Reissued letters patent No. 4372, granted to Nelson W. Green,
May 9th, 1871, for an "improvement in the method of constructing
artesian wells," the original patent, No. 73,425, having been
granted to said Careen, as inventor, January 14, 1868, on an
application filed March 17, 1866, are invalid because the invention
was in public use by others than Green more than two years prior to
his application for the patent.
The proper construction of § 7 of the Act of March 3, 1839, 5
Stat. 354, is that if, more than two years before the application
for a patent, the invention covered by it was in public use,
whether with or without the consent of the subsequent patentee, the
patent was rendered invalid.
In equity for alleged infringement of letters patent. Decree
dismissing the bill, from which complainant appealed. The case is
stated in the opinion of the Court.
Page 123 U. S. 268
MR. JUSTICE BLATCHFORD delivered the opinion of the Court.
This is a suit in equity brought by the appellants for the
infringement of reissued letters patent No. 4,372, granted to
Nelson W. Green, one of the appellants, May 9, 1871, for an
"improvement in the methods of constructing artesian wells," the
original patent, No. 73,425, having been granted to said Green, as
inventor, January 14, 1868, on an application filed March 17,
1866.
This patent was before this Court in the cases of
Eames v.
Andrews, 122 U. S. 40, and
Beedle v. Bennett, 122 U. S. 71, at
October term, 1886. In those cases, this Court sustained the
validity of the reissued patent and affirmed the decrees of the
circuit courts. In the present case, the decree of the circuit
court was against the validity of the patent, and the bill was
dismissed. 16 F. 387. From that decree the plaintiffs have
appealed.
The patent is familiarly known as the "Driven Well" patent. The
specifications and drawings of the original and reissued patents
are set forth in the opinion of this Court in
Eames v.
Andrews. Numerous defenses are set up in the answer in the
present case and voluminous proofs have been taken in respect to
those defenses, but it is necessary to consider only one of them,
which, in our view, is fatal to the validity of the patent, and
that is that the invention was used in public at Cortland, in the
State of New York, by others than Green more than two years before
the application for the patent.
The brief of the appellants concedes that it is shown in this
case that other persons than Green put the invention into public
use more than two years before his application was filed. It is
contended for the appellants that this was done without his
knowledge, consent, or allowance. The appellee contends that such
knowledge, consent, or allowance was not necessary in order to
invalidate the patent, while the appellants contend that it was
necessary. The whole question depends upon the proper construction
of § 7 of the Act of March 3, 1839, 5 Stat. 354, interpreted in
connection with §§ 6, 7, and 15 of the Act of July 4, 1836, 5 Stat.
119, 123.
Page 123 U. S. 269
A list of the various cases decided in the circuit courts,
brought on the reissued "driven well" patent, is given in the case
of
Eames v. Andrews at p. 47 [argument of counsel --
omitted]. In none of those cases except the present one and those
heard at the same time with it did the question thus presented
arise. In
Andrews v. Carman, 13 Blatchford 307, 324, the
question involved and considered by the court was that of a
dedication and abandonment to the public of his invention by Green
prior to his application, founded upon acts done by him. The
conclusion of the court was that there was no evidence of any use
or sale of the invention by Green prior to his application for a
patent, nor any direct proof of knowledge on his part of any use or
sale of the invention by others within two years prior to his
application, nor sufficient evidence from which to properly infer
that he had such knowledge. The question of the use of his
invention by others more than two years prior to his application
does not appear to have been raised. Nor was it raised in
Andrews v. Cross, 8 F. 269. One of the defenses set up in
the answer in that case was "that the claim of Green as inventor
was barred because the improvement was in use more than two years
prior to the granting of his patent," and, as was said in the
opinion in that case, there was
"no allegation that the invention was in public use in the
United States for more than two years before Green applied for his
original patent, or that any use was with his consent or allowance,
or that he abandoned the invention to the public in fact or
otherwise than inferentially from the fact alleged, that it was in
use for more than two years before his original patent was
granted."
The conclusion of the circuit court in
Andrews v. Cross
was that no abandonment or dedication of the invention to the
public by Green was shown, and that there was no evidence of any
use or sale of the invention by Green before his application, and
no sufficient evidence from which to conclude that any use of any
driven well by others before his application was consented to or
allowed by him. The use by others thus referred to was, as in
Andrews v. Carman, a use within two years prior to the
application.
The point was not presented in
Eames v. Andrews or
in
Page 123 U. S. 270
Beedle v. Bennett, and in the opinion in the latter
case, it was said (p.
122 U. S.
77):
"There is no evidence in the record of any use or sale of the
invention by Green before his application for a patent, and no
evidence from which to conclude that any use of any driven well by
others before his application was consented to or allowed by him,
except in the instances mentioned at Cortland, which were merely
experimental tests, made by himself. Much less is there any
evidence to show that there was any use of the invention by others
for more than two years prior to his application."
The question involved has never been decided by this Court. In
Egbert v. Lippmann, 104 U. S. 333,
104 U. S. 334,
it was said:
"Since the passage of the act of 1839, it has been strenuously
contended that the public use of an invention for more than two
years before such application, even without his [the inventor's]
consent and allowance, renders the letters patent therefor void. It
is unnecessary in this case to decide this question, for the
alleged use of the invention covered by the letters patent to
Barnes is conceded to have been with his express consent."
In that case, the circuit court had, in
Egbert v.
Lippmann, 15 Blatchford 295, held that the effect of the act
of 1839 was to require that the inventor should not permit his
invention to be used in public at a period earlier than two years
prior to his application for a patent, under the penalty of having
his patent rendered void by such use, and that consent and
allowance by the inventor were not necessary to such invalidity.
The circuit court said that the policy introduced by the act of
1839, and continued by §§ 24 and 61 of the Act of July 8, 1870, 16
Stat. 201, 208, now §§ 4886 and 4920 of the Revised Statutes,
was
"that the inventor must apply for his patent within two years
after his invention is in such a condition that he can apply for a
patent for it, and that if he does not apply within such time, but
applies after the expiration of such time and obtains a patent, and
it appears that his invention was in public use at a time more than
two years earlier than the date of his application, his patent will
be void even though such public use was without his knowledge,
consent, or allowance, and even though he was in
Page 123 U. S. 271
fact the original and first inventor of the thing patented and
so in public use."
The circuit court in that case appears to have decided the
question on the view that the defense set up in the answer was that
the invention had been known and in use in the United States more
than two years before the application, and that there was no issue
as to whether the public use for more than two years was with the
consent or allowance of the patentee, but this Court decided the
case on the question of the consent of the patentee to the use for
more than two years before the application.
The original patent in the present case, having been applied for
and issued prior to the passage of the act of 1870, is to be
governed by the provisions of the acts of 1836 and 1839. Section 6
of the act of 1836 provided for the issuing of a patent to an
inventor for an invention not known or used by others before his
discovery or invention thereof, "and not at the time of his
application for a patent in public use or on sale with his consent
or allowance as the inventor or discoverer." Section 7 of the same
act provided for the issuing of a patent if, on examination, it
should not appear to the commissioner that the invention had been
made by any other person in this country prior to its being made by
the applicant, or that it had been patented or described in any
printed publication in this or any foreign country, "or had been in
public use or on sale, with the applicant's consent or allowance,
prior to the application." Section 15 of the same act provided that
the defendant, in an action for the infringement of a patent, might
show, among other things, that the thing patented "had been in
public use or on sale, with the consent and allowance of the
patentee, before his application for a patent," and that if that
was shown, judgment should be rendered for the defendant.
The seventh section of the act of 1839 was in these words:
"That every person or corporation who has or shall have
purchased or constructed any newly invented machine, manufacture,
or composition of matter prior to the application of the inventor
or discoverer for a patent shall be held to possess the right to
use, and vend to others to be used, the specific
Page 123 U. S. 272
machine, manufacture, or composition of matter so made or
purchased without liability therefor to the inventor or any other
person interested in said invention, and no patent shall be held to
be invalid by reason of such purchase, sale, or use prior to the
application for a patent as aforesaid except on proof of
abandonment of such invention to the public, or that such purchase,
sale, or prior use has been for more than two years prior to such
application for a patent."
The Act of July 8, 1870, repealed the act of 1839, but provided
(§ 111) that such repeal should not affect, impair, or take away
any right existing under the act of 1839. Section 24 of the act of
1870, now embodied in § 4886 of the Revised Statutes, was in these
words:
"That any person who has invented or discovered any new and
useful art, machine, manufacture, or composition of matter, or any
new and useful improvement thereof not known or used by others in
this country and not patented or described in any printed
publication in this or any foreign country before his invention or
discovery thereof and not in public use or on sale for more than
two years prior to his application, unless the same is proved to
have been abandoned, may, upon payment of the duty required by law,
and other due proceedings had, obtain a patent therefor."
Section 37 of the act of 1870, now embodied in § 4899 of the
Revised Statutes, provided as follows:
"That every person who may have purchased of the inventor or,
with his knowledge and consent, may have constructed any newly
invented or discovered machine or other patentable article prior to
the application by the inventor or discoverer for a patent or sold
or used one so constructed shall have the right to use and vend to
others to be used the specific thing so made or purchased, without
liability therefor."
In § 61 of the act of 1870, it was enacted that in any action
for infringement, the defendant might prove on the trial, as a
defense, among other things, that the thing patented "had been in
public use or on sale in this country for more than two years
before his application for a patent, or had been abandoned to the
public," and that if such special matter
Page 123 U. S. 273
alleged should be found for the defendant, judgment should be
rendered for him. This provision is now found in § 4920 of the
Revised Statutes
It is very plain that under the act of 1836, if the thing
patented had been in public use or on sale, with the consent or
allowance of the applicant, for any time, however short, prior to
his application, the patent issued to him was invalid. Then came §
7 of the act of 1839, which was intended as an amelioration in
favor of the inventor, in this respect, of the strict provisions of
the act of 1836. The first clause of that section provides for the
protection of a person who, prior to the application for the
patent, purchases or constructs a specific machine or article, and
declares that he may use and sell such specific machine or article
after the patent is issued without liability to the patentee. The
section does not require, in order to this protection, that the
purchase or construction shall have been with the consent or
allowance of the person who afterwards obtains the patent and seeks
to enforce it against such purchaser or constructor. The words
"consent or allowance" are not found in the provision. The only
requirement is that the specific machine or article shall have been
purchased or constructed at some time prior to the application for
a patent. The second clause of the section then passes to consider
the effect upon the validity of the patent "of such purchase, sale,
or use prior to the application" for the patent, and declares
that
"No patent shall be held to be invalid by reason of such
purchase, sale, or use prior to the application for a patent as
aforesaid except on proof of abandonment of such invention to the
public or that such purchase, sale, or prior use has been for more
than two years prior to such application for a patent."
The expression "such purchase" clearly means the purchase from
any person, and not merely from the person who becomes the patentee
of the machine or article. The expression "such sale or use"
clearly refers to the use or sale by the person who has purchased
or constructed the machine or article, the right to use and sell
which is given to him by the first part of the section. That right
is given to a person who has constructed the machine or
Page 123 U. S. 274
article, as well as to one who has purchase it, and the plain
declaration of the second part of the section is that where the
purchase or construction of the machine or article took place more
than two years prior to the application for the patent, or where
the use or sale by the person who so purchased or constructed the
machine or article took place at a time more than two years prior
to the application, the patent becomes invalid. It is not possible
in any other way to give full effect to the word "constructed" in
the first part of the section. The word "purchased" and the word
"constructed" are used in the same connection, and in connection
with the words "so made or purchased," which occur afterwards, and
the word "purchased" cannot be limited to a purchase from the
applicant for the patent, nor can the word "constructed" be limited
to a construction with the consent and allowance of such applicant
without interpolating into the statute the words "consent or
allowance." We can find no warrant for doing this. The evident
purpose of the section was to fix a period of limitation which
should be certain, and require only a calculation of time, and
should not depend upon the uncertain question of whether the
applicant had consented to or allowed the sale or use. Its object
was to require the inventor to see to it that he filed his
application within two years from the completion of his invention,
so as to cut off all question of the defeat of his patent by a use
or sale of it by others more than two years prior to his
application, and thus leave open only that question of priority of
invention. The evident intention of Congress was to take away the
right (which existed under the act of 1836) to obtain a patent
after an invention had for a long period of time been in public use
without the consent or allowance of the inventor; it limited that
period to two years, whether the inventor had or had not consented
to or allowed the public use. The right of an inventor to obtain a
patent was in this respect narrowed, and the rights of the public
as against him were enlarged, by the act of 1839. The language of §
24 of the act of 1870, now § 4886 of the Revised Statutes, is to
the same effect, and carries out the policy inaugurated by the act
of 1839. It
Page 123 U. S. 275
allows a patent to be granted only for an invention which was
not in public use or on sale for more than two years prior to the
application for the patent, subject to the defense of abandonment
within such two years, which is also the requirement of § 61 of the
same act, while § 37 of that act requires that a person, in order
to have the right to use and sell without liability a specific
thing made or purchased prior to the application for the patent
shall have purchased it of the inventor or constructed it with his
knowledge and consent.
In view of the fact that section 37 of the act of 1870 reenacts
the first part of § 7 of the act of 1839, with the addition,
ex
industria, of the requirement, in order to confer the right to
use the specific thing in question, that the purchase of it should
have been from the inventor or the construction of it should have
been with his knowledge and consent, and of the further fact that
section 24 of the act of 1870 reenacts the second part of § 7 of
the act of 1839, and does not contain a requirement that the public
use or sale for more than two years prior to the application shall
have been with the consent or allowance of the patentee, in order
to invalidate the patent, it may fairly be said that it was the
view of Congress that section 7 of the act of 1839 did not require
as an element the knowledge, consent, or allowance of the
applicant.
Views are to be found in decisions of circuit courts not in
harmony with the construction we have thus put upon § 7 of the act
of 1839. That construction was upheld in the very full opinion
given by Judge Love, one of the judges who sat in the present case
in the circuit court. 16 F. 387. It was indicated as the proper
construction in the opinion of this Court in
Elizabeth v.
Pavement Co., 97 U. S. 126,
97 U. S. 134,
which was the case of a patent issued under the act of 1839, and
where this Court, speaking by MR. JUSTICE BRADLEY, said in regard
to that act,
"An abandonment of an invention to the public may be evinced by
the conduct of the inventor at any time, even within the two years
named in the law. The effect of the law is that no such consequence
will necessarily follow from the invention's being in public use or
on sale, with the inventor's
Page 123 U. S. 276
consent and allowance at any time within two years before his
application, but that if the invention is in public use or on sale
prior to that time, it will be conclusive evidence of abandonment,
and the patent will be void."
The decree of the circuit court is
Affirmed.