Andrews v. Hovey

delivered the opinion of the court.

This is a petition by the appellants in the case of Andrews v. Hovey, reported in 123 U. S. 267 , for a rehearing of that case upon the points upon which the decision was based.

The suit was a suit in equity, brought by the appellants for the infringement of reissued letters-patent No. 4372, granted to Nelson W. Green, one of the appellants, May 9, 1871, for am “ improvement in the method of constructing artesian wells,” the original patent, No. 73,425, having been granted to said Green, as inventor, January 14, 1868, on an application filed March 17, 1866. The Circuit Court had dismissed the bill on the ground of the invalidity of the patent. The plaintiffs appealed, and this court affirmed the decree. In its opinion, it was said: “ The patent is famil

Our decision was, that the patent was invalid, because the invention covered by it had been in public use more than two years before Green applied for the patent, without reference to the question whether he consented to such use or not. The views which led to this conclusion were set forth at' length in the opinion, and a further consideration of them, in the light of the arguments presented on this application for a rehearing, has only served to confirm us in the conviction that they were correct. But, as the briefs of counsel in support of the application proceed upon the ground that certain views and authorities, which they think bear upon the question involved, were not - presented to us upon the original hearing, we deem it proper to state the reasons for our adherence to our conclusion.

The main proposition urged by the counsel for the appellants is, that the question involved was adjudged by this court in.accordance with their views, in the case of Kendall v. Winsor, 21 How. 322 , decided in 1858. In the same connection,

The question involved arises upon the second clause of § 7 of the act of 1839, which section was in these words : “ That every person or corporation who has, or shall have, purchased or constructed any newly invented machine, manufacture, or composition of matter, prior to the application of the inventor or discoverer for a patent, shall be held to possess the right to use, and vend to others to be used, the specific machine, manufacture, or composition of matter so made or purchased, without liability therefor to the inventor, or any other person interested in such invention; and no patent shall be held to be invalid by reason of such purchase, sale, or use prior to the application for a patent as aforesaid, except on proof of abandonment of such invention to the public; or that such purchase, sale, or prior use has been for more than two years prior to such application for a patent.”

This section contains two clauses, all that precedes the first semicolon being the first clause, and all that comes after the first semicolon being the second clause. The first clause relates to the right of a person, as against a suit by the patentee for infringement, to use and sell the specific machine, manufacture, or composition of matter purchased or constructed prior to the application for the patent, and the use of which would otherwise be a violation of the patent. The second clause relates to the effect upon the validity of the patent, of such purchase, sale, or use prior to the application. The questions involved in the two clauses are quite different. The first clause relates to the particular right of a particular defendant to use a particular machine, manufacture, or composition of matter after .the grant of the patent, and notwithstanding its grant, and in no manner relates to the validity or invalidity of the patent. The second clause relates wholly to the validity of the patent.

The first case in which the 7th section of the act of 1839 appears to have come under consideration in this court was that of McClurg v. Kingsland, 1 How. 202 , decided in 1843. But that was a case which involved only the first clause of the section. The patent was for an improvement in the mode of casting chilled rollers. It was, therefore, a patent for an improvement in a process. The patentee'invented it while he was a workman in' the employ of the defendants. They put it into use in their business. He left their employment, and then applied for and obtained his patent. His assignees sued the defendants in an action at law for continuing to use the improvement. There was a verdict for the defendants, upon the ground that, by reason of their unmolested, notorious use of the invention before the application for the patent, they had a right to continue to use it, under the provisions of the first • clause of the 7th section. The judgment for the defendants was affirmed by this court upon that ground. It held that the defendants were on the-same footing as if they had had from the inventor a special license to use his invention, given before he applied for his patent, and that the first clause of the 7th section extended to the invention or'thing patented in that case, although it consisted of a new mode of operating an old machine, as contradistinguished from a patent for a machine. The court distinctly held that the words “newly invented machine, manufacture, or composition of matter,” and the words “ such invention'” in the first clause of the 7th section, meant the invention patented; and that the words “the specific machine, manufacture, or composition of matter ” meant the thing invented, the right to which was secured by the ■ patent. We see nothing in this case which sustains the position of the appellants.

The first reported case in a Circuit Court, involving any part of the 7th section, is that of Pierson v. Eagle Screw Co., 3 Story, 402 , in 1844, in the Circuity Court for thé District of Massachusetts, before Mr.' Justice Story. That was a case

In Hovey v. Stevens, 1 Woodb. & Min. 290, in the Circuit Court for the District of Massachusetts, in 1846, before Mr. Justice Woodbury, a motion was made for a preliminary injunction, on a patent granted to Hovey. The question' arose whether Stevens did not himself, before Hovey obtained his patent, discover or. construct the patented invention. The court considered the question whether Stevens had ’ not obtained a knowledge of Hovey’s invention through a workman in his employ, Avho had previously • been in the employ of Hovey and had used the improvement, and whether Stevens did not copy the improvement from Hovey’s, without Hovey’s consent, and before Hovey made his machine public or sold it. The court observed, that, in such a case, the use of the machine by Stevens, though begun before Hovey obtained his patent, would be a use by fraud, not contemplated and saved under the 7th section of the act of- 1839. The question was solely as to the right of Stevens to continue to use the machine

The next case cited is Pitts v. Hall, 2 Blatchford, 229, .in 1851, in the Circuit Court for the Northern District of New .York, before Mr. Justice Nelson and Judge Conkling. In that case the only questions were whether the patentee had forfeited his right to his invention by using it in public more than two years prior to his application, or whether such use by him was only experimental, with a view to further improvements ; and also whether he had dedicated or abandoned his invention to the public use. The case in no manner involved the question before us.

In McCormick v. Seymour, 2 Blatchford, 240, in 1851, in the Circuit Court for the Northern District of New York, before Mr. Justice Nelson, the points involved related wholly to the acts of the patentee himself, more than two years prior to his application, in respect to his own use in public of the patented improvement; and to the question of his abandonment of the invention to the public within the two years. The jury having failed to agree upon a verdict, the case-was again tried, and resulted in a verdict and judgment for the plaintiff, thus overruling the defences set up. At December Term, 1853, this court reversed the judgment on the question of damages,; but, it approved the rulings below on the above points. Seymour v. McCormick, 16 How. 480 .

The case of Sargent v. Seagrave, 2 Curtis, 553, in 1855, in the Circuit Court for the District of Massachusetts, before Mr. Justice Curtis, involved only the questions, on a motion for a preliminary injunction, of the exclusive possession of the right by the patentee, and the acquiescence of the public therein,

Then came the case of Kendall v. Winsor, 21 How. 322 , decided by this court at December Term, 1858. It was a writ of error to the Circuit Court for the District of Rhode Island, where the case was tried before Mr. Justice Curtis and a jury. The suit rifas an action, at law for damages for the infringement of a patent granted to Winsor, who had a verdict and a judgment. The particular question in the case arose wholly under the first clause of the 7th section of the' act of 1839. The defendants claimed a right to use certain specific machines under that clause. The application for the patent was made in November, 1854. Prior to that time, the defendants had constructed one machine containing the patented invention, and they constructed others in the autumn of 1854. In the course of that fall, Winsor had knowledge that the defendants had built, or were building, one or more machines like his invention, and did not interposé to prevent them. Winsor had completed in 1849 four machines containing the patented improvements, and had made on them articles which he had sold. But he kept the machines .from the view of the public, allowed none of the hands employed by him to introduce persons to view them, and the hands pledged themselves not to divulge the invention.. Among those hands was one Aldridge, who left the plaintiff’s employment in the autumn of 1852, and entered into an arrangement with the defendants to copy the plaintiff’s machine for them, and did so, and the defend-' ants’ machines were built and put in operation by Aldridge, and under his superintendence, and by means of the knowledge which he had gained while in the plaintiff’s employment, under a pledge of secrecy,. On the basis of these facts, the defendants’ counsel prayed the com! to instruct the jury that, under the 7th section of the act of .1839, if the jury were satisfied that the machines for the use of which the defendants were sued were constructed and put -in operation before the plaintiff applied for his patent, then the defendants possessed the right

It is thus seen, that this case not only turned upon a right claimed wholly under the first clause of the 7th section, but that it was held that a fraudulent, piratical, and surreptitious purchase or construction of a machine, like that shown in that case, was not such a purchase or construction as was covered by the first clause of the 7th section. The decision .in that case does not affect the one now before the court.

It may well be that a fraudulent, surreptitious, and piratical purchase or construction or use of an invention- prior to the application for' the patent would not affect the rights of the patentee under either clause of the 7th section; but the present is not such a case as that which existed in Kendall v. Winsor. In the use of driven wells in public, at Cortland, by others than Green, more than two years before his application, we see nothing in the evidence under which such use can properly be characterized as fraudulent, piratical, or surreptitious; Green’s invention was made in 1861. The brief of the appellants at the former hearing contained this statement: “ But it is not denied that in this case there is proof that after the invention by Green in 1861, and his public exhibition of it in Cortland, the rumor of it spread, and the value of it became apparent, and other persons, without Green’s consent and allowance, did put the invention into public use without his knowledge.” The application for the patent was made March 17, 1866. It is true that the’driven wells thus referred to were constructed, some- by Miidge and some by Suggett, who

In the case of Sanders v. Logan, 2 Fish. Pat. Cas. 167 , in 1861, in the Circuit Court for the Western District of Pennsylvania, before Mr. Justice Grier and Judge McCandless, the bill was dismissed because the patentee had abandoned his invention, and because it had been publicly used, with his knowledge, consent, and approbation, more than two years prior to the application for the patent.

In the case of American Hide Co. v. American Tool Co., 4 Fish. Pat. Cas. 284 , in 1870, in the Circuit Court for the District,of Massachusetts, before Judge Shepley, the question tried was, whether the invention was in public use or on sale, with the knowledge and consent of the inventor, more'than two years before he applied for his patent, and whether he had abandoned his invention to the public prior to his application. On these issues the jury found for thé defendants.

In Russell & Erwin Co. v. Mallory, 10 Blatchford, 140, in 1872, in the Circuit Court for the District of Connecticut, before Judges Woodruff and Shipman, the question involved related entirely to an abandonment of the invention and to the effect of the acts of the patentee within two years prior to the application.

In Jones v. Sewall, 3 Cliff. 563 , in 1873, in the Circuit Court for the District of Massachusetts, before Mr. Justice Clifford, it was set up as a defence, that the several improvements covered by the patent sued on were in public use and on sale more than two years before the patentee made his application for the patent. The court overruled the defence, holding that there was no evidence to show that the inventions, or either of them, were in public use or on sale more than two years before the inventor applied for a patent, or for any shorter period, with his consent and allowance, or that he had. any knowledge of any such sale or public use at the time it was made; 'and that, on the contrary, the evidence showed that he never gave his consent to any such sales, and that he constantly asserted that he intended to apply for a patent. The decision was placed upon the ground, that such consent and allowance were necessary to the invalidity of the patent. This was a direct adjudication upon the point involved in the present case.

In regard to the first request, this court said, that the instruction was properly refused, and that it stated, inaccurately the rule of law which it involved. The court added: “ A patent relates back, where the question of novelty is in issue, to the date of the invention, and not to the time of the application for its issue. The jury had already been sufficiently instructed upon the subject. The instruction assumes that the reissue was for the use of fat liquor, without reference to the point whether it were hot or cold.” The court then proceeded to hold, that the two claims of. the patent sued on required that the fat liquor should be heated, and that, therefore, the first instruction asked was improper. It i§ quite apparent that the court considered only the issue of novelty, and that it did not pass upon the question involved in the present case.

The seventh request, like the first, was inaccurate, because it referred to the time of the application, and not to tüe date of

In Henry v. Francestown Co., 2 B. & A. Pat. Cas. 221, in 1876, in the Circuit Court for the District of New Hampshire, before Judge Shepley, the defence was the public use and sale of the invention by the patentee more than two years before he applied for his patent. It was held that the use and sales by him were experimental.

In Consolidated Fruit-Jar Co. v. Wright, 94 U. S. 92 , at October Term, 1876, a patent granted in 1870, on an applica- ■ tion made in January, 1868, the invention having been completed in June, 1859, was held void, because (1) there was a purchase, sale, and prior use of the invention more than two. years before the application, and (2) at the time of the application the invention had been abandoned to the public. The sale and' prior use were by the inventor himself. This case-does not adjudge the point here involved.

In Kelleher v. Darling, 4 Cliff. 424 , in 1878, in the Circuit-Court for the District of Massachusetts, before Mr. Justice Clifford, the original patent was issued in 1871, under the act of July 8, 1870, and was divided,' on its subsequent surrender, into two reissued patents. No question arose in the case under the act of 1839.

So, top, the case of Henry v. Providence Tool Co., 3 B. & A. Pat. Cas. 501. in 1878, in the Circuit Court for the District of Rhode Island, before Mr. Justice Clifford, arose under the act of 1870.

In Draper v. Wattles, 3 B. & A. Pat. Cas. 618, in 1878, in the Circuit Court for the District of Massachusetts, before Judge Lowell, the original patent was issued in 1869, on an application made in June, 1868. The court held that, under the -7th section of the act of 1839, the sale or use more than two years prior to the application must have been with the consent or

In Bates v. Coe, 98 U. S. 31 , at October Term, 1878, the original patent was issued in 1863. Mr. Justice Clifford, in' delivering the opinion of the court, stated, that the answer did not set up" as a defence that the invention had been in public use or on sale in this country for more than two years before the application for the patent, and that.there was nothing in the record to support that proposition, if it had been well pleaded. His observation, therefore, citing Pierson v. Eagle Screw Co., 3 Story, 402 , that, under the 7th section of the act of 1839, the public use or sale, in order to defeat the right of the inventor to the patent, must have been with his consent and allowance,’ for more than two years prior to the application, was an observation made in regard to a point not in issue or in judgment.

In Henry v. Francestown Co., 5. B. & A. Pat. Cas. 108, in the Circuit Court for the District of New Hampshire, in 1880, before Judge Lowell, the patent had been granted in 1859, on an application filed in 1857. On proof that the inventor had, more than two years prior to his application, sold articles containing his invention, not experimentally, the patent was held invalid.

In Graham v. McCormick, 10 Bissell, 39 , and 5 B. & A. Pat. Cas. 247, in the Circuit Court for the Northern District of Hlinois, in 1880, before Judge Drummond, the patent having been granted in 1868, the question was as to a use' or sale by the inventor more than two years before his application; and it was held that, as a matter of fact, the sale and use by him were experimental.

In Brickill v. The Mayor, 18 Blatchford, 273, in 1880, in. the Circuit Court for the Southern District of New York, before Judge Wheeler, the patent had been- granted in 1868, and the defendant, the city of New York, set úp a right to use the

In Campbell v. The Mayor, 20 Blatchford, 67, in 1881, in the Circuit Court for the Southern District of New York, before Judge Wheeler, the patent having been granted in 1864, and the invention having been made, sold, and used by others than 'the patentee after he had invented it, and more than two years before he applied for his patent, but without his consent and allowance, it was held by the court, that, under the second clause of the 7th section of the act of 1839, the public use and sale having been without the consent or allowance of the inventor, the patent was not invalid. This was a direct adjudication upon the point involved in the present case.

In Davis v. Fredericks, 21 Blatchford, 556, in 1884, in the Circuit Court for the Southern District of New York, before Judge Wheeler, the patent having been granted in 1868, the invention had got into public use and on sale more than two years prior to the application for the patent, but without the inventor’s consent or allowance. The court held, following Campbell v. The Mayor, that the patent was not invalid, thus adjudging the point in question here.

Beference is also made in the brief for the appellants, to twelve cases reported in 1 MaoArthur’s Patent Cases, running from 1841 to 1859, decided by the judges of the Circuit and Supreme Courts of the District of Columbia, on appeals from the Commissioner of Patents; but in none of them was the point here involved in judgment. In Heath v. Hildreth, p. 12, no question arose under the act of 1839. In Arnold v. Bishop, p. 27, consent by the applicant to the use of his invention for more than two years prior to his application was shown. In Hunt v. Howe, p. 366, the sale was made by the inventor,

The review we have given of the cases now cited on behalf .of the appellants shows no adjudication by this court on the question involved, and a direct adjudication as to the effect of the second clause of the 7th section of the act of 1839, in accordance with that-contended for by the appellants, in only four cases in Circuit Courts (not including Andrews v. Carman). To the' contrary effect is the case of Egbert v. Lippmann, 15 Blatchford, 295, commented on in the former opinion 123 U. S. 270 , 271.

It is alleged by the appellants, that this court was in error in stating, as it did in its former opinion, ( 123 U. S. 269 ,) that in Andrews v. Carman, 13 Blatchford, 307, 324, the question of the use of Green’s invention by others more than two years prior to his application does not appear to have been raised; that it was in fact raised; and that the inference to the contrary grows out of a clerical error in the published opinion in Andrews v. Carman. It may be accepted that this is so, but the question of law involved is the very question now under consideration.

It is also alleged that the same question was distinctly raised, in proof and argument, in the interference case between Green and Suggett respecting this invention, and that Green’s patent

It is also urged, that, in the rules of the Patent Office, promulgated between the time of the passage of the act of March 3, 1839, and the enactment of the act of July 8, 1870, it was made known to applicants for patents that a'patent would not be granted if the invention had been in public use or on sale, with ibhe consent and allowance of the inventor, for more than two years before his application. It was undoubtedly true, that such a state of facts was sufficient ground for withholding a patent; but the promulgation and enforcement of such a rule cannot be regarded as having the effect of a judicial or authoritative adjudication of the question under consideration.

The argument sought to be founded upon the various phases assumed-by the provisions of the act of July 8, 1870, in its passage through the two Houses of Congress, is very unsafe and unreliable, as a basis of judicial action, particularly when the only inference sought to be draw;n is one as to what view Congress took of the act of 1839, in enacting the act of 1870. If any inference is to be drawn on the subject, it can only properly be drawn from the act of 1870 as it stands on the statute book, and that inference is commented on in the former opinion of this court', at page 275 of 123 U. S.

The doctrine invoked by, the appellants, that where the meaning of a statute has been settled by judicial construction, that construction becomes a part of the statute, is' not applicable to the present case. A question arising in regard to the construction of a statute of the United States concerning patents for inventions cannot be regarded as judicially settled when it has not been so settled by the‘highest judicial authority which can pass upon the question. The' earliest decision of-a Circuit Court, directly adjudging the point here involved, was

Nor is this a case for the application of the doctrine, that, in cases of ambiguity, the practice adopted by an executive department of the Government in interpreting and administering a statute is to be taken as some evidence of its proper construction. The question before us, as to the validity of a patent, by reason of preexisting acts or omissions of the inventor, of the character of those involved in the present case, is not a question of executive administration, but is properly a judicial question. Although it may be a question which, to some extent, may

It is contended for the appellants, that the claim of the G-reen patent is for a process, being for “ the process "of constructing wells by driving or forcing an instrument into the ground until it is projected into the water, without removing the earth upward as it is in boring, substantially as herein described;” that the 7th section of the act of 1839 applies only to “ a machine, manufacture, or composition of matter; ” and that, therefore, that section does not apply to the present pase. In addition to the view to the contrary taken by this court in McClurg v. Kingsland, 1 How. 202 , before commented on, it was held by this court in Beedle v. Bennett, 122 U. S. 71 , a suit on this very patent, that the patent covers the process of drayring water from the earth by means of a well driven in the manner described in the patent, and that the use of a well so constructed was, therefore, a continuing infringement, because every time water was drawn from it the patented process was necessarily used.

The most plausible argument presented on the part of the appellants is, that, under §§ 6, 7, and 15 of the act of July 4, 1836, a patent was invalid if the thing invented had been in public use or on sale, with the consent and allowance of the inventor, prior' .to his- application for the patent;. that § 7 of the act of 1839 was -intended" '.only to limit the effect on the validity of the patent of the acquisition of single specimens of the patented, invention; that the interests of purchasers or constructors of such, specific articles were the sole objects of that section; that the Second clause of the section was intended only to provide 'that, the patentee should- hold his right against the géneral- public- unless there was proof of abandonment by him, or-Unless'.the'-purchase, sale, or prior use by or to

But our views in regard to the proper construction of the 7th section do not admit the soundness of this contention, and were fully set forth in the former opinion.

It is proper to notice the suggestion, that there is no declaration in the 7th section of the act of' 1839, that either in the cáse of an abandonment of the invention, or of the existence, for more than two. years prior to the application, of the purchase, sale, or prior use referred to in the second clause of the section, the patent shall be held to be invalid’; and the further suggestion, that there is only a hypothetical implication that the patent shall be invalid in the excepted cases. But we cannot so interpret the statute. Under §§ 6, 7, and 15 of the act of 1836, a patent was made invalid if, at the time of the application'therefor, the invention had been in public use or on sale, with the consent or allowance of the patentee, however short the time. The second clause of the 7th section seems to us to clearly intend, that, where the purchase, sale, or prior use referred to in it has been for more than two years prior to the application, the patent shall be held to be invalid, without regard to the consent or allowance of the inventor. Otherwise the statute cannot be given its full effect and meaning.

The result of these views is that

The application for a rehearing is denied.

Mr. Thomas' Wilson for appellee.

Andrews v. Cone. Appeal from the Circuit Court of the United .States for the District of Minnesota. • Mr. Justice Blatchford ■delivered the opinion of the court. This is an appeal by the plaintiffs in a suit in equity in the Circuit Court of the United States for the Pistrict of Minnesota, from a decree dismissing the bill. The •Suit was brought for the infringement of the “ driven well” patent whtéh was the subject of the decision of this court in Andrews v. Hovey, 123 U. S. 267 , and in which case an application for a rehearing has just been denied. The decree below in Andrews v. Hovey dismissed the bill, and this court affirmed it, holding the patent to have been invalid. In the present case there is a written stipulation, filed in this court, signed by the counsel of record here, that this case shall abide the result of the ease of Andrews v. Hovey, in this court, and that the decree and mandate hereiu shall be the same as the decree and mandate in that case, except that no costs shall ■be taxed or awarded, or disbursements or officers’ fees allowed or -awarded, in this case, in favor of or against either party hereto, and that each party shall pay . his own costs and disbursements. In .accordance with such stipulation,

The decree of the Circuit Court is affirmed, subject to the above recited provisions of the stipulation.