was published when it purports to have been.
$ 508. Prior knowledge or use of a thing patented, may be proved by the testimony of the person or persons who had such prior knowledge, or who know of such prior use. Such testimony includes three points : the existence, the character, and the date of the thing previously known or used. Where a witness relies wholly on his memory for all three of these points, his testimony, though admissible, is not strong. It is generally impossible to remember with certainty the particular construction of a thing of which no specimen is known to remain in existence; and most memories are wholly unreliable on bare questions of dates. It is therefore desirable to fortify testimony of prior knowledge or use by producing the anticipating thing, or a specimen thereof, and by connecting the history of that thing with events about which there is no room for doubt. Where the anticipating thing cannot be produced, the testimony which supports its prior existence, may still prevail, if the construction of the article was so simple, and so well understood, as to be unlikely to be forgotten, and especially if a number of credible witnesses agree in regard to its character and its date.
$ 509. Parol evidence of an anticipating thing, is likely to be met by other parol evidence, tending to show that such a thing never existed at the place alleged; or that it was substantially different from the patented invention sought to be anticipated; or that it did not exist at the alleged place till after the date of the patented invention. Testimony of the first sort is negative in its character, and therefore not so weighty as the affirmative evidence which it contradicts. But it does not need to be so weighty, in order to overthrow the latter, for a mere preponderance of
Union Sugur Refinery v. Matthiessen, 2 Fisher, 600, 1865.
evidence will not sustain the defence of want of novelty. That defence, in order to prevail, must be proved beyond a reasonable doubt. Testimony of an anticipating thing may also be met by evidence that the witness purchased a license under the patent; but such answering evidence is generally entitled to very little weight;' because the witness may not have understood that the facts of which he knew constituted a legal defence to the patent, or he may have preferred to pay for a license, rather than to undergo the annoyance and incur the expense which is generally incident to actions for infringement.
$ 510. When anticipating matter is undeniably proved to have existed before the date of the patent in suit, want of novelty is prima facie proved ;' but the plaintiff may meet that evidence by proof that he, or his assignor, made the invention at a still earlier date. He may sometimes do this by means of a certified copy of the specification and drawings of his original application ; and he may sometimes do so prima facie, by means of a like copy of the original petition upon which the letters patent were granted; but not by parol evidence relevant to the time when that petition, specification, or drawing was filed. If his application was not early enough for the purpose, the plaintiff may prove the real date of his invention by proving the date of either of those facts, which, in the chapter on novelty, were shown to constitute the birth of an invention thereafter patented.' If that fact was a tangible thing, its establishment requires the production and proof of that thing, or requires proof of its loss or destruction, and the best obtainable evidence of what its character was.
$ 511. The fourth defence requires evidence that the patented invention will not perform any function which is
1 Section 76 of this book.
2 Evans v. Eaton, 3 Wheaton, 454, 1818.
3 Havemeyer v. Randall, 21 Fed. Rep. 404, 1884.
* Wayne 0. Winter, 6 McLean, 344, 1855.
5 Section 70 of this book.
6 Richardson 0. Hicks, 1 MacArthur's Patent Cases, 336, 1854.
ascribed to it in the letters patent;' or proof that its function is not a useful one, within the meaning of the law on that subject.
The first of these sorts of proof may consist of testimony of a person who is skilful in the art to which the invention pertains, and who has endeavored, in good faith, to make the patented thing work, and has been unable to do so. In plain cases, it may also consist of the testimony of such a person, who has not actually experimented with a specimen of the patented thing, but who is able to demonstrate theoretically, that it is impossible for such a specimen to operate. And in all cases, the evidence must show a total incapacity in the invention to do anything claimed for it, because neither imperfect operation, nor a total failure to perform part of the claimed functions, will sustain a defence of want of utility.' And either practical or theoretical evidence of want of utility in the sense now under consideration, may be overthrown by the testimony of a person who has succeeded in causing the patented process or thing to produce a result ascribed to it in the patent.
The second of these sorts of proof may consist of evidence that the function of the patented thing is one which people generally profess to condemn as dangerous or immoral. Conventional and not absolute ethics is the criterion of judgment on this point. Patents for revolvers are accordingly sustained, though it cannot reasonably be doubted that the invention of those death-dealing instruments was a disaster to mankind.
$ 512. The fifth defence may be supported by any competent evidence which shows that the inventor relinquished all expectation to secure a patent, and formed an expectation that the invention would always be free to the public. Such evidence may be either direct or circumstantial, but a mere preponderance of evidence cannot sustain this
defence of actual abandonment, because it is one of those which, in order to prevail, must be proved beyond a reasonable doubt.
$ 513. The sixth defence requires proof that the patented thing was in public use or on sale at a date more than two years prior to that upon which the application was made for the patent. But it is no longer necessary to prove in addition, that the public use or sale relied upon, occurred with the consent of the inventor."
$ 514. The seventh defence requires the introduction of the original application papers, or certified copies thereof; and in all except very plain cases, it requires the testimony of experts to explain the outward embodiment of the terms contained in the original letters patent, and in the original application respectively.'
$ 515. The eighth defence calls for evidence that another than the patentee conceived the invention before he did; and that the other used reasonable diligence in adapting and perfecting the same; and that the patentee knew of that prior conception, and obtained the patent surreptitiously; or, if he did not know of the prior conception, that he obtained the patent unjustly, by obtaining it without notice to the prior conceiver, though the latter had a caveat on file in the Patent Office at the time."
$ 516. The ninth defence requires proof that another than the patentee was joint inventor with him of the thing covered by the patent. Testimony on this point must be strong in order to prevail, because the tendency of courts and juries is to assign such evidence to the category of mechanical assistance in construction, or to that of suggested substitution of equivalents.
McCormick v. Seymour 2 Blatch. 256, 1851.
Andrews v. Hovey, 123 U. S. 267; 124 U. S. 694, 1887.
3 Bischoff v. Wethered, 9 Wallace, 812, 1869.
* Revised Statutes, Sec. 4920 ; Ag
awam Co. o. Jordan, 7 Wallace. 587 1868 ; Phelps v. Brown, 4 Blatch. 362, 1859.
5 Agawam Co. o. Jordan, 7 Wallace, 587, 1868; Pitts 0. Hall, 2 Blatch. 229, 1851; Locke o. Lane Co. 35 Fed. Rep. 293, 1888.