Comeau Family

Donations

2

Archivist Intern 2

N.D. Ill. Historic

Patent Cases

3-5

125th Anniversary of

Seventh Circuit Court of

Appeals

6

INSIDE THIS

Northern District of Illinois

Court Historical Association

Newsletter Fall/Winter 2016

From the President

The New Year is a busy one for the Northern District of Illinois Court Historical Association. We are cele-brating the 125th anniversary of Seventh Circuit Court of Appeals, cataloguing new judicial oral histories, and preserving and preparing to display pieces of the extensive collection of transcripts and notes donat-ed by the family of long-time court reporter Raymond Comeau. History is made daily in our District, and the judges, lawyers, librarians, historians, and other volunteers of the Court Historical Association work diligently to ensure its preservation while having fun doing it. If you are interested in getting involved with the Association, please contact me at margot.klein@valoremlaw.com. - Margot Klein

N.D. Illinois Court Historical Association Meeting

Wednesday, February 8, 2017

12:15pm - 1:30pm

The next N.D. Illinois Court Historical Association meeting is on Wednesday, February 8,

2017. The Association will meet in the Library conference room on the 16th Floor of the

Dirksen Courthouse.

New Judicial Oral Histories Available

Several new judicial oral histories were added to the Seventh Circuit Library’s collection over the past year. These, and many other judicial oral histories, are available to be borrowed from the Library by court staff.

The Oral History of Marvin E. Aspen, Senior

District Judge of the United States District

Court for the Northern District of Illinois

The Oral History of Arlander Keys, District

Court Magistrate Judge of the United States Dis-

trict Court for the Northern District of Illinois

The Oral History of P. Michael Mahoney, Retired

Magistrate Judge of the United States District

Court for the Northern District of Illinois

The Oral History of Charles P. Kocoras, District

Judge of the United States District Court for the

Northern District of Illinois

The Oral History of William J. Bauer, Circuit

Judge of the United States Court of Appeals

for the Seventh Circuit

The Oral History of Ilana Diamond Rovner, Cir-

cuit Judge of the United States Court of Appeals

for the Seventh Circuit

The Oral History of John D. Schwartz, United

States Bankruptcy Judge for the Northern District

of Illinois

The Oral History of Eugene R. Wedoff, United

States Bankruptcy Judge for the Northern District

of Illinois

Volume 2, No. 2 Page 2

Northern District of Illinois

Historical Association

www.ilndhistory.uscourts.gov

Officers:

Margot Klein, President

Gretchen Van Dam, Vice-President,

Archivist

Meaghan Clayton, Secretary-Treasurer

Directors:

Judge Rebecca R. Pallmeyer, Chair

Judge William T. Hart

Judge Jacqueline P. Cox

Judge Jeffrey Cole

William J. Kresse

Joel R. Skinner

The N.D. Illinois Court Historical Associa-

tion is incorporated in the State of Illinois

exclusively for education and charitable

purposes within the meaning of 501(c)(3)

of the IRC. Contributions are used for

maintaining archives and educational

programming about the history of the

court. Contributions may be sent to the

Secretary-Treasurer, Room 1637, 219 S.

Dearborn, Chicago, IL 60604.

Comeau Family Donates Audio Recordings

Cary Anne Hall has joined the Library of the U.S. Courts of the Seventh Circuit staff on a part -time basis. Cary Ann is a Masters candidate at San Jose State University in the Library and Information Sciences program focusing on archival studies. She will be working on the Comeau tapes project; organizing, cleaning, preparing for digitization, and researching case histories. Cary Anne also works as a Library Specialist in the Chicago office of Perkins Coie.

Library Adds Archivist Intern to Staff

This past summer, the family of for-

mer N.D. Illinois court reporter Ray

Comeau donated a treasure trove

of audio recordings to the N.D. Illi-

nois Court Historical Association.

Mr. Comeau’s son, John, provided

the information that his father had

been a court reporter for the dis-

trict from 1958 through 1985,

working with federal district judges

Austin, Crowley, and Hart, and oc-

casionally covering trials for other

judges as needed. John told Judge

Pallmeyer that his father had kept

all of his original recordings; he nev-

er discarded anything he recorded.

After his death, the family began

cleaning out Mr. Comeau’s house in

preparation for sale. In the base-

ment were boxes and boxes of

court audio recordings in a variety

of formats: audiographs, reel-to-

reel tapes (large and small), and

cassettes. There may be recordings

of significant trials held in the N.D.

Illinois, including recordings from

half of the Chicago Seven conspira-

cy trial and a trial involving Team-

sters head Jimmy Hoffa.

This past fall, Circuit Librarian

Gretchen Van Dam and Research

Librarian Erin Schlicht arranged for

the receipt of approximately 50

boxes of recordings. The boxes of

tapes were in terrible condition, as

they had been stored for many

years in an unfinished basement;

there was a great deal of mold and

water damage. New Library staffer

and Master’s student Cary Anne

Hall’s first job was to transfer the

tapes from their original boxes to

archival legal storage boxes and

begin to address the mold and mil-

dew. Continued page 5

Gretchen Van Dam, Vice-President, Archivist

Volume 2, No. 2 Page 3

N.D. Illinois Historic Patent Cases

The Intellectual Property Law Association of Chica-

go is one of the city’s oldest lawyers’ organizations.

I was invited to speak at the Association’s annual

dinner, which gave me an excuse to dig into some

patent cases decided by our court in its own early

days. As these cases show us, some things change

and others remain very much the same.

The first case I’ll tell you about is the oldest. Pitts v.

Wemple, decided in 1855, was an action to enforce

a patent issued in December of 1837: Patent Num-

ber 542. Just three digits! Perhaps not surprisingly,

the patent

was for agri-

cultural

equipment,

specifically

“a new and

useful im-

provement

in machines

for thresh-

ing, sepa-

rating and

cleaning

grain.” The

improve-

ment, as I

understand it (not very well – if you grew up on a

farm, you may be able to make more sense of this)

involved something referred to as “an endless

apron divided into troughs and cells in a machine”

that effectively separates wheat from chaff. The

opinions in the case were not as long as those we

write today, but not perfunctory, either. The first

was written by our Circuit Justice, John McClean.

The procedural posture of Pitts isn’t entirely clear,

but my best guess is that the court was reviewing

the situation to see whether there would be a trial

– more or less a claims construction/summary judg-

ment ruling. In allowing the case to go forward, the

court appeared to be addressing the validity of the

patent. The court didn’t use the expression “prior

art,” but that’s exactly what Justice McClean was

addressing. And in doing so, he made a point still

relevant today – that if the defendant’s machine

was similar to one that pre-dated the plaintiff’s pa-

tent, then for the plaintiff to label the defendant’s

machine infringement essentially meant that plain-

tiff’s own patent was invalid. Using the word

“infringement” to mean what we might call

“anticipated by the prior art,” the court explained,

“The rule is, that where the invention consists of a

combination of known mechanical powers, the use

of less than the whole will be no infringement. If

the whole of the combination be taken, though

something be added, still it is an infringement.”

Justice McClean remanded the case for trial to the

district judge, and District Judge Drummond’s in-

structions to the jury appear in the reported deci-

sions. From what I can tell, those instructions are

remarkably consistent with the law in 2016. For

example, Judge Drummond explained in his instruc-

tions:

The patent law requires the inventor

to set forth the nature and extent of

his discovery, so that, by referring to

his letters patent, a mechanic of

competent skill may be able, in the

state of the art as then understood,

to construct the machine or im-

provement, if the invention relate to

a machine. And he must ...

Hon. Rebecca Pallmeyer

Continued page 4

Volume 2, No. 2 Page 4

… particularly specify and point out the part, improvement, or combina-tion which he claims as his own in-vention or discovery. He is restricted to this claim. It is true that the whole patent, including specifications and drawings, is to be taken into consid-eration, but we look at them only for the purpose of placing a proper con-struction upon the claim.

We don’t know much more about the case, but we

do know that there was a defense verdict. These

old, old opinions got the job done, and without the

luxury of word processors, the judges didn’t waste

nearly as much ink as we do. Another big difference

between those old opinions and the ones we judges

write today is one you might appreciate: There was

very little in the way of case citations. The judges

just relied on their own good judgment and under-

standing of the law.

Let’s fast forward almost half a century to 1900, to

another case whose name reflects the technology

important

for the

time: Na-

tional Cash

-Register

Co. v. Navy

Cash-

Register

Co. The

patent at

issue in

this case

had issued

in 1883,

and by

now we

are up to

six digits:

It was Patent No. 271,363. The plaintiff was seeking

an injunction against infringement of its patent, and

Judge Kohlsaat issued a couple of opinions. In the

first one, we see he was a stickler when it comes to

written assignments. The plaintiff provided a certi-

fied copy of the assignment of the patent, but that

by itself wasn’t good enough for the judge, who in-

sisted that “good reason be shown for the nonpro-

duction of the original before the certified copy is

admissible.” (Does this sound a bit like the original

writings rule?)

The plaintiff evidently cured that problem, because

three weeks later, Judge Kohlsaat turned to the

merits. He concluded that the defendant’s cash reg-

ister device was an improvement on the plaintiff’s in

many ways, but it involved “all the features of

[plaintiff’s] patent.” In other words, it infringed.

The judge nevertheless declined to issue an injunc-

tion, because on the date of the decision, there

were only four days left in the life of the patent. So

it appears lawyers were not immune from procrasti-

nation. Again, both opinions are shorter than the

ones we write today, but the Cash Register case

made use of precedent, specifically citing a couple

of other cases where injunctions were issued, in

spite of the comparatively short remaining life of

the patent.

One more old case is worthy of consideration in this

year when our own Cubs made history. This is the

case of Thayer v. Spaulding, decided in 1886. The

patent was issued in 1878, Patent No. 200,358, for

“an improvement in masks” – specifically, a face

mask worn by baseball catchers. The inventor, F. W.

Thayer, evidently began with “the old and well-

known fencing mask” and then added a head rest

and a chin rest. The judge had no difficulty conclud-

ing that defendant Spaulding had manufactured a

mask that infringed the patent. The real dispute...

Historic patent cases continued

Continued page 5

...appeared to be, again, a question about whether

the device was in common use before Thayer ob-

tained his patent. Two witnesses swore they had

seen such a mask “worn at a match game, played in

Boston, in the fall of 1875,” – but plaintiff vehe-

mently denied this, and several witnesses who also

attended that game did, as well. Judge Henry

Blodgett, who replaced Judge Drummond, ob-

served, “Parties asserting a prior use of device cov-

ered by a patent have the burden of proof, and are

bound to establish such prior use by strong and

convincing if not absolute conclusive proof; and I

feel compelled to say, after considering the proof

on both sides in reference to this prior use, that I do

not think that even the preponderance is with the

defendants.” The patent was valid and infringed,

and the plaintiff was entitled to damages.

This court has a busy patent docket to this day.

And that seems appropriate to me. I can trace my

own seat on this court back to the one Judge Drum-

mond occupied. Judge Drummond was the first

judge to occupy the second seat on our court. And

he was followed by Judge Blodgett and then later

by Judge Kohlsaat. Then as we march further

through history, we reach Judge William Hart, who

took senior status in 1997, and was replaced by –

well, by me. It’s an honor to follow in the footsteps

of those who set our court on course.

Volume 2, No. 2 Page 5

Historic patent cases continued

Comeau donations project continued from page 2

… She will then organize the tapes in chronologi-

cal order to locate recordings of identifiable no-

table trials. The plan is then to transfer those

recordings to a more stable platform, i.e. clean

tapes, and digitization. This Association can

then make the recordings available on our web-

site and to researchers. This is an exciting new

project, and we will keep everyone informed of

discoveries as we move forward!

Volume 2, No. 2 Page 6

Editors: Gretchen Van Dam and Erin Schlicht. Please send any news and queries to Gretchen Van Dam at Gretchen_Van_Dam@ca7.uscourts.gov.

Seventh Circuit Court of Appeals’ 125th Anniversary

2016 marked the 125th anniversary of the U.S.

Court of Appeals for the Seventh Circuit. Con-

gress created the court by the Act of March 3,

1891, known as the “Evarts Act.” The Act created

nine intermediate courts of appeal for the ex-

isting circuits, removing appellate jurisdiction

from the traditional circuit courts. Each of the

new appellate tribunals was to consist of three—

the Seventh’s were Judges Walter Q.

Gresham, John M. Harlan, and Henry W.

Blodgett. The first clerk of court was Oli-

ver Throck Morton and the first marshal

named was Capt. L.O. Gilman. The first

session of court was called or order on

June 16, 1891 and held in the Chicago

Post Office and Custom House located on

the block bounded by Adams, Jackson,

Dearborn, and Clark Streets (that building

was condemned in 1893 and demolished

for the Henry Ives Cobb courthouse,

which was demolished in 1964 for the

current U.S. Post Office and Kluczynski

Building.)

The clerk of court and marshal took their

oaths of office and Judge Harlan made

the exciting announcement that “this

Court of Appeals...will adopt and wear

the usual judicial gown as worn by mem-

bers of the Supreme Court at Washing-

ton…” This was very controversial as no

judge in Illinois, either state or federal,

had ever worn robes. The Chicago Legal

News was against the practice noting,

“...courts are the tribunals of the people

and judges should be near the people.

Justice should be administered in accord-

ance with the simplicity of our Govern-

ment and without pomp and show.”

The first case heard by the court was Union Stock

-Yards & Transit Co. v. Western Land & Cattle Co. ,

59 F. 49 (7th Cir. 1893).

For more on the history of the U.S. Court of Ap-

peals for the Seventh Circuit, check out History

of the Seventh Circuit: 1891-1941 by Rayman L.

Solomon, available in all of our library locations.