An inventor applied September 3, 1881, for letters patent for an
"improvement in the construction of cable railways," the invention
consisting in the employment of a connecting tie for the rails and
supports for the slot irons by which both are rigidly supported
from the tie and united to each other, the ties or frames being
embedded in concrete, and the rails, the slot irons, and the tube
being thus connected in the same structure. The invention was
conceived in 1876 and used by the inventor in constructing a cable
road which was put into use in April, 1878, and of which he was
superintendent until after he applied for the patent, which was
granted in August, 1882.
Held, on the facts:
(1) The use of the invention was not experimental.
(2) The inventor reserved no future control over it.
(3) He had no expectation of making any material changes in it,
and never suggested or made a change after the structure went into
use, and never made an examination with a view of seeing whether it
was defective or could be improved.
(4) The use was such a public use as to defeat the patent.
(5) The case of
Elizabeth v. Pavement Co., 97 U. S.
126, considered, and the present case held not to fall
within its principles.
This is a suit in equity, brought July 12, 1886, in the Circuit
Court of the United States for the Southern District of New York,
by Henry Root against the Third Avenue Railroad
Page 146 U. S. 211
Company, founded on the alleged infringement of letters patent
No. 262, 126, granted August 1, 1882, to the plaintiff, for an
"improvement in the construction of cable railways" on an
application filed September 3, 1881.
The specification of the patent says:
"My invention relates to cable railways, and it consists in the
employment of a connecting tie for the rails and supports for the
slot irons by which both are rigidly supported from the tie and
united to each other. In combination with this construction, I
employ a substratum of concrete or equivalent material which will
set or solidify and unite the whole into a continuous rigid
structure, no part of which is liable to be displaced from its
relation to the other, and also provide a support for the roadway.
Previous to my invention, all cable railways had been constructed
of iron ribs of the form of the tube, set at suitable intervals, to
which the slot iron or timber, as the case may be, was bolted, and
the spaces between these ribs filled with wood, to form a
continuous tube. Outside, and independent of this tube, the rails
were laid, supported on short ties or other foundations, and were
connected horizontally with the iron ribs by short bolts or rods,
but were liable to settle by the undermining of their foundation,
without regard to the tube or the other rail of the track. This
would frequently occur by the renewal of the paving outside of the
track, the introduction of house connections with the main sewer,
or other disturbances of the street. This settling would cause
great inconvenience, as the gripping apparatus, which is carried by
the rail through the medium of the car or dummy, must travel in a
fixed position in the tube, thus making a frequent adjustment of
the rails to the tube necessary. The space between the rails and
sides of the tube was filled with sand, which could not be securely
confined, as the joints in the tube were liable to open by
settling, so as to require a frequent relaying of the paving or
planking, and making the whole insecure and expensive to maintain.
In my invention, the whole forms a single, rigid structure."
The following are the drawings of the patent, Fig. 1 being a
cross-section and Fig. 2 a perspective view:
Page 146 U. S. 212
image:a
The specification says:
"A is the main tie, bent so as to embrace the tube, and it has
fastened to the ends suitable formed plates or chairs, B, to which
the rails, G, are fastened, or, if stringers are used, they may be
fastened directly to the
Page 146 U. S. 213
ties. The ties may be of various shapes, but in this case I have
used old T-rail, turned bottom up, with but one curve or bend, as
this requires but one heat, and is thus cheaper. C are upright
supports for the slot irons, having one end secured to the tie at
points each side of the bend, sufficiently separated to form the
necessary width for the tube. D are tie-rods, connecting said
supports with the main ties or frames, through the chairs, rails,
or stringers, as the case may be. The rods, D, may be fixed or may
be screw bolts, having two nuts at one end for the adjustment of
the slot irons to or from each other during construction, or other
equivalent means may be employed. E is the concrete, in which the
ties or frames are imbedded at suitable distances to support the
rails and slot irons, which form the top of the tube. This concrete
forms a support for the ironwork, the bottom and sides of the tube,
and a foundation for the paving, F, which fills the space between
the rails and slot iron, thus forming an even and durable roadway,
which cannot settle below the level of the rails or slot irons, or
cause a side pressure on the tube, as is the case where the roadway
is supported on sand or other independent foundation. As nearly all
the weight of the traffic is on the rails, the tendency of the
rails to go down is resisted by a deep girder, of which the bent
tie forms the top and this continuous mass of concrete forms the
bottom. I am aware that concrete, as a material for foundations,
underground sewers, and conduits, has long been well known, and
that concrete, brickwork, or ironstone pipe might be used to form
the tube between the iron ribs of the well known construction
without any particular invention, as these materials are as well
known as wood; but it would be still subjected to all the danger of
unequal settlement, and the short tie and stringer of wood require
frequent renewal and adjustment to the level of the tube. It will
be seen that a distinguishing feature of my invention is the
connecting of the rails in the same structure as the slot irons and
the tube, so that all the parts are maintained in their relative
position, and whatever may occur to alter the place of one will
have no effect, unless the change is sufficient to affect the whole
structure."
There are seven claims in the patent.
Page 146 U. S. 214
The answer sets up in defense a denial of the allegation of the
bill that the alleged invention was not in public use or on sale
for more than two years prior to the application for the patent,
and it alleges that the invention had been in public and profitable
use in the United States for more than two years before the date of
the application. It also sets up want of novelty and
noninfringement.
There was a replication to the answer, proofs were taken, and
the case was brought to a hearing before the circuit court, held by
Judge Wallace, and a decree was entered dismissing the bill. From
that decree the plaintiff has appealed.
The opinion of the circuit court, found in 37 F. 673, passed
upon a single question. The Invention was put into use on the
California Street railroad, a cable road in the City of San
Francisco, on April 9, 1878, the road having been built by the
plaintiff and put into regular operation at that time, and, as
constructed, having embodied in it the invention described in the
patent. The defendant contended that such use was a public use of
the patented invention more than two years before the application,
and that therefore the patent was invalid. The plaintiff contended,
and now contends, that such use was an experimental use, and that
the application was filed within two years after the plaintiff
became satisfied that his invention was a practical success.
Section 4886 of the Revised Statutes, which was in force when
this patent was applied for and issued, enacts that a patent may be
obtained when the invention has not been "in public use or on sale
for more than two years prior to the application;" and § 4920
provides that it may be pleaded and proved as a defense in a suit
at law or in equity on the patent that the invention "had been in
public use or on sale in this country for more than two years
before" the application, or had been abandoned to the public.
From the time the cable road mentioned was put into operation,
no change or modification was made in its plan or its details. In
the summer of 1876, between May and the 1st of September, the
plaintiff conceived the invention. Early in that year, certain
persons in California obtained a franchise for the
Page 146 U. S. 215
construction of a wire cable road on California Street in San
Francisco, and the plaintiff was led to believe that he would be
called upon as an engineer to construct the road. He immediately
commenced studying up the matter, to be prepared to recommend a
plan of construction whenever called upon. He testifies that he
deemed it necessary in a cable road to get a smooth, even roadway
and track, and the tube or tunnel way for the cable and its
carrying machinery strong enough to resist any tendency towards the
closing of the slot, to provide for the grip shank, and to make a
structure as a whole so permanent and durable as to stand the wear
and jar of heavy street traffic as well as of the car traffic which
it was to carry, and that for that purpose he deemed it necessary
to have a rib or yoke, with connections to the two rails and the
two slot irons, so as to connect them permanently, such yoke to be
imbedded in and supported by a surrounding mass of concrete to form
a support and foundation for the ribs or yokes, the bottom and
sides of the cable tube or tunnel, and a foundation for the paving
of the roadway. He says that he explained this invention to several
persons prior to September 2, 1876, and on that day discussed the
subject and explained the invention in a general way at a meeting
of the directors of the proposed road. Between that time and
January 1, 1877, he made a model containing two of the ribs, with
an outside casing and cover, and had the space between filed in
with concrete, encasing the skeleton ribs and forming "the shut
section" of the completed track and tube.
His invention was adopted by the projectors of the railroad, and
active work was commenced upon the structure in July, 1877. The
road cost, with the equipment, $418,000, and is about two miles in
length, the roadbed and tunnel construction having cost about
$225,000. From April 9, 1878, it has been in regular and successful
use as a street railroad, carrying passengers for pay. The
plaintiff was superintendent of the road from that time until the
date of his application for the patent, and afterwards until
1883.
In explanation of his delay in applying for the patent, he
testifies that before he began the construction of the road,
one
Page 146 U. S. 216
of the projectors expressed a doubt in regard to the durability
of such a structure, and a fear that the jar of street traffic, as
well as that of the cars, would in time loosen the ribs and
separate them from the surrounding concrete, and the structure
would thus fail; that doubts were expressed also by others; that
while the plaintiff believed that there was more than an even
chance of its proving a durable and desirable structure, he still
had some doubt in his own mind, which was somewhat increased by the
doubts expressed to him by others, in whom he had confidence; that,
as causes which would contribute to the destruction of the road,
there were (1) the moving of cars over a rail connected to ironwork
without the intervention of any wood; (2) the street traffic of
trucks and teams, to which such a structure would necessarily be
exposed; (3) the changes of temperature, and (4) the effect of
time, and the danger of water following down the different members
of the iron work, and the rust separating them from the concrete,
and that there was no way of determining these matters but by a
trial in a public street through a long period of time.
He was asked whether his own doubts as to the durability of the
structure were present at any time after the road was in operation,
and if so, when and by what they were caused. He answered "Yes,"
and said that during the spring of 1879, the road was extended from
Fillmore Street to Central Avenue by a wooden structure not nearly
so durable or costly as the original road; that in preparing for
the extension, he had occasion to dig out and around, so as to
expose some of the old structure; that he saw therein some
indication of the loosening of the yokes in the concrete, and that
he had some little fear at that time that some trouble might arise
in that respect. He further testifies that the reason he did not
apply for the patent within two years from the time when he first
put the structure into use was that if it proved weak or
undesirable, he did not want any patent, and he did not feel
certain enough of that fact until the year 1881.
But it does not appear that he expressed his doubts to the
projectors of the road, either before its construction was
commenced, or during its construction, or while he remained its
Page 146 U. S. 217
superintendent after it was completed, or that he communicated
to anyone what he noticed during the spring of 1879, or that he
entertained any fear arising therefrom.
MR. JUSTICE BLATCHFORD delivered the opinion of the Court.
The circuit court truly says, in its opinion:
"Manifestly the complainant received a consideration for
devising and consenting to the use of an invention which was
designed to be a
Page 146 U. S. 221
complete permanent structure, which was to cost a large sum of
money and which he knew would not meet the expectation of those who
had employed him unless it should prove to be in all respects a
practically operative and reasonable durable one. If he had
entertained any serious doubts of its adequacy for the purpose for
which it was intended, it would seem that he would not have
recommended it in view of the considerable sum it was to cost. At
all events, he did not treat it as an experimental thing, but
allowed it to be appropriated as a complete and perfect invention,
fit to be used practically, and just as it was, until it should
wear out, or until it should demonstrate its own unsuitableness. He
turned it over to the owners without reserving any future control
over it, and knowing that, except as a subordinate, he would not be
permitted to make any changes in it by way of experiment, and at
the time he had no present expectation of making any material
changes in it. He never made or suggested a change in it after it
went into use, and never made an examination with a view of seeing
whether it was defective, or could be improved in any
particular."
It is contended by the plaintiff that the principles recognized
by this Court in
Elizabeth v. Pavement Co., 97 U. S.
126, establish the patentability of the plaintiff's
invention notwithstanding its embodiment in the California Street
railroad. But the circuit court held that the proofs in the present
case did not show a use of the invention substantially for
experiment, but showed such a public use of it as must defeat the
patent. The court further said that the facts were in marked
contrast with those in
Elizabeth v. Pavement Co., because
there the use was solely for experiment.
In
Elizabeth v. Pavement Co., the original patent was
granted in August, 1854. The invention dated back as early as 1847
or 1848. Nicholson, the inventor of the pavement in question in
that case, filed a caveat in the Patent Office in August, 1847,
describing the invention. He constructed a pavement, by way of
experiment, in June or July, 1848, in a street near Boston, which
comprised all the peculiarities after wards described in his
patent, the experiment being successful.
Page 146 U. S. 222
The pavement so put down in Boston in 1848 was publicly used for
a space of six years before the patent was applied for, and it was
contended that that was a public use within the meaning of the
statute. This Court, speaking by Mr. Justice Bradley, said that it
was perfectly clear from the evidence that Nicholson did not intend
to abandon his right to a patent, he having filed a caveat in
August, 1847, and having constructed the pavement in Boston by way
of experiment for the purpose of testing its qualities; that he was
a stockholder in, and treasurer of, the corporation which owned the
road in Boston where the pavement was put down, and which
corporation received toll for its use, and that the pavement was
constructed by him at his own expense, and was placed by him there
in order to see the effect upon its of heavily loaded wagons, and
of varied and constant use, and also to ascertain its durability,
and liability to decay. It was shown that he was there almost
daily, examining it and its condition, and that he often walked
over it, striking it with his cane. This Court held that if the
invention was in public use or on sale prior to two years before
the application for the patent, that would be conclusive evidence
of abandonment, and the patent would be void, but that the use of
an invention by the inventor, or by any other person under his
direction, by way of experiment and in order to bring the invention
to perfection, had never been regarded as a public use of it, and
it added:
"The nature of a street pavement is such that it cannot be
experimented upon satisfactorily except on a highway, which is
always public. 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
Page 146 U. S. 223
he may be justly said to be using 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 statutes. So long
as he does not voluntarily allow others to make it and use it, and
so long as it is not on sale for general use, he keeps the
invention under his own control, and does not lose his title to a
patent. It would not be necessary in such a case that the machine
should be put up and used only in the inventor's own shop or
premises. He may have it put up and used in the premises of
another, and the use may inure to the benefit of the owner of the
establishment. Still, if used under the surveillance of the
inventor, and for the purpose of enabling him to test the machine
and ascertain whether it will answer the purpose intended, and make
such alterations and improvements as experience demonstrates to be
necessary, it will still be a mere experimental use, and not a
public use, within the meaning of the statute. Whilst the supposed
machine is in such experimental use, the public may be incidentally
deriving a benefit from it. If it be a grist mill, 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. If now
we apply the same principles to this case, the analogy will be seen
at once. Nicholson wished to experiment on his pavement. He
believed it to be a good thing, but he was not sure, and the only
mode in which he could test it was to place a specimen of it in a
public roadway. He did this at his own expense, and "
brk:
with the consent of the owners of the road. Durability was one
of the qualities to be attained. He wanted to know whether his
pavement would stand, and whether it would resist decay. Its
character for durability could not be ascertained without its being
subjected to use for a considerable time. He subjected it to such
use, in good
Page 146 U. S. 224
faith, for the simple purpose of ascertaining whether it was
what he claimed it to be. Did he do anything more than the inventor
of the supposed machine might do in testing his invention? The
public had the incidental use of the pavement, it is true, but was
the invention in public use, within the meaning of the statute? We
think not. The proprietors of the road alone used the invention,
and used it at Nicholson's request by way of experiment. The only
way in which they could use it was by allowing the public to pass
over the pavement. Had the City of Boston, or other parties, used
the invention, by laying down the pavement in other streets and
places, with Nicholson's consent and allowance, then indeed the
invention itself would have been in public use within the meaning
of the law; but this was not the case. Nicholson did not sell it
nor allow others to use it or sell it. He did not let it go beyond
his control. He did nothing that indicated any intent to do so. He
kept it under his own eyes, and never for a moment abandoned the
intent to obtain a patent for it. In this connection it is proper
to make another remark. It is not a public knowledge of his
invention that precludes the inventor from obtaining a patent for
it, but a public use or sale of it. In England formerly as well as
under our patent act of 1793, if an inventor did not keep his
invention secret, if a knowledge of it became public before his
application for a patent, he could not obtain one. To be
patentable, an invention must not have been known or used before
the application; but this has not been the law of this country
since the passage of the act of 1936, and it has been very much
qualified in England.
Lewis v. Marling, 10 B. & C. 22.
Therefore, if it were true that during the whole period in which
the pavement was used, the public knew how it was constructed, it
would make no difference in the result. It is sometimes said that
an inventor acquires an undue advantage over the public by delaying
to take out a patent, inasmuch as he thereby preserves the monopoly
to himself for a longer period than is allowed by the policy of the
law; but this cannot be said with justice when the delay is
occasioned by a
bona fide effort to bring his invention to
perfection, or to ascertain whether it
Page 146 U. S. 225
will answer the purpose intended. His monopoly only continues
for the allotted period in any event, and it is the interest of the
public, as well as himself, that the invention should be perfect
and properly tested before a patent is granted for it. Any attempt
to use it for a profit, and not by way of experiment, for a longer
period than two years before the application would deprive the
inventor of his right to a patent.
We think that the present case does not fall within the
principles laid down in
Elizabeth v. Pavement Co. The
plaintiff did not file a caveat, and there is no evidence that he
did not intent to abandon his right to a patent. It does not appear
that any part of the structure was made at his own expense, or that
he put it down in order to ascertain its durability or its
liability to decay, or that what he says he noticed in the spring
of 1879 led him to make any further examination in that respect, or
to test further the fear which he says he had at that time, or that
what he then saw led him to think that the structure was weak or
undesirable. It cannot be fairly said from the proofs that the
plaintiff was engaged in good faith, from the time the road was put
into operation, in testing the working of the structure he
afterwards patented. He made no experiments with a view to
alterations, and we are of opinion, on the evidence, that
sufficient time elapsed to test the durability of the structure and
still permit him to apply for his patent within the two years. He
did nothing and said nothing which indicated that he was keeping
the invention under his own control.
In
Smith & Griggs Mfg. Co. v. Sprague, 123 U.
S. 249,
123 U. S.
256-257, it was said, Mr. Justice Matthews speaking for
the Court:
"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 principal, and not the
incident, must give character
Page 146 U. S. 226
to the use. The thing implied as excepted out of the prohibition
of the statute is a use which may be properly characterized as
substantially for 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 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, any yet during that period in which its use by another
would have defeated his 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?"
In that case,
Elizabeth v. Pavement Co., supra, was
cited with approval, and it was said, p.
123 U. S.
264:
"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 there 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 test 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."
The Court came to the conclusion that the patentee unduly
neglected and delayed to apply for his patent, and deprived himself
of the right thereto by the public use of the machine in question,
and that the proof fell 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.
Page 146 U. S. 227
So too, in
Hall v. MacNeale, 107 U. S.
90,
107 U. S. 96-97,
it was contended that the use there involved was a use for
experiment; but the Court answered that the invention was complete,
and was capable of producing the results sought to be accomplished;
that the construction, arrangement, purpose, mode of operation, and
use of the mechanism involved were necessarily known to the workmen
who put it into the safes, which were the articles in question;
that, although the mechanism was hidden from view after the safes
were completed, and it required a destruction of them to bring it
into view, that was no concealment of it or use of it in secret;
that it had no more concealment than was inseparable from any
legitimate use of it, and that, as to the use being experimental,
it was not shown that any attempt was made to expose the mechanism,
and thus prove whether or not it was efficient.
In
Egbert v. Lippmann, 104 U.
S. 333,
104 U. S. 336,
the Court remarked:
"Whether the use of an invention is public or private does not
necessarily depend upon the number of persons to whom its use is
known. If an inventor, having made his device, gives or sells it to
another, to be used by the donee or vendee, without limitation or
restriction or injunction of secrecy, and it is so used, such use
is public, within the meaning of the statute, even though the use
and knowledge of the use may be confined to one person."
Without examining any other of the defenses raised, we are of
opinion that the bill must be dismissed for the reason stated by
the circuit court.
Decree affirmed.
