1. In a suit in chancery under a patent, evidence of prior
knowledge or use of the thing patented is not admissible unless the
answer contains the names and places of residence of those alleged
to have possessed a prior knowledge of the thing and where the same
had been used.
2. The defense "that the patentee fraudulently and
surreptitiously obtained the patent for that which he knew was
invented by another" is not a
Page 74 U. S. 584
sufficient defense to a charge of infringement unless
accompanied by the further allegation that the alleged first
inventor was at the time using reasonable diligence in adapting and
perfecting the invention.
3. The inventor who first perfects a machine and makes it
capable of useful operation is entitled to the patent.
4. Where a master workman, employing other people in his
service, has conceived the plan of an invention and is engaged in
experiments to perfect it, no suggestions from a person employed by
him not amounting to a new method or arrangement which in itself is
a complete invention is sufficient to deprive the employer of the
exclusive property in the perfected improvement.
5. Letters patent of long standing will not be declared invalid
upon testimony largely impeached, as
ex. gr. where forty
persons swear that the character of the witness for truth and
veracity is bad, although very numerous witnesses on the other hand
swear that they never heard his reputation in that way
questioned.
6. On a bill in chancery for an infringement of a patent, the
allegation in an answer of sale and public use "prior to the filing
of an application for a patent," with the consent and allowance of
the inventor, is insufficient unless it is also alleged in the
answer that such sale or use was more than two years before he
applied for a patent.
7. Forbearance to apply for a patent during the progress of
experiments and until the party has perfected his invention and
tested its value by practical experiment affords no ground for
presumption of abandonment.
8. Where a patent is extended by virtue of a special act of
Congress, it is not necessary to recite in the certificate of
extension all the provisos contained in the act.
9. A patentee claiming under a reissued patent cannot recover
damages for infringements committed antecedently to the date of his
reissue.
Error to the Circuit Court for Massachusetts, the suit having
been one to restrain the use by the Agawam Woolen Company of a
certain machine for manufacturing wool and other fibrous materials
patented to John Goulding.
The process formerly in use in the production of yarn from wool,
was by a set of carding engines, a billy and a jenny, a series
usually consisting of three carding machines, commonly called a
first breaker, a second breaker, and a finisher, one billy and two
jennies, sometimes two double carding machines being used instead
of three single carding machines.
The wool was fed to the first carding machine, called the first
breaker, on a feed table, and was doffed off the doffer
Page 74 U. S. 585
of that machine by a comb. The material thus doffed off was
taken to the second carding machine, called the second breaker, and
was fed into it in the same manner as in the first, and upon
leaving the doffer was either wound round a large cylinder, making
what was called a lap or bat, or dropped on the floor. The material
was then taken to the third carding machine and was fed to it in
the same way, and, by a roller and shell at the delivery end of
this machine, was made into short rolls, which were about as long
as this machine was wide. These short rolls were then taken to the
billy, and were spliced together on the apron roll of the billy by
children by rubbing the rolls together with their hands, and were
carried forward on the billy, after being so spliced together, by
the apron roll, which fed them through the jaws of the billy to the
spindles. The product of the billy was called roving. This roving
was then taken from the billy and set up on cops to the jenny, upon
which it was spun into yarn.
As early as 1812, Goulding, born in 1793, the son of a
machinist, and from early years familiar in his father's factory
with machines and machinery, sought to improve this long train of
engines, called in their whole series "the carding machine." He
thought that he could so improve it as to produce yarn from wool in
a cheaper manner, of better quality, and in greater quantity than
was produced by the old process. Engaged at different times in
Massachusetts, at Worcester, Halifax, and, lastly, at Dedham,
where, in 1823, he fixed himself as both a machinist and a
manufacturer of textile fabrics, he only sought for some years to
improve the billy, but as experiments were made by him, he aimed
finally at dispensing with the billy entirely and accomplishing
with four machines that which had previously required the use of
five. His purpose was also to dispense with short rolls entirely
and get the perpetual or endless roll and carry it through its
different stages, from the crude wool until it became finally
converted into yarn.
The result of his experiments and trials, extending over a long
term of time and after the use by him of very many
Page 74 U. S. 586
devices, was, as he alleged, successful. He dispensed with the
billy entirely, and by processes testified to by many witnesses as
invented by him, and by himself so sworn to be, obtained a
continuous or perpetual roll as the product of each carding engine;
accomplished a successful mixing of the wool -- as well where the
same color was used as where different colors were used; dispensed
with a large amount of manual labor, and secured a larger product
at half the expense as compared with the old process, a better and
more uniform roving, and a better and more uniform quality of
yarn.
Such was his view and his case as set forth in the bill.
But Goulding's claim to these high merits of invention were not
conceded. There were witnesses also, chiefly one Cooper, of
Concord, New Hampshire, who swore that he derived great aid from
others. Specific conversations and admissions of Goulding, about
the time of the alleged invention, were sworn to by Cooper. But his
testimony was strongly impeached, and relationship, bad feeling, or
interest were shown in others of the witnesses. As to Cooper
himself, forty different persons swore that his general reputation
for truth and veracity was bad. Very numerous ones, however, swore
that they had not heard it called in question. This sort of
testimony covered some hundred pages of the record.
Taken all together, this part of the case, on favorable
assumption for the defendant, seemed somewhat thus:
After Goulding came to Dedham and had been experimenting there
for a considerable time, one Edward Winslow, a blacksmith by trade
but if the testimony in his favor was to be believed, an ingenious
man, came into his service. Winslow professed no skill out of his
business, but made himself useful generally in whatever Goulding
found it most convenient to set him to do, working generally in
iron. He had no charge of Goulding's machine shop, but was not
unfrequently in it. Goulding himself directed all that was done
about machinery, whether as to making or as to altering it. In
1824, Winslow having been to a neighbor's factory, where
Page 74 U. S. 587
certain devices, meant to produce long or endless rolls and to
serve as receptacles for the rovings, had been introduced on
machinery for spinning yarn, Goulding, who had now nearly completed
his improvement, and while he was diligently prosecuting his
experiments, asked him what he thought of them. Winslow replied
that the principle of them was good, but that the agencies employed
were bad, and suggested certain substitutes (a spool and drum) for
them. "You don't know anything," was Goulding's first reply.
However, upon seeing an experiment, apparently at first successful,
made at his own mill on the basis of Winslow's idea, he exclaimed,
"Winslow, you have got it. I will give you $2,500 and half of what
we can make." But the experiment broke down in the process of
exhibiting it. Goulding then exclaiming, "Your plan isn't worth a
cent. I would not give a fig for it," left the mill. Upon further
conversation and consideration, Goulding saw merit in Winslow's
suggestions, and having made them practicable by an addition of his
own (the "traverser," whose effect was to wind the roving evenly on
the spool), he adopted them (instead of cans, the far less
convenient agency previously used) as two items of his far larger
improvement. As it turned out in the result, they proved
useful.
It appeared, however, and was so assumed by this Court, after a
very minute statement [
Footnote
1] in the terms of art of many details of the matter, that it
was only as an
auxiliary part of Goulding's invention that
they were of value, and that they did not make either the entire
invention or any one of its separate combinations.
Goulding went on continuously engaged in perfecting his
improvement till November, 1826, before the middle of which month
he filed his application for letters patent, and on the 5th
December he received them for the whole combined invention. None of
the devices described in his specifications were new, and the
claims were for combinations arranged in a manner set forth.
Page 74 U. S. 588
The patented improvement soon came into universal use, and
worked a revolution, both here and in Europe, in the art of
manufacturing fibrous yarns. It has not been improved, but remains
now what it was when the patent was granted.
The patent granted, as above mentioned, expired December 5,
1849. Goulding desired to make application for its renewal, but
through erroneous information given him by the Commissioner of
Patents, he failed to apply for the extension until too late for
the Commissioner legally to entertain his application, and the
patent expired accordingly, as already stated. Congress finally,
and after persistent efforts by Goulding, passed May 30, 1862, a
special act authorizing the Commissioner to entertain his
application for extension as though it had been made within the
time prescribed by law. This special act contained a proviso,
"That the renewal and extension shall not have the effect or be
construed to restrain persons who may be using the machinery
invented by said Goulding at the time of
the renewal and
extension, thereby authorized for continuing the use of the
same, nor subject them to any claim or damage for having so used
the same."
The patent was extended by the Commissioner August 30, 1862. The
patent having been reissued July 29, 1836, was again reissued in
June, 1864, having before this last date become vested in Jordan,
the complainant, to whom the reissue was made.
The proviso of the act authorizing a renewal and extension was
not recited in the reissued letters patent. But the certificate of
renewal and extension was made subject, in express terms, to the
proviso contained in the act. In this condition of things, the
Agawam Woolen Company, using certain machinery alleged to be the
same with that now patented to Jordan, he filed his bill against
them, praying for injunction, account, and other relief. The bill
put specific and categorical interrogatories in reference to the
fact of infringement. The defendants did not answer the
interrogatories as put. They only denied the use of any
machinery
Page 74 U. S. 589
"in violation and infringement of any rights of the plaintiff,
or that they are using, or have made, or sold, or used any machines
not protected or covered by the proviso in the act of
Congress,"
and putting it to the court to say whether they should make
further answer. The machinery which they did use they began to use
after the date of the extension (the company not being incorporated
at that date), but before the surrender and reissue of June,
1864.
With this implied admission of infringement, the answer put the
defense chiefly on four grounds:
First.
"This defendant denies that the said Goulding ever bestowed any
ingenuity upon the invention or improvement mentioned in either of
the letters patent aforesaid, and alleges that the improvements
therein described, were invented and applied by one Edward Winslow,
then of Dedham, from whom said Goulding first obtained knowledge of
the same, and fraudulently and surreptitiously obtained a patent on
the 15th day of December as aforesaid, for that which he well knew
was the invention of said Winslow, at and before the application by
him for a patent, as set forth in said bill."
Second. That at the time of Goulding's application for
a patent, the invention had been on sale and in public use with his
consent and allowance for a
long time, and that he
abandoned the same to the public. Sale and public use
for more
than two years prior to the application for a patent were not,
however, alleged in the answer.
Third. That the certificate on the reissued letters
patent of 1864 was not in conformity with the act of Congress and
did not contain the limitations or conditions as annexed to the
patent as extended and therefore that the reissued patent was
void.
Fourth. That the defendant's machinery, although built
subsequently to the date of the extension, yet having been in use
before and at the time of the reissuing of that patent in 1864, was
within the saving proviso of the act of Congress.
Page 74 U. S. 590
The court below decreed for the complainant, and the case was
now here on appeal by the other side.
Page 74 U. S. 592
MR. JUSTICE CLIFFORD delivered the opinion of the Court.
Patentees acquire, by virtue of their letters patent, if
properly granted and in due form, the full and exclusive right and
liberty of making, using, and vending to others to be used, their
respective inventions for the term of years
Page 74 U. S. 593
allowed by law at the time when the letters patent were issued.
Such exclusive right and liberty may be held and enjoyed by the
patentee throughout the entire term for which it is granted, or he
may assign the letters patent, by an instrument in writing, either
as to the whole interest or any undivided part thereof, or he may
grant and convey to another the exclusive right under the patent to
make and use, and grant to others to make and use, the thing
patented, within and throughout any specified district. [
Footnote 2]
Damages may be recovered by an action on the case for any
infringement of that exclusive right and liberty, or the party
aggrieved may in any case, at his election, bring his suit in
equity and pray for an injunction to prevent the violation of the
same; but the express provision is that all such actions, suits,
and controversies shall be originally cognizable, as well in equity
as at law, by the circuit courts of the United States or any
district court having the powers and jurisdiction of a circuit
court. [
Footnote 3]
Jurisdiction of such cases is exclusive in the circuit courts,
subject to writ of error and appeal to this Court as provided by
law; but the requirement is that the suit must be brought in the
name of the person or persons interested, whether patentees,
assignees, or as grantees, as aforesaid, of the exclusive right
within a specified locality. [
Footnote 4]
Present suit was in equity, and was founded on certain reissued
letters patent granted to the complainant on the twenty-eighth of
June, 1864, as the assignee, by certain mesne assignments, of John
Goulding, who was the original patentee and who, as alleged, was
the original and first inventor of the improvement. Original patent
was granted December 15, 1826, for the term of fourteen years, and
was, as alleged, for a new and useful improvement in the mode of
manufacturing wool and other fibrous materials; but the claims of
the specification were defective, and it was surrendered on that
account and reissued July 29, 1836, for the residue of the original
term.
Page 74 U. S. 594
Representations of the complainant were that the original
patentee, without any neglect or fault on his part, failed to
obtain by the use and sale of the invention a reasonable
remuneration for his time, ingenuity, and expenses employed and
incurred in perfecting the invention and introducing the same into
use within the time for which the patent was originally issued, and
that he failed also, by accident and mistake, to obtain an
extension of the patent before the expiration of the original
term.
Power of the Commissioner to renew and extend the patent having
expired, the allegation was that the original patentee applied to
Congress, and that Congress, on the thirtieth of May, 1862, passed
an act for his relief. Pursuant to that authority, the bill of
complaint alleged that the Commissioner, thereafter, on the
thirtieth of August in the same year, renewed and extended the
patent in due form of law for the further term of seven years from
and after that date, subject to the provisions contained in the act
conferring the authority.
Derivation of the title of the complainant is fully set forth in
the bill of complaint, but it is unnecessary to reproduce it, as it
is not the subject of controversy in this case. Possessed of a full
title to the invention by assignments, the complainant, as such
assignee, surrendered the letters patent, and the Commissioner, on
the twenty-eighth of June, 1864, reissued to him the original
patent, as extended under the act of Congress, for the residue of
the extended term.
Founded upon those letters patent, the bill of complaint alleged
that the assignor of the complainant was the original and first
inventor of the improvement therein described, and the charge is
that the corporation respondents, having full knowledge of the
premises, and in violation of the complainant's exclusive rights
and privileges, so acquired and secured, have, since the date of
the reissued letters patent, and without his license or consent,
made, used, and sold, and continue to make, use, and sell, in large
numbers, cards, jacks, and machinery, embracing and containing
mechanism substantially the same in principle, construction, and
mode
Page 74 U. S. 595
of operation as the improvement so acquired and owned by the
complainant.
Prayer of the bill of complaint was for an account and for an
injunction, and for such other and further relief as the nature and
circumstances of the case shall require.
Respondents appeared and filed an answer, and proofs were taken
by both parties, and they were heard in the circuit court upon
bill, answer, replication, and proofs, and a final decree upon the
merits was rendered for the complainant, and thereupon the
respondents appealed to this Court.
Numerous defenses were set up in the answer, but none of them
will be much considered except such as are now urged upon the
consideration of the Court.
The grounds of defense specially enumerated in the brief of the
appellants and urged in argument are as follows:
1. That the combinations set forth in the several claims of the
patent were first invented by the Edward Winslow, and that neither
of them was original with the assignor of the complainant.
2. That the invention, at the time the application for the
original patent was made, had been on sale and in public use with
the consent and allowance of the application for more than two
years, and that he had abandoned the same to the public.
3. That the reissued letters patent described in the bill of
complaint are void because they do not contain the limitations and
conditions expressed in the extended patent and were not issued in
conformity with the act of Congress passed for the relief of the
original patentee.
4. That the respondents' machinery, having been in use before
and at the time the patent in this case was granted, is within the
saving clause of the proviso in the said act of Congress.
I. Exception might well be taken to the first proposition upon
the ground that it is a departure from the special defense set up
in the answer, unless it can be admitted as included in the more
general allegation, denying that the
Page 74 U. S. 596
assignor of the complainant was the original and first inventor
of the improvement described in the patent.
Persons sued as infringers may plead the general issue in suits
at law, and may prove, as a defense to the charge, if they have
given the plaintiff thirty days' notice of that defense before the
trial, that the patentee was not the original and first inventor of
the thing patented; but the same section which authorizes such a
defense provides that whenever the defendant relies in his defense
on the fact of a previous invention, knowledge, or use of the thing
patented,
"he shall state in his notice of special matter the names and
places of residence of those whom he intends to prove to have
possessed a prior knowledge of the thing, and where the same had
been used. [
Footnote 5]"
Evidence to prove such a defense in a suit at law is not
admissible without an antecedent compliance with those conditions,
and the settled practice in equity is to require the respondent, as
a condition precedent to such a defense, to give the complainant
substantially the same information in his answer. Unless the
practice were so, the complainant would often be surprised, as the
rule of law is that the letters patent afford a
prima
facie presumption that the patentee is the original and first
inventor of what is therein described as his improvement, and if
the respondent should not be required to give notice in the answer
that proofs would be offered to overcome that presumption and
establish the opposite conclusion, very great injustice might be
done, as the complainant might rely upon that presumption and fail
to take any countervailing proofs. [
Footnote 6]
Better opinion is that the defense embraced in the first
proposition of the respondents is not admissible under that
allegation in the answer which denies that the assignor of the
complainant was the original and first inventor of the improvement.
Such a defense, if recognized at all in this case, must be admitted
under that part of the answer which was evidently framed for that
special purpose.
Page 74 U. S. 597
Substance and effect of those allegations are that the
respondents deny that the original patentee ever bestowed any
ingenuity upon the improvements, and they allege that the same were
invented and applied by one Edward Winslow, that the patentee first
derived knowledge of the invention from that individual, and that
the original patentee fraudulently and surreptitiously obtained the
patent for that which he well knew was the invention of his
informant.
No exception was taken to the answer in the court below, and in
that state of the case, the allegations of the answer that the
invention was made by a third person and not by the assignor of the
complainant may be regarded as a good defense, but it is quite
clear that the charge that the original patentee in this case
fraudulently and surreptitiously obtained the patent for that which
he well knew was invented by another, unaccompanied by the further
allegation that the alleged first inventor was at the time using
reasonable diligence in adapting and perfecting the invention, is
not sufficient to defeat the patent, and constitutes no defense to
the charge of infringement. [
Footnote 7]
Viewed in any light, the proposition amounts to the charge that
the invention was made by the person therein mentioned, and not by
the assignor of the complainant, and the burden to prove it is on
the respondents, not only because they make the charge, but because
the presumption arising from the letters patent is the other
way.
Application for a patent is required to be made to the
Commissioner appointed under authority of law, and inasmuch as that
officer is empowered to decide upon the merits of the application,
his decision in granting the patent is presumed to be correct.
[
Footnote 8]
Before proceeding to inquire whether or not that defense is
sustained by the proofs, it becomes necessary to examine
specifications and claims of the patent and to ascertain by a
comparison of the mechanism therein described with the
Page 74 U. S. 598
antecedent state of the art, the true nature, character, and
extent of the improvement.
Sets of carding machines, for the production of yarn from wool,
were well known, and in use before the invention of the original
patentee. They usually consisted, besides the spinning-jenny, of
three carding machines, called the first and second breaker, and
the finisher, but they could not be used to much practical
advantage, in connection with the jenny, without a separate
machine, called the billy, for splicing the rolls. Two jennies were
often used instead of one in that combination, and in some
instances two double carding machines were preferred instead of
three single machines.
Like the still older carding machine, the breaker had what was
called a feed table, and the wool, previously prepared by other
means, was placed on that table and was by that means fed to the
carding mechanism, and having passed through the carding apparatus
to the delivery end of the machine, was stripped from the device
called a doffer, and fell to the floor. The device for stripping
the filament from the doffer was a comb, which constituted a part
of the machine. Second breaker was similar in construction to the
first, and the process of feeding and carding was the same, but the
filament from the first breaker constituted the material to be used
in the second, instead of using wool prepared by hand, or from the
picker, and the filament when carded and stripped from the doffer,
was wound round a drum. The method of feeding the material into the
carding apparatus of the finisher was also the same, but it was
provided with an additional apparatus, at the delivery end of the
machine, called the roller and shell, which formed the material
into short rolls. Those rolls were about the length of the card
surface of the doffer. They were taken to the billy, and were there
spliced by hand, on the apron of that machine, and, as the apron
moved forward, they were fed to the spindles, and converted into
roving, suitable to be spun into yarn.
Goulding aimed to dispense with the billy altogether, and
Page 74 U. S. 599
sought to accomplish with four machines what had previously
required the use of five, and the evidence shows beyond controversy
that his invention enabled manufacturers to produce yarn from wool
at much less cost, of better quality, and in greater quantity than
was produced by the old process. His purpose also was to dispense
with short rolls and to introduce the long or endless roll in its
place. Years were spent by him in experiments to accomplish these
purposes, but the result was that he was successful. He dispensed
altogether with the billy and, by a new combination of old devices,
he obtained the endless roll and so perfected his machinery that he
could use it successfully from the moment the roving left the
delivery end of the first breaker till it was converted into yarn
fit to be manufactured into cloth.
Attempt will not be made to describe the various plans which he
formed, nor the experiments which he tried, as it would extend the
opinion to an unreasonable length. Under his method as described,
the wool, as it comes from the picker, is placed on the table of
the first breaker and is fed to the carding apparatus as before,
but the sheet of carded material, when stripped from the doffer, is
taken away on one side of the delivery end of the machine by means
of two rollers through a turning-tube, or pipe, to which a slow
rotary movement is given by a band passing from a drum, actuated by
the machine and operating upon a pulley affixed to the tube.
Description is also given of the means by which the roving or
sliver is condensed and wound round the bobbin, and also of the
means by which it is retained in the proper position and made to
partake of the rotary movement communicated to the drum. Particular
description is also given of the means by which the roving may be
evenly wound upon the bobbins, either by carrying it and the drum
backward and forward, or by passing it between guides affixed to a
bar to which a similar movement is communicated.
Next step is that the bobbins, with the roving thereon, twenty
in number at least, are placed in a frame or creel in
Page 74 U. S. 600
order that the roving may be fed to the second carding machine
and guided into it between certain dividing pins, but it is taken
away at the delivery end in a single roving, and by the same means
as from the first machine.
Principal object in passing the material through the second
breaker is that it may be more completely mixed, so that every part
of the roving will be of the same fineness. Third operation is that
the bobbins of roving, as delivered and wound in the second
breaker, are placed in a frame or creel similar to that before
described, but each roving is now to be kept separate, and certain
blocks are provided for that purpose, made broader in front than
behind, so that each roving shall preserve its proper situation,
without mingling with those adjacent to it, during the operation of
carding, and also that it may finally reach its proper place upon
the delivering cards.
The feeding of the material into the carding apparatus of the
finisher is accomplished in the same way as before described, but
the mechanism for carding and for delivering the roving is more
complex and widely different. Two delivering cylinders are
constructed, placed one above the other, surrounded with wire card,
in strips, with uncovered spaces of equal width, and so arranged
that the uncovered spaces on one cylinder shall correspond with the
strips of wire card on the other, for carding the separate rovings
as they are fed into the carding apparatus. Different mechanism is
also provided for removing the carded material from the delivering
cylinders, which is accomplished by the rotary action of the tubes
upon such material, by which the several filaments, as they are
delivered, are formed into a loose continuous roving, which is
guided between certain pins and passed through certain rollers in
order to give the roving a sufficient coherence before it is would
on to the bobbins, to be used in the jenny.
Means for slightly twisting the roving as it leaves the finisher
are also described, and the directions are that the guides of the
finisher must have a lateral motion backward and forward, so that
each roving may be regularly laid side by
Page 74 U. S. 601
side within its own proper limits, and the devices to accomplish
that function are fully described. Modifications were also made by
the inventor in the devices of the carding apparatus of the
finisher, and also in the apparatus for delivering the roving in
the third operation and for winding it on to the bobbins
preparatory to their transfer to the jenny, where the roving is
spun into yarn. Those modifications of old machinery are minutely
described in the specification, and it is obvious that they are of
great value in accomplishing the final result and that they
constitute some of the main features of the invention.
Changes were also made in some of the devices of the jenny, and
also in their arrangement and mode of operation as compared with
prior machines, and those alterations also are so clearly described
as to constitute a full compliance with the sixth section of the
patent act. Substitutes are suggested for many of the described
devices, but it is not practicable to enter into those details.
Separate parts of the machinery, as used in the several
combinations, are not claimed by the patentee. Omitting redundant
words the claims of the reissued patent are to the effect
following:
"First. I claim in combination the following sets of apparatus
making up a machine, namely: 1. a bobbin stand or creel; 2. bobbins
on which roving may be wound; 3. guides or pins; 4. a carding
machine; 5. condensing and drawing off apparatus; 6. winding
apparatus whereby rovings may be fed to a carding machine, carded,
condensed, drawn off and wound again in a condensed state,
substantially in the manner herein set forth."
"Second. I claim the feed rollers of a carding machine, in
combination with bobbins and proper stands therefor, and guides or
pins whereby slivers or rovings may be fed to be carded by
mechanism substantially such as herein described."
"Third. I claim a delivering cylinder of a carding machine in
combination with apparatus for drawing off, condensing, or twisting
and minding carded filaments by apparatus substantially such as
herein described."
"Lastly. I claim a mule or spinning frame provided with
Page 74 U. S. 602
spindles mounted on a carriage and with jaws or their
equivalents for retaining roving in combination with bobbins, whose
axes are parallel or nearly so with the line of spindles and rest
upon drums revolving to unwind the bobbins substantially as herein
set forth."
Careful attention to the description of the invention and the
claims of the patent will enable the parties interested to
comprehend the exact nature of the issue involved in the first
defense presented by the respondents. Purport of that defense is
that the invention was made by Edward Winslow, and not by the
assignor of the complainant. The settled rule of law is that
whoever first perfects a machine is entitled to the patent and is
the real inventor, although others may have previously had the idea
and made some experiments towards putting it in practice. He is the
inventor and is entitled to the patent who first brought the
machine to perfection and made it capable of useful operation.
[
Footnote 9]
No one is entitled to a patent for that which he did not invent
unless he can show a legal title to the same from the inventor or
by operation of law, but where a person has discovered an improved
principle in a machine, manufacture, or composition of matter and
employs other persons to assist him in carrying out that principle,
and they, in the course of experiments arising from that
employment, make valuable discoveries ancillary to the plan and
preconceived design of the employer, such suggested improvements
are in general to be regarded as the property of the party who
discovered the original improved principle, and may be embodied in
his patent as a part of his invention.
Suggestions from another made during the progress of such
experiments in order that they may be sufficient to defeat a patent
subsequently issued, must have embraced the plan of the improvement
and must have furnished such information to the person to whom the
communication was made that it would have enabled an ordinary
mechanic,
Page 74 U. S. 603
without the exercise of any ingenuity and special skill on his
part, to construct and put the improvement in successful
operation.
Persons employed, as much as employers, are entitled to their
own independent inventions, but where the employer has conceived
the plan of an invention and is engaged in experiments to perfect
it, no suggestions from an employee, not amounting to a new method
or arrangement, which, in itself is a complete invention, is
sufficient to deprive the employer of the exclusive property in the
perfected improvement. But where the suggestions go to make up a
complete and perfect machine, embracing the substance of all that
is embodied in the patent subsequently issued to the party to whom
the suggestions were made, the patent is invalid because the real
invention or discovery belonged to another. [
Footnote 10]
Guided by these well established principles, the first inquiry
is what was actually done by the person who, as alleged by the
respondents, was the real inventor of what is described in the
reissued letters patent? They do not pretend that he invented or
even suggested the entire invention nor all of the several elements
embraced in any one of the separate combinations as expressed in
the claims of the patent, and if they did, it could not for a
moment be sustained, as it finds no support whatever in the
evidence. None of the devices described in the specifications is
new, but the claims of the patent are for the several combinations
of the described elements arranged in the manner set forth and for
the purpose of working out the described results.
Regarded in that light, it is clear that the concession that the
person named did not invent nor suggest the entire invention, nor
any one of the separate combinations, is equivalent to an
abandonment of the proposition under consideration, as it is clear
to a demonstration that nothing short of that averment can be a
valid defense. Respondents do not
Page 74 U. S. 604
allege in the answer that the person named was a joint inventor
with the original patentee, but the allegation is that he made the
invention, and they deny that the assignor of the complainant ever
bestowed any ingenuity upon what is described in the letters patent
as his improvement. Such a defense cannot be successful unless it
is proved, as common justice would forbid that any partial aid
rendered under such circumstances, during the progress of
experiments in perfecting the improvement, should enable the person
rendering the aid to appropriate to himself the entire result of
the ingenuity and toil of the originator, or put it in the power of
any subsequent infringer to defeat the patent under the plea that
the invention was made by the assistant and not by the originator
of the plan.
The evidence shows that the original patentee was born in 1793,
and that he commenced working on machinery in his youth, while he
was with his father, and that as early as the year 1812 he went
into the employment of certain machinists residing at Worcester,
Massachusetts, who were engaged in constructing machinery for the
manufacture of wool and cotton. While in their employment, he began
experiments in woolen machinery. Those experiments were directed to
the object of improving the billy for the purpose of drawing out
the carriage more accurately and thereby making better work.
Several years were spent in that business, but in 1820 he went to
Halifax in that state and while there he made numerous experiments
to get rid of the billy entirely and to dispense with short rolls
and substitute long rolls in their place. He remained there three
years, and during that time he was constantly engaged in
experiments to accomplish those objects. In the spring of 1823 he
moved to Dedham, in the same state, and there hired a mill and
engaged in the manufacture of broadcloth, and also carried on the
machine business, and the witness also states that he then
prosecuted his experiments on a large scale.
Cans were used as a receptacle for the rovings delivered from
the doffers before the drawing-off and winding apparatus described
in the patent was invented. Rovings, before
Page 74 U. S. 605
that invention, were spun from cans instead of being wound upon
and spun from spools or bobbins. Considerable importance is
attached to the new method, as it was largely by that means that
the use of the endless roving was made practical and that the
difficulty produced by the kinking of the roving, incident to the
use of the cans, was overcome.
Theory of the respondents is that the new method of
accomplishing that function was invented by Edward Winslow, but
their witness, John D. Cooper, only testifies that he made or
suggested the spool and drum, which are not the only elements of
that apparatus. Unaccompanied by the traverser, they would perhaps
be better than the cans, but it is clear that the apparatus would
be incomplete without that device, as it is by that means that the
bobbins are evenly wound with the roving.
Testimony of that witness is that he first suggested to Winslow
that the roving must be would on a spool, else they never could
make good yarn, and he proceeds to state that they procured some
pasteboard, and that Winslow made a pattern for a spool and drum
from that material. Explanations in detail are given by the witness
of the several steps taken by them in accomplishing the change in
the apparatus, and the witness states that the original patentee
never saw the spool and drum until he came into the mill and saw
those devices in the machine. Argument for the respondents is that
the spool and drum were invented by that party while he was in the
employment of the original patentee, but the complainant denies the
theory of fact involved in the proposition and insists that the
statement of the witness are untrue and that he is not entitled to
credit. Further statement of the witness is that the improvement,
as soon as it was perfected, was applied to all the carding and
spinning machines in the mill, and that the mills, so adjusted as
to embrace that improvement, were put in successful operation
during the summer and autumn of that year.
Two answers are made by the complainant to the defense founded
on that testimony, both of which are sustained by
Page 74 U. S. 606
the court.
1. Suppose the testimony of the witness to be all true, the
complainant contends that it is not sufficiently comprehensive to
support the allegations of the answer, nor even to support the
proposition presented in the brief of the respondents. Taken in the
strongest view for the respondents, the testimony merely shows that
Winslow, or the witness Cooper, or both together, after the
originator of the plan had nearly completed his great and valuable
improvement and while he was still prosecuting his experiments with
the utmost diligence, suggested the spool and drum as substitutes
for the cans, and that Winslow actually made those devices, and,
with the aid of witness, put them into one of the machines as an
experiment. When their employer first examined the arrangement,
rude as it was, he expressed great satisfaction with it, but upon
seeing it tried he pronounced it of no value. Neither of those
opinions, however, turned out to be quite correct, as, upon further
trial, when better adjusted, and by adding the traverser, so that
the contrivance would wind the roving evenly on the spool, it
proved to be a useful auxiliary part of the invention.
Valuable though it was and is as aiding in the accomplishment of
the desired result, it is nevertheless a great error to regard it
as the invention described in the subsequent patent or as such a
material part of the same that it confers any right upon the party
who made the suggestion to claim to be the inventor, or a joint
inventor, of the improvement, or to suppose that the proof of what
was done by that party can constitute any defense, as against the
owner of the patent, to the charge of infringement.
Second answer to the defense founded on that testimony is that
the testimony is unreliable because the witness is not entitled to
credit. Hundreds of pages of the transcript are filled with proof
introduced either to assail or support the credit of that witness,
but the Court is of the opinion that it is not necessary to enter
into those details, as the decision must be in favor of the
appellee even if every word stated by that witness is taken to be
true. Entirely satisfied with our conclusion upon the merits, we
are the less inclined
Page 74 U. S. 607
to enter into those details as a full analysis of the proofs
within reasonable limits would be impracticable; but it is proper
to say that the proofs have been carefully examined, and it is the
opinion of the Court that the letters patent in this case cannot be
held to be invalid upon such testimony.
II. Second defense, as stated in argument, is that the
invention, at the time the application for the original patent was
made, had been on sale and in public use with the consent and
allowance of the applicant for more than two years, and that the
applicant abandoned the same to the public. Abandonment, as set up
in the concluding paragraph of the proposition, is a distinct
defense from that set up in the preceding part of the same
proposition, and must be separately considered.
Sale and public use for more than two years prior to the
application for the patent are not alleged in the answer. What the
respondents do allege is that the invention, at the time the
application for a patent was filed and for a long time before, had
been on sale and in public use, which, without more, is not a good
defense against the charge of infringement. On the contrary, the
correct rule is that no patent shall be held to be invalid on
account of such sale and public use except on proof that the
invention was on sale and in public use more than two years before
the application therefor was filed in the Patent Office. [
Footnote 11]
Evidence to show that the invention of the original patentee, as
finally perfected, was on sale and in public use more than two
years before he applied for a patent is entirely wanting, and if
such evidence was offered, it could not be admitted under the
pleadings, as no such defense is set up in the answer. [
Footnote 12]
Undoubtedly an inventor may abandon his invention and surrender
or dedicate it to the public, but mere forbearance to apply for a
patent during the progress of experiments and until the party has
perfected his invention and tested
Page 74 U. S. 608
its value by actual practice, affords no just grounds for any
such presumption. [
Footnote
13]
Application for a patent in this case was probably filed in the
Patent Office before the middle of November, 1826, and the proofs
are full and satisfactory to the Court that the inventor, up to
that time, was constantly engaged in perfecting his improvements
and in making the necessary preparations to apply for a patent.
III. Third defense is that the reissued letters patent are void
because they were not issued in conformity with the act of Congress
relating to that subject. Omission of the original patentee
seasonably to apply for an extension of his patent was occasioned
through erroneous information given to him by the Commissioner, and
not from any negligence or fault of his own. Acting upon
information from that source, the inventor did not file his
application until it was too late to give the notices as required
by law, and the time for presenting such an application having
expired, the Commissioner had no power to grant his request.
Deprived of any legal remedy under the general laws for the
protection of inventors, he applied to Congress, and on the
thirtieth of May, 1862, Congress passed an act for his relief.
[
Footnote 14]
By the terms of that act, he was authorized to apply to the
Commissioner for a renewal and extension of the letters patent
previously granted to him for the term of seven years from the time
of such renewal and extension, and the Commissioner was empowered
to grant such renewal and extension or to withhold the same under
the then existing laws in the same manner as if the application
therefor had been seasonably made. Annexed to the body of the act
is a proviso that such renewal and extension shall not have the
effect or be construed to restrain persons using the invention, at
the time of such renewal and extension, from continuing the use of
the same, nor to subject them to any claim or damage for having
used such machinery.
Page 74 U. S. 609
Objection now taken is that the said proviso in the act of
Congress is not recited in the reissued letters patent; but the
objection is entirely without merit, as it appears in the record
that the certificate of renewal and extension, as granted by the
Commissioner, was made subject in express terms to the proviso
contained in that act.
Doubts are entertained whether even that was absolutely
necessary, but it is clear that there is nothing in the proviso to
warrant the conclusion that the form of the extended patent might
not be the same as that in general use, and it is not even
suggested that the form of the extended or reissued patent was in
any respect different from the corresponding established forms of
the Patent Office.
IV. Fourth defense is that the respondent's machinery was in use
before the patent in this case was granted; but it is not alleged
that their machinery was in use before the extended patent was
issued, and therefore the allegation affords no defense to the
charge of infringement. [
Footnote 15]
Other defenses are mentioned in the brief of the respondents,
but none of them was urged in argument and they must be considered
as abandoned.
V. Infringement is an affirmative allegation made by the
complainant, and the burden of proving it is upon him unless it is
admitted in the answer. Specific inquiries were made of the
respondents in this case, and they did not satisfactorily answer
those interrogatories. Evasive answers under such circumstances, if
not positively equivalent to admissions, afford strong presumptive
evidence against the respondents. Apart from that, however, the
answer of the respondents is unsatisfactory in other respects. They
do not in terms deny that they have used and are using the
invention as alleged, but what they do deny is that they use any
machinery in violation and infringement of any rights of the
complainant or that they are using or have made, used, or sold any
machinery not protected by the
Page 74 U. S. 610
proviso contained in the act of Congress passed for the relief
of the original patentee.
Clear implication from the answer is that they had made
machinery such as that described in the letters patent, and if so,
then they are clearly liable as infringers, as they were not
incorporated at the date of the extended patent. Machines made
since the patent was extended are not protected by that proviso, as
is plain from its language, but the complainant cannot recover
damages for any infringement antecedent to the date of the reissued
patent, as the extended patent was surrendered.
Proofs of the complainant to show infringement consist in a
comparison of the machines made by the respondents with the
mechanism described in the patent, and in the testimony of
scientific experts, and they are so entirely satisfactory that it
is not deemed necessary to pursue the investigation.
Decree affirmed.
[
Footnote 1]
See it infra, pp. <|74 U.S. 598|>598, <|74
U.S. 603|>603.
[
Footnote 2]
5 Stat. at Large 119, 121.
[
Footnote 3]
Ib., 123, 124.
[
Footnote 4]
Ib., 124.
[
Footnote 5]
Wilton v. Railroad, 1 Wall.Jr. 195.
[
Footnote 6]
Teese v.
Huntingdon, 23 How. 10.
[
Footnote 7]
5 Stat. at Large 123;
Reed v. Cutter, 1 Story 599.
[
Footnote 8]
Pitts v. Hall, 2 Blatchford 229;
Union Sugar
Refinery v. Matthiessen, 2 Fisher, 600.
[
Footnote 9]
Washburn v. Gould, 3 Story 133.
[
Footnote 10]
Pitts v. Hall, 2 Blatchford 234;
Allen v.
Rawson, 1 Manning, Granger & Scott 574;
Alden v.
Dewey, 1 Story 338; 1 Webster's Patent Cases 132, note
e; Curtis on Patents, 3d ed. 99;
Reed v. Cutter,
1 Story 599.
[
Footnote 11]
5 Stat at Large 354;
McClurg v.
Kingsland, 1 How. 209;
Stimpson
v. Railroad, 4 How. 380.
[
Footnote 12]
Foster v.
Goddard, 1 Black 518.
[
Footnote 13]
Kendall v.
Winsor, 21 How. 322;
Pennock v.
Dialogue, 2 Pet. 1.
[
Footnote 14]
12 Stat. at Large 904.
[
Footnote 15]
Stimpson v.
Railroad, 4 How. 380.
