The use of his own invention by an inventor for the purpose of
testing the machine in order by experiment to devise additional
menus for perfecting the success of its operation is not a public
use under Rev.Stat. § 4886, and if a profit is derived from the
sale of the product of its operation, merely as incident to such
use, the character of the use is not thereby changed; but if the
use is mainly for the purpose of trade and profit, the
experimenting being incidental only, and it is public, and is
continued for a period of more than two years prior to the
application for a patent for the invention, it comes within the
prohibition of that statute.
When it is clearly established that there was a public use of an
invention by the inventor for more than two years prior to his
application for a patent for it, the burden is on him to slow by
convincing proof that the use was not a public use in the sense of
the statute, but that it was for the purpose of perfecting an
incomplete invention by tests and experiments.
Claims 1, 2, 3, 4, and 6 in letters patent No. 228,136, dated
May 25, 1880, and Claims 2, 3, and 5 in letters patent No. 231,199,
dated August 17, 1880, both granted to Leonard A. Sprague for
improvements in machines for making buckle levers, are void by
reason of a public use of the invention by the patentee for a
period of more than two years prior to his application for patent
No. 231,199; as to claim 5 in letters patent No. 228,136, and
claims 1 and 4 in letters patent No. 231,199, this Court agrees
with the circuit court for the reasons stated in the opinion of the
latter.
In equity for infringement of letters patent. Decree in favor of
the complainant, 12 F. 721. From this decree an appeal was taken.
The case is stated in the opinion of the Court.
Page 123 U. S. 250
MR. JUSTICE MATTHEWS delivered the opinion of the Court.
This is a bill in equity for an injunction and account based
upon the alleged infringement by the appellant of letters patent
No. 228,136, dated May 25, 1880, and letters patent No. 231,199,
dated August 17, 1880, for improvements in machines for making
buckle levers, issued to Leonard A. Sprague, the appellee. The
defenses relied on are, 1st, a denial of the infringement alleged
in respect to the fifth claim of patent No. 228,136 and the first
and fourth claims of patent No. 231,199, 2d, as to all the other
claims of both, that a machine embodying them was in public use for
more than two years prior to the application for the patents. The
application for patent No. 228,136 was filed on November 11, 1879,
while that for patent No. 231,199 was filed December 2, 1878, the
two being divisions of an application based on the same model. The
machines described in the two patents, it is admitted, are
substantially the same in construction and operation, both patents
being for different parts and combinations of a single machine. For
the purposes of this case, therefore, the date of the application
is to be taken as of December 2, 1878, being the earlier of the
two.
The machine is for making levers of buckles used almost
exclusively on "arctic" overshoes. These levers are made from a
single piece of brass, with slots through them near each end to
fasten them to the strap of a shoe, and are bent by formers, and
swaged by dies, so that they have what is termed a lip or bead
which bears upon the holding strap, two grooves within which lies
the bar or pivot of the buckle, and two beads at the upper edge for
a finish, and to prevent the strap from cutting when it is fast
through the slots, and bears upon them when in use. There is no
claim in these patents for the buckle lever itself as a new article
of manufacture, for which,
Page 123 U. S. 251
however, Sprague, the appellee, had a prior patent, dated May
27, 1862. The levers are made from a strip of metal by a succession
of operations in the patented machine. The first step is to produce
the slotted blank; the next to bend it by doubling it upon itself
into a U-shape; the next to produce the central double bead forming
the grooves, and the next to produce the double beads between the
slot and the edge of the lever. The machine is organized to feed a
strip of sheet brass under punches which punch the slots in the
blank, and then cut it from the strip; to feed this blank over a
matrix, where it is bent into U-form; to feed it on to a mandrel,
on which, by a pair of dies, it is partially formed, and then along
that mandrel to a second pair of dies, where its form is completed.
The machine is automatic, and, while these successive steps take
place in the complete manufacture of a single lever, all the
various steps in the process, with respect to successive levers,
take place simultaneously. So that as each lever is completely and
finally formed on the mandrel, it is pushed from the mandrel by
another to take its place in that stage of formation.
The 1st, 2d, 3d, 4th, and 6th claims of patent No. 288,136 and
the 2d, 3d, and 5th claims of patent No. 231,199 are those in
respect to which the alleged infringement is admitted, and as to
which the defense of two years' prior public use is urged. These
claims are as follows:
Of patent No. 228,136:
"1. In combination with the mandrel M provided at its lower edge
with the rib M and with the short ribs
m2 m2, the dies N
N', O O, whereby, after the partially formed lever has been acted
upon by dies N, N', the rib
m serves as a support or guide
over which said lever may be moved to a proper position relative to
dies O O, substantially as set forth."
"2. In a machine for making buckle levers, the combination of
the mandrel M, the dies N N', advanced on planes substantially at
right angles to the planes of the partially formed buckle lever,
and the tongue
n2, attached to the die N substantially as
set forth."
"3. In a machine for making buckle levers, the combination,
Page 123 U. S. 252
with the mandrel, the punch which punches blanks from a
continuous sheet of metal, and two or more dies which successively
form the metal into the desired shape, of a carrier which moves a
blank from the punches to the forming dies, and advances the
partially formed levers against the preceding lever, substantially
as set forth."
"4. In a machine for making buckle levers, the combination, with
the matrix L, and folder
l2, of the dies N N', the mandrel
arranged to receive the blank from the matrix, and the carrier,
substantially as set forth."
"6. In a machine for making buckle levers, the combination, with
the folder
l2 of the pusher-pin
c3, attached to
and moving with the punch-stock C, and a returning spring, which
lifts the folder, substantially as set forth."
Of patent No. 231,199 --
"2. In a machine for making buckle levers, the combination, with
the die which punches blanks from a continuous sheet of metal, of
two or more dies which successively form the metal into the desired
shape, and a carrier which moves a blank from the punching die to
the forming dies, and advances the partially formed lever against
the preceding lever, substantially as set forth."
"3. In a machine for making buckle levers, the combination, with
the mandrel M, provided with the rib
m of the dies N N',
and a stop adapted to engage with the lower end of the lever, and
determine the length of the bit
u, substantially as
described."
"5. The herein-described method of manufacturing buckle levers
-- that is to say, by bending the blank into U-shape, then forming
the bit
u and seats
u2 u3 and subsequently
forming the grooves
u4 substantially as herein set
forth."
The claims in respect to which infringement is denied are as
follows:
Of patent No. 228,136 --
"5. In a machine for making buckle levers, the combination, with
the mandrel M and dies N N' of the springs N2 N2, to press the dies
forward into proper position relative to the mandrel, substantially
as set forth. "
Page 123 U. S. 253
Of patent No. 231,199 --
"1. In a machine for making buckle levers, the combination of
the mandrel M, provided with the ribs
m m3 of the dies N
N', O O, and a support, which presses the part
u of the
lever against the rib
m substantially as set forth."
"4. In a machine for making buckle levers, the combination, with
the mandrel M, having rib
m of the dies N N', and stops
adapted to engage both ends of the partially formed lever, to
regulate its position relative to the mandrel and dies,
substantially as set forth."
It will be observed that the claims in respect to which the
infringement is denied do not embrace the whole invention claimed
in the two patents. They cover only certain definite and specific
combinations of parts of the mechanism. It is possible, therefore,
that a defendant might be guilty of infringement in respect to all
the other claims in the two patents, and yet not infringe the three
claims specified above. That is to say, he might use a machine
which embodied all the combinations except those specified in these
three claims. These he might entirely omit without any substitute,
or he might have a substitute for them so different as to amount to
a separate invention, and therefore not mere equivalents for them.
In the examination of the question, therefore, of the prior public
use for two years before the date of the application of the
invention as embodied in those claims in respect to which the
infringement is admitted, we assume for the present that the
machine used by the defendant is an infringement of that covered by
the complainant's patents only so far as it is covered by them,
excluding the three claims in respect to which the infringement is
denied.
The testimony on the subject of the prior public use by the
complainant is that from the fall of 1874 until the fall of 1877,
and thus more than two years prior to December 2, 1878, the
complainant had in use for the purpose of profit in his business,
operated in his factory by his workmen for the production of arctic
overshoe buckles, a machine which contained all the elements and
combinations covered by the
Page 123 U. S. 254
claims in the two patents in respect to which the defendant
confesses infringement. This machine was practically successful, in
that during the period of its use the complainant produced and sold
about 50,000 gross of levers used on these shoe-buckles, which he
sold to his customers in the market. It was a public use in the
sense of the statute, and within the decisions of this Court,
inasmuch as it was used by the complainant in the regular conduct
of his business, by workmen employed by him in its operation, and
in the view of such part of the public as chose to resort to his
establishment, either for the purpose of selling material for the
manufacture, or of purchasing its product. It is claimed, however,
and it was so decided by the circuit court, that this prior use of
the machine in that form was not a public use, within the
prohibition of the statute, so as to defeat the patent, because
that use was experimental only, of an imperfect machine, embodying
an incomplete invention, in order to enable the inventor to perfect
it by improvements actually added, and to overcome defects
developed by this use, which improvements are contained in the
three additional claims, and which were added as parts of the
invention within two years before the date of the application.
The matters under this head are stated by the learned judge of
the circuit court, in his opinion contained in the record, as
follows:
"The facts are that from 1862 to 1868 the patentee made another
kind of buckle from those produced by this machine upon two or more
different machines. Between 1868 and the fall of 1873 another kind
of buckle was made by one machine. For a year prior to the fall of
1874, he made the 'beaded' buckles --
i.e., the kind now
under consideration -- upon two machines."
"In 1874, he ordered the skeleton of the patented machine from
Bliss & Williams, his workmen or himself making the patented
portions. This machine was in a condition in which it was used to
manufacture buckle levers in the fall of 1874, and continued to be
so used, without substantial change, until the spring of 1878, but
it was not a perfected invention. It
Page 123 U. S. 255
had two defects -- one, that it choked, and the overlapping
blanks had to be picked apart by a workman; another, that the bead
was not parallel with the slot, because the blank could not be
forced upon the mandrel evenly. Nevertheless, it was used, in some
seclusion from the public, to make levers, and it made about 50,000
gross, which were sold; but the organization was defective until it
was perfected in the early part of 1878, after repeated
experiments. The inventor always adhered to the idea of perfecting
the invention, and then obtaining a patent upon it. The two
improvements which were introduced in 1878 were the springs between
the levers and the dies, which prevented overlapping, and the rib
m3 in order to keep the blank in position when it was
forced upon the mandrel. These changes, which are apparently not of
great importance, perfected the invention, and enabled the inventor
to take the final step between partial and complete success. It is
perfectly true that a patentee cannot be permitted to use for
profit a machine which embodies a perfected invention for a period
of two years or more, and then obtain a valid patent for the old
machine by means of the addition of some new improvements, which,
in the language of Judge Lowell, 'were intended to benefit the
patent, rather than the machine.'
Perkins v. Nashua Card
Co., 2 F. 451-454. The present case is that of a machine which
was imperfect, and which demanded and received the continuous
experiments of the inventor to remedy the defects in its
organization. It is not true that the inventor cannot safely use
for profit such a machine in its imperfect state, lest two years
should elapse during the experimental period before the invention
is completed and the patent is applied for."
Sprague v. Smith & Griggs Mfg. Co., 12 F. 721.
We think this view might be correct and applicable to the case
if the invention of the complainant, which he sought to embody and
protect by the patents, consisted of the entire machine as he
ultimately constructed and operated it, considered as a unit, for
in that view it would have been imperfect and incomplete, and
merely experimental, until it had received from its inventor every
element necessary to its operation.
Page 123 U. S. 256
But that supposes that his invention is nothing less than the
single, entire, and completed machine. We do not think that to be
the present case. Here the invention is not one, but many; each of
the claims in both of the patents is for a specific combination in
a practically successful machine for making buckle levers, and each
is a separate and distinct invention, and claimed as such. All the
elements of these combinations were old; it was the specific
arrangement and several combinations and subcombinations of them
that are claimed as new. The use of any one of these combinations,
or any number of them, in such a machine would be an infringement
of the complainant's rights as patentee. And if, without the use of
the combinations contained in the excluded claims, the complainant
had a machine practically useful for the purpose for which it was
designed, which could be used with commercial success as superior
to modes of manufacture previously in use, and which in fact he did
so use for profit in the ordinary course and conduct of his
business and for the purpose of a successful prosecution of that
business, it can hardly be said with propriety that such use was
merely experimental, although during the period of its operation he
was also engaged in the invention of improvements by which he hoped
and expected to make it more valuable and useful.
A use by the inventor for the purpose of testing the machine in
order by experiment to devise additional means for perfecting the
success of its operation is admissible, and where, as incident to
such use, the product of its operation is disposed of by sale, such
profit from its use does not change its character; but where the
use is mainly for the purposes of trade and profit, and the
experiment is merely incidental to that, the principle, and not the
incident, must give character to its use. The thing implied as
excepted out of the prohibition of the statute is a use which may
be properly characterized as substantially for the purposes of
experiment. Where the substantial use is not for that purpose, but
is otherwise public, and for more than two years prior to the
application, it comes within the prohibition. The language of §
4886 of the Revised Statutes is that
"Any person who has invented or discovered
Page 123 U. S. 257
any new and useful . . . machine, . . . not in public use or on
sale for more than two years prior to his application, . . . may .
. . obtain a patent therefor."
A single sale to another of such a machine as that shown to have
been in use by the complainant more than two years prior to the
date of his application would certainly have defeated his right to
a patent, and yet, during that period in which its use by another
would have defeated its right, he himself used it, for the same
purpose for which it would have been used by a purchaser. Why
should the similar use by himself not be counted as strongly
against his rights as the use by another to whom he had sold it,
unless his use was substantially with the motive and for the
purpose, by further experiment, of completing the successful
operation of his invention?
On the other hand, the use of an invention by the inventor
himself, or by another person under his direction, by way of
experiment and in order to bring the invention to perfection has
never been regarded in this Court as such a public use as under the
statute defeats his right to a patent.
Shaw v.
Cooper, 7 Pet. 292;
Elizabeth v. Pavement
Co., 97 U. S. 126;
Egbert v. Lippmann, 104 U. S. 333. In
this last case, it was said (p.
104 U. S.
336):
"A use necessarily open to public view, if made in good faith,
solely to test the qualities of the invention, and for the purpose
of experiment is not a public use, within the meaning of the
statute."
In
Elizabeth v. Pavement Co., 97 U. S.
126,
97 U. S. 134,
it was said:
"When the subject of invention is a machine, it may be tested
and tried in a building either with or without closed doors. In
either case, such use is not a public use, within the meaning of
the statute, so long as the inventor is engaged, in good faith, in
testing its operation. He may see cause to alter it and improve it,
or not. His experiments will reveal the fact whether any and what
alterations may be necessary. If durability is one of the qualities
to be attained, a long period, perhaps years, may be necessary to
enable the inventor to discover whether his purpose is
accomplished. And though during all that period he may not find
that any changes are necessary, yet he may be justly said to be
using
Page 123 U. S. 258
his machine only by way of experiment, and no one would say that
such a use, pursued with a
bona fide intent of testing the
qualities of the machine, would be a public use within the meaning
of the statute. . . . While the supposed machine is in such
experimental use, the public may be incidentally deriving a benefit
from it. If it be a gristmill, or a carding machine, customers from
the surrounding country may enjoy the use of it by having their
grain made into flour, or their wool into rolls, and still it will
not be in public use, within the meaning of the law. But if the
inventor allows his machine to be used by other persons generally,
either with or without compensation, or if it is, with his consent,
put on sale for such use, then it will be in public use and on
public sale, within the meaning of the law."
The only witness called to prove the fact of two years' prior
use was the patentee himself. It is to be supposed that his
statement of the circumstances is as favorable to himself as the
facts will justify. It appears from this that he commenced making
buckles under his patent of May 27, 1862, No. 35,401, in the course
of that year. The manufacture of the levers for these buckles
required the use of three separate machines -- one for cutting the
blank with the holes punched, another for drawing it into a
U-shape, and the other for pressing the U-shaped blank into its
final form on a mandrel. This continued until 1867 or 1868, from
which time, until the fall of 1873, he testifies that he made a
certain class of levers in one operation, but that they were "not
arctics." In order to make the levers for the arctic buckles, from
the fall of 1873 to the fall of 1874, two machines were used, one
for making the whole of the lever, "except putting on a bead on the
tail of the lever," this operation was performed by a second
machine. While producing the buckle levers in this way upon two
separate machines, the patentee states that he made changes in the
mechanism with a view of producing the entire lever with a bead on
by means of one machine. One change was to put in an apparatus "to
stop the machine when it worked imperfectly." Another was to put "a
friction joint in the lever" -- that is, the lever of the machine,
which he thinks he put in during
Page 123 U. S. 259
the year 1866. The change whereby he was enabled to put the bead
on, and which he says was made in 1870 or 1871 or 1872, he states
was not successful. In describing the causes of the failure in this
machine to produce the beaded arctic buckle lever, he says:
"One feature, it broke the levers that done the pressing, and,
by not driving onto mandrel true, it would not strike it in the
right place, and had to be sent back by customers."
The result was that in the year 1874, he abandoned the use of
this machine for the purpose of making beaded arctic buckle levers,
and constructed, in the spring of that year, a new one. This press
was manufactured for him by Bliss & Williams, in March, 1874,
and, as made by them, included the press, the main shaft, one of
the levers, the lever for driving the carrier, the arrangement for
working the levers for operating the striking dies, and the bed of
the buckle lever machine was planed for receiving the dies and the
working parts of the buckle lever machine. The other parts of the
machine were made by the patentee himself and his own workmen. On
the subject of this machine, the following is a portion of his
examination:
"Q. 115. After carefully examining your patent 231,199 again,
please state wherein that machine, as it was used by you in the
latter part of the year 1874, differed, if at all, from the machine
described in your said patent and shown therein."
"A. The springs between the levers that worked the striking dies
are in the patent, but were not in the machine, and this rib
m3, on top of the mandrel, which projects over the matrix
to keep the U-shaped blank down in position when forced onto the
mandrel to keep it true and straight, was not in the machine. The
point in the lower side of the carrier or driver is not in the
patent, as I used the bar,
m3, in its place. It gave me a
great deal of trouble, and so I changed it. I don't know as I see a
great deal more. I don't see anything more that I can
describe."
"Q. 116. When did you put the springs between the levers and the
striking dies in that machine?"
"A. It was in 1877, in the fall."
"Q. 117. When did you put the extension of the mandrel,
Page 123 U. S. 260
referred to as
m3 in your patent, in that machine, in
place of the point on the carrier to hold the U-shaped blank down
in the matrix?"
"A. It was either in January of February, 1878; I think it
was."
"Q. 118. Did you use that machine between the fall of '74 and
the fall of '77 for making buckle levers such as are described in
your patent 231,199?"
"A. Yes."
"Q. 119. How many did you make during that period of time on
that machine?"
"A. Well, I must have made about fifty thousand gross, as near
as I can come at it."
"Q. 120. And what did you do with that fifty thousand
gross?"
"A. Sold them. I might have made a few more and I might have
made a few less; I can't tell till I look at my books; I could come
nearer to it."
"Q. 121. Which of the figures of the drawings of your patents in
suit illustrates these fifty thousand gross of buckle levers?"
"A. Figure 9 of 231,199."
The witness further states that into the room where this machine
was being operated people came at will -- some to sell brass,
others people from the neighboring factories, and others to buy
buckles; that the machine was open to their inspection, and, in
answer to the question whether an attempt was made to keep the
operation of the machine secret during this period of time, the
witness states:
"From parties whom we thought were manufacturing buckles; we
endeavored not to let them see them closely; . . . not from those
that we became acquainted with, and did not suppose would want to
use any such machine."
In respect to the changes made in the machine in 1877 and 1878,
and which are covered by claims in the patents, he further
testifies on cross-examination as follows:
"Q. 171. After you had completed the new machine in the way
described in reply to question 115 in your testimony, did you have
any practical trouble in its working? "
Page 123 U. S. 261
"A. Not near as much."
"Q. 172. What had been the trouble up to that time?"
"A. Forming the bead or telescoping or failing to drive on the
mandrel."
"Q. 173. Describe what you mean by telescoping."
"A. The buckle levers, when the die formed the first impression
onto the mandrel -- the next blank from the matrix has to force
that along, and it would spread open, and go on the outside of the
tongue formerly on there, and what I call telescope."
"Q. 174. Was this telescoping a real practical difficulty in the
operation of this machine up to that time?"
"A. It was, and gave me considerable trouble."
"Q. 175. Did you experiment from time to time to devise means to
prevent it?"
"A. Yes sir."
"Q. 176. Now, about the trouble in the beading which you say
existed up to the time when, in the fall of 1877, and in January or
February, 1878, you made the change you have described. Please
explain what the trouble was."
"A One trouble was that if it was not held in the right position
in the matrix, it would go onto the mandrel one side longer than
the other to match the ribs. It would not come in the center."
"Q. 177. What would be the result of one side of the bent blank
being longer than the other when it went onto the mandrel?"
"A. It made a bad lever, which was rejected by my customers, and
consequently was lost."
"Q. 178. Did you have any trouble from the bead's not being made
precisely parallel with the slot before you made these improvements
of 1877 and '78?"
"A. Yes sir."
"Q. 179. How did that come about?"
"A. One cause that I have described, and telescoping, not being
held in the right position in the matrix to be forced onto the
mandrel."
"Q. 180. State whether or not it was a very delicate operation
to make the head precisely parallel with the slot, and why? "
Page 123 U. S. 262
"A. It gave me a great deal of trouble to do it. If it was not
forced onto the mandrel evenly, it would come that way."
"Q. 181. Did you have any practical trouble in any of these
respects after you completed the machine in 1877 and '78 by the
changes which you have described?"
"A. Not when the dies and tools were in order -- mandrel,
carrier, etc."
"Q. 182. I suppose you mean that the parts were liable to wear
and get out of order like other machines, am I right?"
"A. Yes sir."
"Q. 183. state whether or not it was your intention, while you
were experimenting upon and improving this last machine, to obtain
a patent when it should be completed?"
"A. It was."
"Q. 187. State whether to complete the machine for making these
arctic buckle levers with a slot and bead so that all, or
practically all, the levers would come out of the machine with a
perfect bead, required the later improvements which you put upon
the machine?"
"A. Yes sir, or I would not have put them on."
"Q. 188. What would be the effect of telescoping upon the
machine itself before you devised the improvements which you made
in 1877 and 1878?"
"A. It would break the mandrel sometimes, and choke up the
machine so that we had to get it out."
"Q. 189. In what way did you get out the telescoping blanks when
the machine was choked?"
"A. Stopped the machine, and took a pointed steel with a hook on
and drew them back, and sometimes worked them off the further end
of the mandrel."
On reexamination, he further testifies as follows:
"Q. 190. Did you ever have any trouble with the machine in
choking after you had made the slight alterations you have spoken
about, of extending the mandrel and putting in he springs?"
"A. Yes sir, some, but it was not near as much. "
Page 123 U. S. 263
"Q. 191. What caused this choking, since these alterations --
telescoping, or what?"
"A. Sometimes telescoping and sometimes the blank's not being
cut smooth."
"Q. 192. In what way did you get out the telescoping blanks when
the machine was choked, after it was altered?"
"A. By stopping the machine and using a sharp pointed hook the
same as before."
"Q. 193. Since those alterations were made, have you had any
trouble about putting the bead on account of the blank's not going
on the mandrel just right in this machine?"
"A. Yes sir; when the matrix was worn and the die was worn, the
die, not cutting smooth, will throw it around."
"Q. 194. Would the telescoping of the blanks, after the
alterations were made in this machine, also injure the machine,
and, if so, what part?"
"A. The telescoping would produce the same injury as before when
it did telescope."
Also, on further cross-examination, he testified as follows:
"Q. 203. After your machine was completed, by the changes of
1877 and 1878, did you have any practical trouble in forming the
bead, or pushing the blank into the mandrel, or from telescoping,
or from waste, when the machine was in good running order and in
repair?"
"A. No sir, not any practical trouble."
And on further examination:
"Q. 204. Wasn't the telescoping that you have testified about,
that occurred in this machine after it was altered by extending the
mandrel and putting in the springs, a practical difficulty?"
"A. Yes, one of them."
"Q. 205. What caused this practical difficulty after those
changes were made?"
"A. There was several. The matrix wearing, the dies wearing
smooth, not holding the brass evenly upon the mandrel, and the end
of the carrier wearing so as to not force the U-shaped blanks on
evenly. "
Page 123 U. S. 264
"Q. 206. And those same things caused the telescoping in the
machine before it was altered, didn't they?"
"A. Yes, and when the dies wasn't worn, it would telescope."
The effect of this testimony, it is claimed by the appellee, is
that
"before the changes, the telescoping took place when the machine
was in order, the defect residing in the organization; after the
changes, it would only take place when the machine was out of
repair."
On the other hand, it is contended on the part of the appellant
that although the patentee, on being asked the question whether he
experimented from time to time to devise means to prevent the
difficulty of telescoping which he had experienced, answered in the
affirmative, yet
"there is nothing to show that these experiments were made prior
to the fall of 1877, and he is entirely silent as to what, if any,
they were, and what, if anything, was done by him by way of
experimenting. As the record stands, this machine was not changed
or altered, nor was any experiment made with it or on it, during
the period of some three years, while it made over 7,000,000 buckle
levers, which were sold. Sprague does not intimate anywhere that he
made any experiments to overcome the objection which he said
existed in the guiding of the U-blanks upon the mandrel at any time
before he added to the mandrel an ordinary guide or rib,
m3, which was in January or February, 1878,"
and that
"the only testimony as to his intention of patenting the machine
while experimenting is his answer to X-Q. 183, as follows:"
"X-Int. 183. State whether or not it was your intention, while
you were experimenting upon and improving this last machine, to
obtain a patent when it should be completed?"
"A. It was."
In considering the evidence as to the alleged prior use for more
than two years of an invention which, if established, will have the
effect of invalidating the patent, and where the defense is met
only by the allegation that the use was not a public use in the
sense of the statute, because it was for the purpose of perfecting
an incomplete invention by tests and experiments, the proof, on the
part of the patentee, the period covered by the use having been
clearly established, should be full, unequivocal, and
convincing.
Page 123 U. S. 265
The testimony of the patentee seems to be indefinite and vague.
The question whether, during the period of his use of the machine,
he was experimenting for its improvement, put to him by his
counsel, suggested its own answer, which was in the affirmative, as
also that respecting his intention during that time to apply for a
patent. He gives no account of the dates of any such experiments
nor any particulars respecting them. He does not say whether more
than one mode of overcoming the difficulties experienced was
suggested and tried or not, nor, if more than one device was
attempted, what they were. The statements are meager and bald, and
quite insufficient to satisfy us that the problem of perfecting the
machine in the particulars in which it was proved to be deficient
was one that was exercising the ingenuity and inventive faculty of
the patentee continuously, with the ever-present intention, during
the whole period, to make an application for the patents as soon as
he had reached a satisfactory solution.
In the present case, the use of the machine was apparently for
the purpose of conducting an established business; the machine
itself was the only one used for the manufacture, of which the
patentee, by a prior patent, already had a monopoly. He alone
supplied the market with the article, and the whole demand was
satisfactorily met by this single machine. To this extent, it
operated successfully. That it was capable of improvement need not
be denied, nor that, while it was in daily use, its owner and
inventor watched it with the view of devising means to meet and
overcome imperfections in its operation; but this much can be said
in every such case. There are few machines, probably, which are not
susceptible of further development and improvement, and the
ingenuity of mechanics and inventors is commonly on the alert to
discover defects and invent remedies. The alterations made in the
machine in question, however useful, were not vital to its
organization. Without them, it could and did work so as to be
commercially successful.
The impression made upon us by the evidence, the conclusion from
which we cannot resist, is that the patentee unduly
Page 123 U. S. 266
neglected and delayed to make his application for the patents,
and deprived himself of his right thereto by the public use of the
machine in question, so far as it is embodied in the claims under
discussion.
The proof falls far short of establishing that the main purpose
in view, in the use of the machine by the patentee prior to his
application, was to perfect its mechanism and improve its
operation. On the contrary, it seems to us that it shows that the
real purpose in the use was to conduct the business of the
manufacture, the improvement and perfection of the machine being
merely incidental and subsidiary.
The case upon the proofs seems to us to fall within the
principle of the decision of this Court in
Hall v.
Macneale, 107 U. S. 90,
107 U. S. 96-97.
It was there said:
"It is contended that the safes were experimental, and that the
use was a use for experiment. But we are of opinion that this was
not so, and that the case falls within the principle laid down by
this Court in
Coffin v. Ogden, 18 Wall.
120. The invention was complete in those safes. It was capable of
producing the results sought to be accomplished, though not as
thoroughly as with the use of welded steel and iron plates. The
construction and arrangement and purpose and mode of operation and
use of the bolts in the safes were necessarily known to the workmen
who put them in. They were, it is true, hidden from view after the
safes were completed, and it required a destruction of the safes to
bring them into view. But this was no concealment of them or use of
them in secret. They had no more concealment than was inseparable
from any legitimate use of them. As to the use's being
experimental, it is not shown that any attempt was made to see if
the plates of the safes could be stripped off, and thus to prove
whether or not the conical bolts were efficient."
It follows that patent No. 228,136, to the extent of the 1st,
2d, 3d, 4th, and 6th claims, and patent No. 231,199, in respect to
the 2d, 3d, and 5th claims, must be held void by reason of a prior
public use of the invention covered thereby for more than two years
before the date of the application. In respect to the alleged
infringement of the 5th claim of patent No.
Page 123 U. S. 267
228,136, and the 1st and fourth claims of patent No. 231,199, we
agree with the conclusions of the circuit court for the reasons
stated in its opinion, which it is not necessary here to repeat.
Sprague v. Smith & Griggs Mfg. Co., 12 F. 721.
As we find the decree of the circuit court to be erroneous in
respect to the other claims, it must be
Reversed, and the cause remanded, with instructions to take
further proceedings therein in conformity with this
opinion.