1. The action of the Commissioner of Patents in granting letters
patent does not conclude the question whether there was not an
abandonment. A person charged with infringing them, may show that
before they were issued the patentee had abandoned his invention.
The intention to abandon may be manifested otherwise than by
words.
2. There may be an abandonment after or before an application
for letters has been made and rejected, or withdrawn.
3. An inventor must comply with the statutory conditions. He
cannot without cause hold his application pending during a long
period of years, leaving the public uncertain whether he intends
ever to prosecute it.
4. The facts concerning the application for letters patent No.
138,462 granted to Joseph P. Woodbury April 29, 1873, for an
alleged new and useful improvement in planing machines, stated. It
appears among other things that it was rejected and nothing done
thereafter for many years; that he meanwhile obtained other
letters, and knew that thousands of planing machines containing his
alleged invention were manufactured, sold, and used in the United
States.
Held that his inaction, delay, and silence for
more than sixteen
Page 101 U. S. 480
years were such as encouraged such manufacture and sale of it,
and that the circumstances showed his abandonment of it.
6. The rule in the Patent Office, which, previous to the revised
Patent Act of July 8, 1870, provided that "an application rejected,
or not prosecuted, within two years after its rejection or
withdrawal, should be conclusively presumed to have been
abandoned," being at most only a rule of practice adopted by that
office and not always enforced, was no bar to a movement by an
inventor to have his application reinstated after its withdrawal.
He might have filed a new one or applied for a reexamination or
appealed, and the existence of the rule is not an adequate excuse
for conduct which the court considered as manifesting an
abandonment of his invention.
6. The invention of a planing machine having a solid bed of no
particular form or specified thickness and not requiring to be
constructed in one piece, is anticipated by a machine for cutting
and planing light material, having in other respects the same
devices and a solid bed adequate for the purposes for which it was
intended. The fact that the bed of the latter is divided by a slit
running longitudinally from one end to the other, yet arranged so
as to constitute one bed, makes no difference. A machine remains
the same in principle, although one or all of its constituents be
enlarged and strengthened so as to perform heavier work.
7. Section 4920, Revised Statutes, declares that the proofs of
previous invention, knowledge, or use of the thing patented, may be
given upon notice in the answer of the defendant, stating the names
of patentees, the dates of their letters patent and when granted,
and the names and residences of the persons alleged to have
invented or to have had the prior knowledge of the thing patented,
and where or by whom it had been used.
Held that only the
names of those who had invented or used the anticipating machine or
improvement, and not of those who are to testify touching its
invention or use, are required to be set forth.
8. The Court, upon the whole case, decides that said Woodbury
was not the original and first inventor of the improvement for
which he obtained said letters patent No. 138,462, and that if he
was, he had abandoned it to the public before they were issued.
The facts are stated in the opinion of the Court.
MR. JUSTICE STRONG delivered the opinion of the Court.
The bill of The Woodbury Patent Planing Machine Company, the
appellant, is founded upon letters patent granted to Joseph P.
Woodbury on the 29th of April, 1873, for an alleged "new and useful
improvement in planing machines," numbered 138,462. The
specification declares the object of the improvement
Page 101 U. S. 481
to be presenting the material to the cutter in such a manner as
both to counteract, as far as practicable, the fluttering or tremor
caused by the successive blows of the knives, and the consequent
wavy and uneven surface of the planed work, and at the same time to
overcome more perfectly than theretofore the tendency in the knives
of the rotary cutter to loosen and dislodge the knots and shakes,
and to tear the fibers of the wood irregularly, instead of severing
them smoothly along the exact surface desired. To accomplish this
two-fold object the patentee proposed to make use of what he
denominated "a yielding pressure bar," made of such material, and
of such mass, as to be rigid from end to end, with its under face
flat, so that it may have an extended bearing upon the work
longitudinally of the machine, and mounted upon springs, so as,
within certain limits, to accommodate itself to the varying
irregularities in the surface of the material operated upon. The
specification then proceeds to state the patentee's supposed
advantages of the alleged invention, and to describe, by reference
to drawings, the patented device. The claims are four, all for
combinations. They are as follows:
1. The combination of a rotary cutter and a yielding pressure
bar or bars substantially as and for the purpose described.
2. The combination of a solid bed and a yielding pressure bar or
bars for the purpose of holding down the material while being acted
on by the cutter, substantially as set forth.
3. The combination of a solid bed, a rotary cutter, and a
yielding pressure bar or bars, substantially as described.
4. The combination of the two pressure bars, one of which is
supported upon arms, and the other upon springs, substantially as
and for the purpose set forth.
It is this use of yielding pressure bars in the combination
which constitutes principally, if not wholly, the novelty of the
device described in the patent. Planing machines with a solid bed,
rotary cutter, and devices for receiving and transmitting the power
had been known and in use long before Woodbury claimed to have made
his invention. The Woodworth planing machine, substantially the
first of the class, had all these in combination, and in the same
combination as they are found in the machine to which Woodbury
applied his yielding bars, but
Page 101 U. S. 482
instead of bars Woodworth used rollers to keep firmly in
position the wood to be planed. Woodbury merely substituted bars
for rollers. No doubt the substitution was an improvement. It
enabled the pressure upon the wood to be brought nearer to the
cutters than it could be in the Woodworth machine. It had a more
extended bearing, and therefore held the material more steady under
the action of the knives or cutters, and the bars, perhaps, were
less likely to be clogged by the chips cut in the operation of the
machine.
On the 2d of March, 1874, the patentee sold and assigned his
letters patent to the complainant, and it brought this suit against
the defendant for an alleged infringement.
The answer of the defendant denies any infringement and attacks
the validity of the Woodbury patent for several reasons, any one of
which, if sustained, must bar the relief which the complainant
seeks. It is denied that Woodbury was the first and original
inventor of the improvement claimed, and it is averred that the
invention described in his patent had been publicly known and used
for more than two years before his application for a patent was
made, and that before that time his invention had been abandoned to
the public. The answer contains other averments, which we think it
unnecessary to set forth, because the controlling questions are,
whether the device of Woodbury was the first and original
invention, and whether, if it was, it was abandoned to the public
before he obtained his patent.
Before proceeding to the consideration of the several defenses
set up, it will be convenient to refer briefly to the history of
Woodbury's alleged invention. Though the patent was not granted
until 1873, the earliest application for it was made on the 3d of
June, 1848. The invention appears to have been completed in the
latter part of the year 1846, a caveat for it having been forwarded
to the Commissioner of Patents, as early as the 28th of May of that
year. The petition for the patent authorized and empowered J. James
Greenough, as attorney for the petitioner, to alter or modify the
specification as he might deem expedient, and also to receive back
any moneys which the petitioner might be entitled to withdraw, and
to receipt for the same. Greenough, however, was not empowered to
withdraw the application.
Page 101 U. S. 483
On the 20th of February, 1849, the application for a patent was
rejected in the Patent Office, and no serious attempt appears to
have been made to procure a reexamination or to renew it for a
period of more than twenty years, though during more than sixteen
years of that time the improved device had been in common use. In
October, 1852, Greenough, the applicant's attorney, formally
withdrew the application, and received back $20, of which, however,
Woodbury had no notice at the time. The attorney had no sufficient
authority to withdraw the application, though he had to withdraw
the fee. In 1854, five years after the application had been
rejected in the office, Woodbury instructed Mr. Cooper, another
patent solicitor who was acting for him in another case to call up
and prosecute anew his rejected application. This however was not
done. Mr. Cooper, it seems probable, was deterred from taking any
action in regard to the matter, by a rule which, at that time, he
thought was generally enforced in the Patent Office,
viz.,
that an application rejected or not prosecuted within two years
after its rejection or withdrawal should be conclusively presumed
to have been abandoned. This rule was not always enforced, and it
was reversed by the commissioner in 1869, and in the revised patent
act of 1870, Congress enacted:
"That when an application for a patent has been rejected or
withdrawn, prior to the passage of this act, the applicant shall
have six months, from the date of such passage, to renew his
application, or to file a new one, and if he omit to do either, his
application shall be held to be abandoned. Upon the hearing of such
renewed applications, abandonment shall be considered as a question
of fact."
It was within six months after the passage of this act that
Woodbury renewed his application, upon which the patent was
granted.
In view of this history, and of the other facts appearing in the
case, the question is a grave one, whether the invention, even if
Woodbury was the first inventor, was not abandoned by him before
his renewed application was made.
It is quite certain that the action of the commissioner granting
the patent in 1873 is not conclusive of the question whether there
had not been an abandonment. Under the 35th section of the act of
1870, abandonment is declared to be a question of
Page 101 U. S. 484
fact. The rule of the Patent Office, though not always adhered
to, had held it to be a question of law, in the cases to which it
was applied, and the effect of the statute was rather to change the
rule than to make the decision of the commissioner granting a
patent, an unreviewable decision that the invention had not been
abandoned. In fact, the commissioner may not be called upon to pass
upon that question. No evidence respecting it may be before him,
except mere lapse of time, and he has not generally the means of
ascertaining what the action of an applicant for a patent has been,
outside of the Patent Office. It surely cannot be claimed that
patents obtained under the provisions of the 35th section of the
act are any more unimpeachable than those referred to in the 24th
section. By that section, the commissioner is authorized to deal
with the question whether the invention has been abandoned, as well
as with the question whether it was in public use or on sale more
than two years prior to the application. Yet both these matters, as
well as the originality of the invention, upon which the
commissioner must pass, may be contested in suits brought for
infringement of the patent. Such defenses are allowed by the
statute. It must, then, be open to every person, charged with an
infringement, to show in his defense that the patentee had
abandoned his invention before he obtained his patent.
It has sometimes been said that an invention cannot be held to
have been abandoned, unless it was the intention of the inventor to
abandon it. But this cannot be understood as meaning that such an
intention must be expressed in words. In
Kendall v.
Winsor, 21 How. 322, this Court said
"it is the unquestionable right of every inventor to confer
gratuitously the benefits of his ingenuity upon the public, and
this he may do either by express declaration or by conduct equally
significant with language; such, for instance, as an acquiescence
with full knowledge in the use of his invention by others; or he
may forfeit his rights as an inventor by a willful or negligent
postponement of his claims."
To the same effect is
Shaw v.
Cooper, 7 Pet. 292. These were cases, it is true,
where the alleged dedication to the public, or abandonment, was
before any application for a patent, but it is obvious there may be
an abandonment as well after such an application has been made
Page 101 U. S. 485
and rejected, or withdrawn, as before, and evidenced in the same
manner. In
Adams v. Jones, 1 Fish.Pat.Cas. 527, Mr.
Justice Grier said,
"a man may justly be treated as having abandoned his application
if it be not prosecuted with reasonable diligence. But involuntary
delay, not caused by the laches of the applicant, should not work a
forfeiture of his rights."
The patent law favors meritorious inventors by conditionally
conferring upon them for a limited period exclusive rights to their
inventions. But it requires them to be vigilant and active in
complying with the statutory conditions. It is not unmindful of
possibly intervening rights of the public. The invention must not
have been in public use or on sale more than two years before the
application for a patent is made, and all applications must be
completed and prepared for examination within two years after the
petition is filed, unless it be shown to the satisfaction of the
commissioner that the delay was unavoidable. All this shows the
intention of Congress to require diligence in prosecuting the
claims to an exclusive right. An inventor cannot without cause hold
his application pending during a long period of years, leaving the
public uncertain whether he intends ever to prosecute it, and
keeping the field of his invention closed against other inventors.
It is not unfair to him, after his application for a patent has
been rejected, and after he has for many years taken no steps to
reinstate it, to renew it, or to appeal, that it should be
concluded he has acquiesced in the rejection and abandoned any
intention of prosecuting his claim further. Such a conclusion is in
accordance with common observation. Especially is this so when,
during those years of his inaction, he saw his invention go into
common use, and neither uttered a word of complaint or
remonstrance, nor was stimulated by it to a fresh attempt to obtain
a patent. When in reliance upon his supine inaction the public has
made use of the result of his ingenuity, and has accommodated its
business and its machinery to the improvement, it is not unjust to
him to hold that he shall be regarded as having assented to the
appropriation, or, in other words, as having abandoned the
invention.
There may be, it is true, circumstances which will excuse delay
in prosecuting an application for a patent, after it has
Page 101 U. S. 486
been rejected, such as extreme poverty of the applicant, or
protracted sickness. Of such cases we are not now speaking. None of
these ordinary and accepted reasons for Woodbury's inaction during
the more than sixteen years that elapsed between 1854 and his
presentation of the new petition upon which his patent was granted,
are found in this case.
His first application, as we have seen, was rejected on the 20th
of February, 1849, and he was then informed from the Patent Office
that he could "withdraw or appeal." Nothing, however, was done
until Oct. 4, 1852, when his attorney withdrew the application and
received back $20. True, the attorney was not empowered to withdraw
the application, and it does not appear that Woodbury was then
informed it had been withdrawn, but he was informed that the
application had been rejected, and he gave no instructions to do
anything more in the case, though instructions were asked, and
though he was frequently in communication with his attorney, who
obtained for him another patent on the 20th of March, 1849. The
rejected application was suffered to rest until Feb. 27, 1854, when
Woodbury wrote to Mr. Cooper, another attorney, informing him that
he had a rejected application, filed in June, 1848, for an
improvement in pressure with the rotary cutter, and asking him to
call up the case and get a patent for the most he could. Mr. Cooper
made application for copies of the drawings and specification and
for the letter of rejection, after having been informed that the
application for the patent had been withdrawn; but nothing further
was done except that Cooper informed Woodbury the application had
been withdrawn by his former attorney. Thus the matter rested.
Cooper's connection with it ceased in September, 1854. No effort
was made in the Patent Office to have the rejected application
reinstated, though such an effort must have been successful had it
been made, and apparently Woodbury acquiesced alike in the
rejection and in the withdrawal, until December, 1870, when his new
application was made. During all this time he was in frequent
communication with the Patent Office, prosecuting, and
successfully, other applications for patents. He was not pressed by
poverty to such an extent as to hinder his renewal of his
application. This is shown by
Page 101 U. S. 487
direct evidence, and by the fact that he had means to sue for
and obtain other patents. Nor was he unwarned of the danger of
delay. Very soon after 1854, if not before, the use of planing
machines containing pressure bars in combination with rotary
cutters and a solid bed, was general. The defendant's answer
asserts that before Dec. 5, 1870, and since the withdrawal of
Woodbury's rejected application, many thousand planing machines,
containing his invention, had been constructed, sold, and used in
the United States, and this assertion is accepted in the
appellant's brief. This fact must have been known by him. Upon this
subject the evidence is very full. As we have seen, the distinctive
element of Woodbury's invention was the substitution of yielding
pressure bars for the rollers employed in the Woodworth patent. A
machine patented to Joseph E. Andrews in 1845 had those pressure
bars, and Woodbury was engaged for years in selling those machines.
Between 1852 and 1854, three Cornell machines of the Woodworth
patent, rotary cutter, yielding pressure bars combined with a solid
bed were used by John F. Keating in his shop at Boston. Mr.
Woodbury was repeatedly there while they were in use, and examined
them, but he never suggested that he had any claim to the use of
pressure bars in planing machines. There is ample evidence also
that hundreds of other machines containing the same device were
manufactured and sold in Boston between the years 1854 and 1870,
and were frequently seen by Mr. Woodbury, calling forth no remark
from him indicating that they were invasions of his rights. In view
of all this, it is of little importance that from time to time he
expressed a hope to his brother, and, perhaps, occasionally to some
others, that he should some time, and in some way, obtain a patent.
Such was not his language to the public. His inaction, his delay,
his silence, under the circumstances, were most significant. Though
not express avowals of abandonment, "to reason's ear they had a
voice" not to be misunderstood. They spoke plainly of acquiescence
in the rejection of his application for a patent. They encouraged
the manufacture and sale of his invention.
And there is no sufficient explanation of Mr. Woodbury's
conduct, nothing which can be regarded as an adequate excuse
Page 101 U. S. 488
for it. The rule of the Patent Office was not a statutory rule.
It was at most only a rule of practice in the office, and it was
not inflexible. The action of the office exhibits many instances in
which departures from it were made before the act of Congress of
1870 was passed, and even before Mr. Fisher, the Commissioner of
Patents, abolished it. (Case of J. W. Cochran, Commissioner's
Decisions, 1869.) If Woodbury did not intend to acquiesce in the
rejection of his application, the rule was no bar to a movement by
him to have it reinstated after its withdrawal. So he might have
applied for a reexamination, or might have appealed, or might have
filed a new one. Thus, he would have given notice that he did not
intend to give up his invention to the public.
There is a wide difference between this case and
Smith v.
Goodyear Dental Vulcanite Co., 93 U. S.
486. In the latter case, it appeared that after three
successive rejections, the last in 1856, the application was never
withdrawn nor any portion of the fee claimed. Still the applicant
did not remit his efforts. He was in ill health and wretchedly
poor. But he continued to assert his expectations of ultimately
obtaining a patent; made frequent applications to his friends for
advances to enable him to prosecute his claim; attempted to appeal;
until finally, in 1864, eight years after the third rejection, the
patent was obtained. The patentee had never relaxed his vigilance.
He had left nothing undone which he could. He had kept his flag
constantly flying. Nobody had been encouraged by any act or
inaction of his to appropriate his invention. His patent was
therefore sustained, and sustained only because he had been guilty
of no laches. The conduct of Woodbury was in striking contrast with
that we have described, and which is described more fully on page
491 of the report.
We are constrained, therefore, to hold that Woodbury's invention
was abandoned by him before he obtained his patent.
We also concur in opinion with the circuit court that the
machine built by Alfred Anson, at Norwich, Connecticut, in 1843,
anticipated Woodbury's invention. That machine was never patented,
though an attempt was made to obtain a patent for it. On the 16th
of August, 1843, Anson applied for a patent for what his
specification denominated "a new and useful
Page 101 U. S. 489
improvement in the construction of the stocks of rotating
cutters for dressing and cutting window sash stuff, &c." The
specification was accompanied by a model and drawings in
perspective and in detail. His application, however, was rejected,
and on the 20th of August, 1844, he withdrew it and received back
$20. We have before us the specification, drawings, and model, and
what is better, we have the original machine, with the testimony of
its builder to identify it. That testimony, as well as that of
other witnesses, proved clearly that the machine had at first, as
it has now, all the elements in combination which compose the
combinations claimed in the Woodbury patent. It had a rotary
cutter. It had a solid bed under the cutter on which the material
to be operated upon was placed, and over which it was moved and fed
to the cutters by an endless chain. It had two yielding pressure
bars instead of rollers, adjusted by means of weights, to keep the
material down on the bed, and so arranged as to cause the pressure
to be felt nearer to the cutter's edge than it could be brought to
bear by pressure rollers. The yielding pressure was effected by
weights, and not by springs, as in the Woodbury machine, but these
are plainly mechanical equivalents for each other.
Passing, for the present, consideration of the admissibility of
the evidence respecting the Anson machine, which we will notice
hereafter, we proceed to observe what it proves.
The machine was built and set up in the shop of Mr. Shepard, a
sash and blind maker, at Norwich, in 1843. It has been in operation
there ever since, until it was taken out to be made an exhibit in
this case -- a period of more than thirty years. Some slight
changes have been made in it, but none in the combination
described. The evidence leaves no doubt in our minds that the
pressure bars were arranged so as to be yielding, in accommodation
to the uneven surfaces of the material to be shaped or planed, and
that they were intended to be so arranged for such uses. Anson
himself testifies that he put in the pressure bars because he could
get these nearer the cut of the cutters than he could a roller; and
in his specification filed in the Patent Office he stated,
"the stuff is also kept steady by means of a bar passing from
the stands M and N, which bar may be raised or depressed in the
same manner and simultaneously
Page 101 U. S. 490
with the shafts which hold the cutters by means of the
screws."
He testifies also that he made the front bar with a rounded
front for the purpose of receiving the stuff, and that, driving the
stuff under it, it would yield and the weights below would keep the
stuff steady when it came to the cutters. Moreover, an inspection
of the machine is sufficient to convince us that the bars are
yielding, within certain limits, capable of adjustment to any
varying thickness of the stuff to be operated upon.
The appellant contends that the Anson machine fails to be an
anticipation of the Woodbury invention because, as they say, it has
no solid bed. It plainly has, however, a solid bed, adequate for
the purposes for which the machine was intended and used, for
cutting and planing light material, sash, and blinds, and the bed
is sufficiently solid for such uses. It may be admitted it would be
too weak for general planing work upon boards or plank. It is
comparatively a small machine. It would not cease to be the same
machine, in principle, if any one or all of its constituents were
enlarged or strengthened, so that it might perform heavier work.
True, the bed is divided by a slit running longitudinally from one
end to the other; but the two parts are arranged so as to
constitute one bed, and it is not perceived why, if enlarged, it
would not answer all the purposes of the Woodbury machine. Mere
enlargement is not invention. The simplest mechanic can make such a
modification. Woodbury's patent claims no particular form of a bed.
It does not require the bed to be of any specified thickness or
constructed in one piece. Its purpose is to furnish a firm and
unyielding support to the material when passing under the cutter,
and that may be done as well by constructing the bed of two parts
as of one. An anvil composed of two pieces is not the less an
anvil, a solid block to resist the blows of a hammer. A solid
foundation of a house may be composed of more than one stone. We
cannot but think this objection to the Anson machine as an
anticipating device is entitled to no weight.
Secondly, the appellant contends that the machine has no such
pressure bars as are shown and described in the Woodbury patent.
This objection we have already considered, perhaps as
Page 101 U. S. 491
fully as need be. There is, it is true, a formal difference, but
it is merely formal. The distinguishing feature of the patent is
yielding pressure bars in combination with two other elements. The
Anson machine has those in the same combination. In both the
machines they are substitutes for rollers, and intended to secure
like advantages over the Woodworth patent -- namely while keeping
down the stuff on the bed of the machine, to bring the downward
pressure nearer to the line of the cut. If, in the Woodbury
machine, the bars enable that pressure to be brought nearer than it
is in the Anson (which is not apparent), the difference is only in
degree of approximation. Such a difference would be effected in the
Woodworth machine by simply changing the diameter of the
rollers.
The third principal objection urged by the appellant is that the
Anson machine fails as a whole to perform the functions of the
Woodbury machine. If by this is meant that heavy plank cannot be
planed by it, the objection is well taken. For such a purpose it
would need enlargement and strengthening; but that all the elements
claimed for the patentee's combination are found in it, producing
the same results, differing only in degree if at all, is to us very
apparent.
Upon the whole, after having studied carefully the evidence and
the exhibits, we cannot doubt that every element found in the
Woodbury machine, everything that was claimed by the patentee,
existed in the same combination in the Anson machine, which was
constructed and in full operation more than two years before
Woodbury claims to have made his invention. Woodbury was not,
therefore, the first and original inventor.
As the Anson machine has been in use, unchanged in the
principles of its construction, from 1843, until it was taken from
the shop to be made an exhibit in this case, it is not to be thrown
aside as an abandoned experiment.
We have considered the case thus far, assuming that the Anson
machine and all the testimony of witnesses respecting it is proper
to be considered. The appellant objects, however, that most of the
evidence is inadmissible, because the names of the witnesses called
to sustain this defense of anticipation were not given in the
answer. Section 4,920 of the Revised Statutes declares, that the
proofs of previous invention, knowledge,
Page 101 U. S. 492
or use of the thing patented, may be given upon notice in the
answer of the defendant, stating the names and residences of the
persons alleged to have invented, or to have had the prior
knowledge of the thing patented, and where and by whom it had been
used. The statute does not declare that the names of the witnesses,
who may be called to testify to such prior invention or use, shall
be stated in the answer. It is only the names and residences of the
persons alleged to have invented or to have had prior knowledge of
the thing patented that are required.
The defendant's answer in this case, as amended, set out
"that said alleged invention, described and claimed as new in
the letters patent mentioned in the bill, or a substantial or
material part thereof, was, before the alleged invention thereof by
Woodbury, used by Alfred Anson, formerly of Norwich, and said use
was known to Noah L. Cole, of said Norwich, said use being at said
Norwich, in the State of Connecticut."
Anson and Cole were both examined and testified, without any
objection to their competency because of want of notice. Hence it
is too late to object to their testimony now. Had objection been
taken at the time, the answer might have been amended.
Graham
v. Mason, 5 Fish.Pat.Cas. 6, per Mr. Justice Clifford;
Brown v. Hall, 3
id. 531;
Phillips
v. Page, 24 How. 164;
Roemer v. Simon,
95 U. S. 214,
95 U. S.
220.
A number of other witnesses were examined relative to the
history of the Anson machine and to show that no material change
had been made in its organization from 1843 to 1876, or from the
time when it was first put into operation. Their names were not
given in the defendant's answer, and it is now insisted that their
testimony should not be received. It is, however, doubtful, to say
the least, whether any objection was made to their testifying
because their names had not been given in the answer. None was made
specifically for that reason. After notice had been given that the
defendant would proceed to take depositions at Norwich, the
solicitors of the complainant requested in writing to be informed
of the names of witnesses proposed to be examined, asserting a
right to such information, not under the statute, but under the
English chancery rules. Clearly they had no such right under our
equity
Page 101 U. S. 493
rule. The names were not given in answer to the request, and
when the witnesses were called the counsel for the complainant
objected to their examination "for want of notice." Notice of what?
The counsel of the defendant may well have understood the objection
to be that the names had not been furnished in response to the
application of the complainant's solicitors, rather than that they
had not been set out in the answer. An objection to the examination
of a witness should state specifically the ground of the objection,
in order that the opposite party may have the opportunity of
removing it, if possible. Had this been done in the present case
the defendant might have postponed the examination and moved to
amend his answer, if such amendment was needed.
But beyond this, it seems to be settled that the true
construction of the act of Congress is that only the names of those
who had invented or used the anticipating machine or improvement,
and not the names of those who are to testify of its invention or
use, are required to be pleaded. It was so ruled by Mr. Justice
Grier, in
Wilton v. The Railroads, 1 Wall.Jr. 195, and by
Mr. Justice Nelson, in
Many v. Jagger, 1 Blatchf. 376.
Roemer v. Simon, 95 U. S. 214. This
is all that is necessary to protect a patentee against surprise. If
in regard to an invention claimed to have anticipated his own, he
is informed by the defendant's answer of the names and residences
of the alleged inventors, or who had prior knowledge of the thing
patented, and when and by whom it had bee used, it is sufficient to
apprise him of the defense, and to enable him to make all needful
inquiries respecting it. He need not know who are to testify in
regard to the invention or use; much less does he need to know who
are to testify respecting the history and use of the prior
invention, after the complainant's patent has been granted.
We think, therefore, the testimony of the witnesses objected to
"for want of notice" was admissible. And even without it the
testimony of Anson and of Cole is sufficient to show the
construction and use of the Anson machine in 1843, before
Woodbury's invention was made.
Upon the whole, then, our conclusions are, that Woodbury was not
the original and first inventor of the improvement for which the
patent now owned by the complainant was granted to him,
Page 101 U. S. 494
and that if he was, his invention had been abandoned to the
public before his patent was granted.
It follows that the decree of the circuit court dismissing the
bill must be affirmed, with costs; and it is
So ordered.