entitle the applicant to a patent. Thus it is that the claim for the
patent forms the basis upon which the inquiry proceeds, and the oath,
declaration, or affidavit subscribed by the applicant in support of his
application is, therefore, touching a matter material to an inquiry
before the Commissioner of Patents, and is such a one upon which
perjury may be predicated under the section to which I have alluded,
if the party making the oath or making the declaration or affidavit
swore falsely in relation thereto, or if, at the time of taking such oath
he did not believe the matter set forth therein to be true.

The defendant has entered a plea of not guilty. This plea chal-
lenges — controverts and challenges every material allegation of the
indictment and casts upon the Government the burden of substan-
tiating or proving all material allegations to your satisfaction beyond
a reasonable doubt before you would be justified in finding the de-
fendant guilty. He comes before you clothed with the presumption
of innocence and this presumption continues until it is overcome by
the proof.

The oath or declaration alleged to have been subscribed or verified
by the defendant, and which the evidence in this case shows he did
subscribe and verify to, was touching a matter material to an inquiry
before the Commissioner of Patents, and this disposes of that element
in the case. Furthermore, the proof touching the defendant's sub-
scription and verification of the oath or affidavit before Mr. Hodson,
a notary public, is very persuasive, so that there can scarcely be any
question about that. Indeed, neither did the defendant make any
substantial question upon that subject. However, I will leave it for
you to determine whether or not the defendant so subscribed and
verified such declaration, and I instruct you, as a material fact, that
Hodson, if he was a notary public at the time, was an officer before
whom an oath of this kind could be — ^by whom an oath of this kind
could be administered, and a false statement made in an oath before
Hodson would be perjury within the meaning of the Federal statute.

Now, the invention in controversy in this case, and about which
this case hinges, is an alleged improvement upon a buckle — a harness-
buckle — which has been exhibited and explained to you. You will
remember that sometime about the 1st of January, 1905, — and there
is some controversy about the date — but about that time Mr. Larson
prepared or manufactured a one-piece buckle — harness-buckle — and
that he subsequently applied for a patent upon his alleged invention.
Before the patent — ^before his application was disposed of by the
Patent Office at Washington, he transferred his interest in the buckle



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DECISIONS OF UNITED STATES OOUBTS IN PATENT CASES. 421

to the defendant, Mr. Van Emon and Mrs. Parrish, and the subse-
quent patent that was issued to Mr. Patterson, the defendant, and in
the proceedings in which it is alleged he made the false affidayit,
was an improvement upon the Larson buckle. The improvement
consists of a binding-plate — ^is alleged to consist of a binding-plate
across the front of the buckle and a projection or lip on the connect-
ing bar at the rear. The binding-plate which is the front part of
the buckle, is one element of the invention and the lip or extension
on the after bar is another part or element of the invention, and
these are the only two changes that were made, or allied to have
been made, in the Larson buckle, that are of any practical conse-
quence on this trial.

Now, it is important that you should bear in mind that this is not
a controversy — this case is not a controversy between this defendant
and Mr. Van Emon as to the ownership or the right to patent upon
this alleged invention. That questi<Mi is not in this case, because
the charge here is simply one of perjury. Nor is there any question
in this case as to whether Van Emon lost his right by abandonment.
If he was the original inventor or discoverer of this article which
was subsequently patented to Mr. Patterson, and abandoned his rights
or failed to prosecute his application in the department, that, of
course, would not have justified Patterson in making the affidavit
that he, himself, was the first and original inventor, so the question
here is for you to determine whether the statements in the affidavit
filed by Patterson in March, 1907, when he applied for a patent upon
this one-piece buckle, was true or false, and that is the real question
in this case : whether he knew it to be so.

You will notice that the indictment charges that the oath mentioned
contained statements alleged to be false in two particulars : first, that
the defendant well knew that he was not the original and first in-
ventor of this improvement and that he well knew that Van Emon
was such inventor. Second, that he well knew and believed that
the said invention had been known and used before his said inven-
tion and discovery thereof. If you are satisfied from the evidence
beyond a reasonable doubt of the proof of either of these charges,
in the light of the instructions given you by the court, you should
find the defendant guilty.

If you are satisfied from the evidence beyond a reasonable doubt
that Van Emon was the original, first, and sole inventor of said im-
provement and that defendant knew the same at the time he took
and subscribed the oath — if you find that he did take and subscribe
it as alleged in the indictment — it will be your duty to find the de-
fendant guilty ; but if you find from the evidence that the defendant
was the first and original inventor of this improvement, or that he
was the original and first inventor jointly with Van Emon or some



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422 DECISIONS OF UNITED STATES COUBTS IN PATENT CASES.

one else, you cannot find the defendant guilty. And if you are not
satisfied beyond a reasonable doubt that the defendant was not the
original and first inventor, either jointly or solely it will be your
duty to acquit him unless you further find to your satisfaction be-
yond a reasonable doubt that he knew and believed said improve-
ment to have been known or used before his alleged invention or dis-
covery thereof.

Now, the first inventor is the one who first reduces the idea to
some practical or useful form. It does not exist in the mere in-
ventor's theories or ideas until they are reduced to some practical
form. An invention cannot be predicated upon a mere conjecture
or mere speculation or conjecture, so that the mere idea of itself
would not of itself constitute an invention until it was reduced to
some practical form — put into some practical mechanical form.

It is alleged in the indictment that the defendant well knew and
believed that the invention had been known and used before his
alleged invention and discovery thereof, and that defendant wilfully
made a false statement in said oath in this regard, therefore if you
find that the defendant knew he was not the first and original in-
ventor, either joint or sole, of said invention, and knew Van Emon
or some one else was such inventor, and wilfully made the oath,
then he would be guilty as charged.

The oath set forth in the indictment, and which it is alleged de-
fendant wilfully took and subscribed, is one required by law. In
the oath set forth it is stated that the applicant, or defendant, does
verily believe himself to be the original, first, and sole inventor of
the improvement mentioned. You will note that the word "sole"
is added to this affidavit. The statute, however, does not require
an applicant for a patent to state whether he is the sole or joint
inventor of the art or machine or improvement for which he solicits
a patent, but only requires the applicant to state that he verily
believes himself to be the first and original inventor.

I instruct you that, inasmuch as the statute does not require the
applicant to state whether he is the sole inventor, perjury cannot be
predicated upon any statement that he is the sole inventor, and it
is immaterial whether the defendant invented the patent solely by
his own effort or jointly with another; that is, if defendant was
either a joint or the sole inventor of the improvement, the oath
would not be false in a material matter as to the part thereof relating
to that question, but if he was neither a joint nor a sole inventor,
the oath would in that respect be false in a material matter.

If Van Emon was the first, original, and sole inventor of the im-
provement and the defendant had no part in originating the same, he,
the defendant, could not be either the sole or joint inventor thereof,
and if he knew this at the time he took and subscribed the oath



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DECISIONS OF UNITED STATES OOUBTS IN PATENT CASES. 423

set forth in the indictment, the oath would be false in two material
particulars, first, wherein it is stated that the defendant is the
original and first inventor of the improvement; and, second, wherein
it is stated that he does not know and does not believe that the same
was ever known before. And if you are satisfied beyond a reason-
able doubt that the defendant wilfully took and subscribed the same,
knowing it to be false in either particular as stated, he will be guilty
as charged in this indictment.

The statements, however, in the affidavit made by the defendant,
are presumed to be true because they were made under oath. And
such an oath is of equivalent value to the testimony of a credible
witness. In order, therefore, to convict one who subscribed such
an affidavit of perjury, the Government must satisfy you beyond a
reasonable doubt of the falsity of the oath, by the testimony of more
than one credible witness, or the testimony of one witness and other
corroborating proof sufficient to satisfy you that the statements were
not true, or that the defendant did not honestly and in good faith
believe that he was the first and original inventor at the time he
made the affidavit.

The rule is based — this doctrine is based upon the presumption
that when one takes an oath or swears to a statement, that he tells
the truth, and therefore if the same is contradicted by another single
witness, and there are no corroborating witnesses, it is simply the
testimony of two witnesses, one against the other, both under oath,
and it would not be sufficient to convict; but there must either be
the testimony of two witnesses or one witness and corroborating
circumstances. It is not necessary there should be the testimony
of witnesses directly to the matter in controversy; one witness is
sufficient if there are corroborating circumstances of sufficient impor-
tance and weight to justify you in concluding that the affidavit is
false.

Again, the false oath must have been taken wilfully and corruptly;
that is to say, it must have been taken with some degree of delibera-
tion and with an intent to testify falsely, and the accused must not
at the time have believed the facts so verified and sworn to to be
true. The intent or motive being a condition of the mind, you must
determine that as to the acts and demeanor of the accused and by
all the attendant facts and circumstances. Men do not usually act
without some impelling influence, some purpose in view, and for the
ascertainment of that purpose, or the intent or motive behind it,
where there is no express declaration by the accused, resort must be
had to his acts and demeanor, his relationship with the principal
and controlling facts in the case, and all the attendant circumstance^
that might throw light on the subject.

54282**— 13 80



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424 DECISIONS OF XJNITBD STATES COURTS IN PATENT CASES.

False swearing in an honest belief that the statements verified are
true, would not constitute perjury, and if the defendant when he
made oath or declaration in question truly believed that he was
the original, first, and sole inventor of the q)ecific improvement, and
honestly and in good faith believed such statements to be true, he
oould not be guilty as charged.

The law also presumes that the person to whom a patent has been
issued is the original and first inventor of the device or thing pat-
ented; that is to say, the production of the patent makes a prima
facie case in his favor. But this presumption may be overcome by
proof to the contrary, and has been overcome in the courts, because
patents have been set aside and canceled on subsequent ascertainment
and proof that the claimant was not in fact sudi original and first
invent4>r.

It is further essential to this case, before a conviction can be had
upon the charge in the indictment, that the defendant well knew he
was not the original and first inventor of said improvement, but
well knew that Van Emon was such inventor ; that Van Emon must
have been the original, first, and sole inventor of the improvement on
a one-piece buckle containing the elements that defendant has ob-
tained a patent to, which principal and essential elements I have
explained to you heretofore. For the ascertainment therefore of
whether Van Emon was the original, first, and sole inventor of this
improvement in question, or whether defendant was the original and
first inventor, joint or sole, thereof, you are to take into considera-
tion the relationship of the parties, the purchase of Larson's claim
or application for patent jointly by Van Emon, the defendant and
Mrs. Parrish, the opportunity afforded the parties, namely, the de-
fendant and Van Emon, for ascertaining the elements of such claim,
the suggestions and discussions between them and others as to its
utility, and touching any improvement and especially the improve-
ment in question; the further joint application for patent upon a
buckle by Van Emon, the defendant, and Mrs. Parrish, the purpose
they had in view in making such application, and the final with-
drawal of such claim, and how and why it was done and the subse-
quent application by the defendant alone for the patent to the im-
provement in question, and how and why he so made the application
alone and without joining with the other parties in the previous
claims for a patent particularized by the last application for a one-
piece buckle.

You will further take into consideration the models that have
been produced by Van Emon and the defendant, and determine if
you can, who originated or produced the first or primary idea of
the improvement which is shown forth by the one-piece-buckle
patent — whether, considering all these things, together with other



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DECISIONS OF UNITED STATES OOUBTS IN PATENT CASES. 425

testimony in the case, bearing upon the subject, bearing in mind at
the same time the credibility of the witnesses and the weight to be
given such testimony, Van Emon produced the first, original, dis-
tinct, and definite idea of the improvement, not vague and fanciful
but well defined, exact and susceptible of demonstration, or whether
the defendant was the original and first inventor as he declared
under oath he was.

If he was not such first and original inventor thereof, as I have
said before and was conscious that Van Emon was the original, first,
and sole inventor — ^if you so find that he was — or was conscious that
he was not the original and first inventor thereof, and deliberately,
wilfully, intentionally, and with culpable and corrupt intent swore to
a declaration that he believed he was the original and first inventor
of such improvement and did not at the time believe the declaration
to be true, he would be guilty under the charge; otherwise he should
be acquitted.

Now, I have stated to you that before you can find the defendant
guilty you must be satisfied of his guilt beyond a reasonable doubt.
I do not mean by that word a mere possible doubt. Nor do I mean
a mere captious doubt. But it is a real substantial doubt, such a one
as would cause an honest man to hesitate in his own most grave and
important affairs. It is not a doubt conjured up by the ingenuity
of counsel, nor one that you may conjure up in your own mind, but
it must be based either upon the testimony in the case or the want of
testimony. And if you entertain such a doubt and are unable to
say, after you have considered all the testimony that you have a
deep and abiding conviction to a moral certainty as to the truth of
the charge, then the defendant is entitled to the benefit of that doubt
by an acquittal. If, on the other hand you are satisfied and can
unhesitatingly say that you believe the defendant guilty, then you
should so declare by your verdict.

It is the province of the court to instruct you touciiing the law-
governing the cause at issue, and you will take and accept the law
given to be the law as your guide ; but it is your sole province under
the direction of the court, to find the facts from the testimony
adduced; that is, you must judge of the effect of the evidence and
return your verdict accordingly.

Your power and authority of judging the effect of the evidence
however, is not arbitrary, but your function in that regard should
be exercised with legal discretion and in subordination to the rules
of evidence. For instance, you are not bound to find in conformity
with the declarations of any number of witnesses which do not pro-
duce conviction in your minds, against a less number or against a
presumption or other evidence satisfying your minds. To justify



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426 DECISIONS OF UNITED STATES COUBTS IN PATENT GASES.

conviction upon a charge of perjury as I have said to you — to jus-
tify conviction it must be supported by the testimony of two credible
witnesses, or by one witness worthy of credit and other corroborating
proof of circumstances.

A witness is presumed to speak the truth. The law presumes that
whenever a party comes into court and takes an oath to tell the
truth, the whole truth, and nothing but the truth, that he or she does
so. But this presumption is not at all conclusive. It may be over-
come by the manner in which he testifies; by his character, or by
evidence affecting his character or oath or by contradictory evidence,
and it is for you and you alone to determine what weight is to be
given the testimony of each and every witness who has testified here.
You have observed them, noticed their appearance on the stand,
their manner of testifying and their general demeanor, and it is for
you and you alone to determine whether they were stating the truth
or not.

The evidence in many respects has been conflicting; indeed, in some
material respects, diametrically opposed. The witnesses for the
Government and the witnesses for the defense are diametrically
opposed to one another and it will be for you to arrive at a verdict
to consider the manner in which these witnesses have testified, the
probable truth of their statements and determine on which side truth
lies.

Being the judges of the effect and value of the evidence, you are
necessarily the judges also, as I have said, of the credibility of the
witness, and this you must determine by the manner in which the
witness testifies; whether he appears to be candid and free, or
whether he is evasive or is wavering, or is reserving part of the
truth, not detailing the whole truth, and also any testimony serving
to contradict or corroborate him, or by any facts and circumstances
appearing in the case tending to his credit or discredit, and to con-
sider at the same time any bias or interest the witness may have in
the case. Where a witness has a direct personal interest in the result
of the suit, the temptation is strong to color, pervert, or withhold the
facts. And in this connection I call your attention to the fact that
the defendant has taken the witness stand in his own behalf, which
he had a right to do, if he chose. Having gone upon the stand and
testified, it is competent for the Government to discredit his testi-
mony as that of any other witness, and by the same means. The
deep personal interest which he had in the result of the action should
be considered by you in weighing his evidence and in determining
how far or to what extent it is worthy of credit. The fact that he
is a defendant does not condemn him as unworthy of belief, but at
the same time it justifies the jury in viewing his testimony with care
and caution.



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DECISIONS OF UNITED STATES COUBTS IK PATENT CASES. 427

Now, gentlemen, I have stated to you the rules of law by which
you are to be governed in arriving at your verdict in this case, I do
not care to allude to the testimony further than to call your attention
to some of the dates, in order that you may have them fresh in your
mind. As I stated to you before, the Larsen buckle, which is the
foundation of the subsequent patented article to the defendant, was
manufactured or devised by Mr, Larsen sometime in the latter part
of December, 1904, or the first part of 1905. You will remember
the testimony upon that subject. Mr. Larsen says he discovered or
invented this on the night of the 1st of January, 1905.

There is some testimony given by the defendant which it is claimed
tends to show that he was mistaken about the date and that the
buckle was, in fact, in existence in the latter part of December, 1904,
80 that the date, of course, is not material at all, unless it may affect
the credibility of Mr. Larsen, and in judging that question you will
not overlook the fact that it is admitted here that Larsen did have
a different buckle which he was exploiting and trying to dispose of —
or an interest in it — during the latter part of 1904 and before he
claims to have invented the particular buckle in controversy.

In January, 1905, on the 13th of January, Larsen made an appli-
cation for a patent upon his one-piece buckle and the model has been
introduced in evidence and you will have it in the jury-room, and I
have no doubt you will remember the buckle in question. He subse-
quently, along in April, I think, of 1905, sold or transferred or
assigned his interest in this patent application to Van Emon, the
defendant Patterson, and Mrs. Parrish, and on the 21st day of July,
1905, they made a joint application for a patent on an improvement
on the Larsen buckle. This improvement consisted, as I now recall
the testimony, — and if I am mistaken about it you will depend on
your own judgment and not mine — ^but this improvement that was
described in the joint application made by the parties on the 21st
day of July, 1905, consisted principally, if not exclusively, in the lip
that was added to the hame-bar of the Larsen buckle.

This joint application was pending in the Patent Office until the
3d of March, 1906, when it was either considered abandoned by the
department, or was rejected, but it is immaterial which. Nothing
further was done in reference to the matter until about a year later,
the 20th of March, 1907, when the defendant Patterson made his
application for a patent for it, and in support of that application
made the affidavit in which it is charged in this case he committed
the crime of perjury.

That is all I care to say to you about the dates, so that you may
get the dates and their relation, one to the other.

Note. — The defendant was found guUty as indicted^ and sentenced
to serve two years in the penitentiary.



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428 DECISIONS OP UNITED STATES COUBTS IN PATENT CASES.
[Court of Appeals of the District of Columbia.]

Carmel Wine Company v. California Winery,

Decided Deoetnber 4, 1911,

174 O. G., 586; 38 App. D. C, !•

1. TBADE-MaBKS — SiMILABITT.

A mark consisting of a label containing certain pictorial representations
the essential feature of which is stated to be " the representation of a vine-
yard, a herd of camels, and two men bearing a grape" Held deceptively
similar to a mark consisting of the representation of two men bearing a
bunch of grapes in the same manner as in the other mark.

2. Same — Same — One Mabk Inclxtdinc Essential Feature op Anotheb.

" It goes without saying that one has no right to incorporate the mark of
another as an essential feature of his mark. Such a practice would lead
to no end of confusion and deprive the owner of a mark of the just protec-
tion which the law accords him."

3. Same — Pbiobity.

Evidence considered and Held to establish that appellee adopted and used
its mark prior to the earliest date of adoption by appellant and that as the
marks are deceptively similar a petition for the cancelation of the registra-