Andrews v. Hovey,
124 U.S. 694 (1888)

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U.S. Supreme Court

Andrews v. Hovey, 124 U.S. 694 (1888)

Andrews v. Hovey

Submitted January 16, 1888

Decided February 20, 1888

124 U.S. 694


The decision of this Court in Andrews v. Hovey, 123 U. S. 267, adjudging reissued letters patent No. 4372, granted to Nelson W. Green, May 9, 1871, for an "improvement in the method of constructing artesian wells" to be invalid confirmed on an application for a rehearing.

The case of Kendall v. Winsor, 21 How. 322, and other cases examined.

The question of the proper construction of the second clause of § 7 of the patent Act of March 3, 1839, 5 Stat. 354, as affecting the validity of a patent, considered.

This was a petition for a rehearing of the case decided at this term and reported in 123 U.S. at 123 U. S. 267. The allegations and prayer of the petitioners were as follows:

Page 124 U. S. 695

"And now come your petitioners, the appellants herein, by their counsel, Joseph C. Clayton and Anthony Q. Keasbey, and respectfully suggest to this Honorable Court that after having sustained the priority and novelty of the invention and the validity of their original patent and its reissue in numerous decisions of the circuit court and in three decrees of this Court, they are much aggrieved by the opinion lately rendered in this Court ( 123 U. S. 123 U.S. 267) declaring it to have been void ab initio under the Patent Acts of 1836 and 1839 because it was admitted that subsequent to the invention and prior to the application others, without the consent or allowance of the inventor, had used the invention in public for more than two years."

"And your petitioners respectfully suggest that this decision as to the construction of those acts was reached by reason of a plain omission and mistake as to the facts and authorities, and by the failure of counsel, in their abundant confidence in what they deemed a long-settled construction, to bring to the notice of the Court in sufficient fullness the authorities by which such construction had been uniformly maintained, and to explain distinctly that their admission as to prior use related to the use of only a few wells made solely by Suggett and Mudge, who derived their knowledge from the inventor, and were afterwards defeated as contestants in an interference with Green concerning the patent in question."

"Wherefore your petitioners respectfully pray for a reconsideration and rehearing on the following grounds, supported by their brief submitted herewith:"

"First. The Court, in the present opinion, holds that the first clause of the 7th section of the act of 1839 protects any person who has purchased or constructed a specific machine before application for the patent, whether it was purchased or constructed with the consent of the inventor or not, and that therefore the second clause of the section invalidating the patent, if such use in public continued two years before the application, must be construed to mean a use whether with the consent of the inventor or not, and in reaching this conclusion, the Court declared that 'the question involved had

Page 124 U. S. 696

never been decided by this court.'"

"This was a plain mistake, probably arising out of the failure of counsel to refer to the cases. It had been decided by this Court the other way in four well-considered cases, viz.: 62 U. S. Winsor, 21 How. 322; Seymour v. McCormick, 19 How. 96; Klein v. Russell, 19 Wall. 433; Bates v. Coe, 98 U. S. 31, 98 U. S. 46, and in McClurq v. Kingsland, 1 How. 202. The charge of Mr. Justice Baldwin at the Circuit Court, taking the same view of the statute, was affirmed, although the decision of this Court rested on another point."

"Second. The Court in its opinion (p. 123 U. S. 269) declares that in Andrews v. Carman, 13 Blatchford 307, the first driven well case, '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.'"

"This was a plain error of fact, and the Court was naturally and inadvertently led into it by a clerical error in the printed opinion of Judge Benedict, as will be fully explained in the brief. The question was raised. The same facts as to prior use admitted here were proved there and fully considered, and the construction of the statute contended for distinctly approved."

"Third. Being under the erroneous impression that this Court had not construed the section, and that the construction of it had not arisen in the other driven well cases, the Court, in construing it, omitted to give due weight to the unbroken current of executive and judicial authority in favor of the construction upon which the appellants so confidently relied that they did not deem an oral argument on the point necessary."

"They now beg leave to refer to their brief in support of the assertion that from 1839 to the decision of this case at the circuit court, the construction of the section making the consent and allowance of the inventor to a use of more than two years necessary in order to invalidate the patent has been uniformly acted upon by the Patent Office in promulgating its rules and making its grants to inventors under them, and has been sustained in very numerous opinions by the following justices of this court, viz., Justices Woodbury, Story, Baldwin,

Page 124 U. S. 697

Grier, Nelson, Clifford, Daniel, Curtis, and Blatchford, and by the following judges of the Circuit Courts, viz., Judges Woodruff, Shepley, Lowe11, Blatchford, Benedict, Drummond, Nelson, Dillon, and Wheeler, and by the following judges of the Supreme Court of the District of Columbia, viz., Judges Cranch, Morsell, Merrick, Dunlop, and Fisher, and by the long line of Patent Commissioners from 1839 to 1870, and has been recognized by all textbooks and counsel learned in patent law."

"Fourth. The principles laid down by this court in a number of decisions within a few years past (referred to in the brief) in applying the doctrine of stare decisis to the construction of statutes would, as your petitioners respectfully but confidently suggest (if attention has been properly called to the great and uniform current of authorities upon it and the extent to which private rights granted under it have reposed upon confidence in its permanency), have led the Court, whatever might have been its own view of this section, to have left its long-settled construction undisturbed; and that the rule laid down in United States v. Pugh, 99 U. S. 265, would have been followed, in which case it was said, as to the construction of a statute:"

" While therefore the question is one by no means free from doubt, we are not inclined to interfere at this late day with a rule which has been acted upon by the Court of Claims and the exec active for so long a time."

"Fifth. The counsel of your petitioners, in their confidence in this construction so long settled, failed to explain to the court, in making their admission as to use, that it was not at all a general use by others, but only the use of a few wells in the town where Green made the invention, by Lieutenant Mudge, a subordinate of his regiment, and Kludge's hired man, Suggett, who derived knowledge through Green's experiments, and who were afterwards defeated in the Patent Office as contestants with him, upon full proof of the public use they had made without his consent or knowledge, and that that use was surreptitious and a piracy of his invention."

"Sixth. The construction of the section, as now made by the Court, overthrowing the uniform decisions which your petitioners now submit for consideration would produce the evils

Page 124 U. S. 698

and hardships pointed out in the decisions cited, and would, in the case of all patents governed by the act of 1839, cause all specific articles surreptitiously made before application to be protected, and all patents to be invalidated by two years' use by a pirate of the invention, contrary to equity, and to the real object of the statute as defined in all the cases in which it has been construed, whereas not even under the present act can the patentee be deprived of his franchise by a surreptitious prior use."

"Seventh. The counsel of your petitioners, still relying too confidently on the settled construction of the section, wholly omitted to point out to the court, that said statute does not apply to Green's patent at all, which is for a 'process,' but only to tangible specific articles capable of being constructed, used, or sold by delivery, and they neglected to refer the Court to the authorities sustaining this position, which they now do in the brief submitted."

"Eighth. The counsel for appellants referred the court to its statement in Manning v. Isinglass Co., 108 U. S. 462, that the"

"statute of 1836, 5 Stat. 117, § 6, did not allow the issue of a patent when the invention had been in public use or on sale for any period, however short, with the consent or allowance of the inventor, and the statute of 1870, 16 Stat. 201, § 24, does not allow the issue when the invention has been in public use for more than two years prior to the application, either with or without the consent or allowance of the inventor."

"They regarded this as clearly showing the view of this Court that this important change was made by the general revision of 1870, and not by the mere additional act of 1839, and they did not think it necessary to verify it by reference to the legislative records."

"A careful examination of those records discloses the fact that this statement, made by Mr. Justice Woods, was strictly correct; that the Congress, in making the revision of 1870, regarded the then existing law as requiring consent or allowance, and deliberately made the change."

"If this be true, the present construction of the section is inconsistent with the view of the Court in the Isinglass case and with the legislative view in the revision of 1870. "

Page 124 U. S. 699

"To the end, therefore, that equity may be done and that this Court may, upon fuller consideration and with the advantage of oral argument, revise its former opinion (if revision be right and proper), your petitioners pray that the Court may be pleased to take their suggestions under careful consideration and grant a rehearing upon the points upon which said decision was based, and grant such other relief and order as in equity and good conscience may be proper."

"Newark, N.J., January 16, 1888."



"Of Counsel with Appellants"

Page 124 U. S. 700

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