Planing Machine Company v. Keith,
101 U.S. 479 (1879)

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U.S. Supreme Court

Planing Machine Company v. Keith, 101 U.S. 479 (1879)

Planing Machine Company v. Keith

101 U.S. 479


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 There may be an abandonment after or before an application for letters has been made and rejected, or withdrawn.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.

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