1. Letters patent No. 66,801, issued July 31, 1866, to William
Roomer, for an improvement in traveling bags, cannot be sustained,
as the thing patented was, before his alleged invention, known and
extensively used by others in this country.
2. Where, after setting up the defense of prior knowledge and
use of the thing patented, and giving the names and residences of
witnesses intended to be called to prove the defense, the answer to
a bill for the infringement of letters patent alleges that the
names and residences of certain other witnesses are unknown to the
defendant, and prays leave to insert and set forth in the answer
such names and residences when they shall be discovered, it is
competent for the court to allow, upon such discovery, the
amendment to be made nunc pro tunc.
This is a suit by William Roemer against the appellee for the
infringement of letters patent No. 56,801, granted to him July 31,
1866, for an improvement in traveling bags.
The answer set up among the defenses the want of novelty of the
improvement, and the knowledge and use of it prior to the alleged
invention of the complainant.
Upon the final hearing, the court below dismissed the bill
whereupon the complainant appealed here.
The other facts are set forth in the opinion of the Court.
Page 95 U. S. 215
MR. JUSTICE CLIFFORD delivered the opinion of the Court.
Patentees or assignees in a suit for infringement, where the
patent described in the bill of complaint is introduced in
evidence, are presumed to be the original and first inventors of
the described improvement, and if they have proved the alleged
infringement, the burden of proof is cast upon the respondents to
show that the patent is invalid unless the patent is materially
defective in form.
Parties defendants sued as infringers are not allowed, in an
action at law, to set up the defense of a prior invention,
knowledge, or use of the thing patented unless they have given
notice of such defense in writing thirty days before the trial, and
have stated in that notice
"the names of the patentees and the dates of their patents
alleged to have been invented, and the names and residences of the
persons alleged to have invented or to have had the prior knowledge
of the thing patented, and where and by whom it had been used."
16 Stat. 208; Rev.Stat., sec. 4920; Seymour v.
11 Wall. 516; Blanchard
8 Wall. 420.
Since the passage of the Act of the 8th of July, 1870, the
regulation in equity suits is that defenses such as are described
in sec. 61 of that act "may be pleaded in any equity suit for
relief against an alleged infringement, and that proof of the same
may be given upon like notice in the answer of the respondent, and
with like effect." 16 Stat. 208.
Service was made, and the respondents appeared and filed an
answer, in which they deny that they have ever in any way infringed
the letters patent described in the bill of complaint; and they
also set up several other defenses, as follows:
1. That the specification filed in the Patent Office contains
less than the whole truth relative to the invention, or more than
is necessary to produce the described effect.
2. That the patent was surreptitiously and unjustly obtained for
that which was in fact invented by another.
3. That the alleged invention had been patented prior to the
supposed invention by the complainant.
4. That the alleged invention had been described in
Page 95 U. S. 216
a certain publication prior to the alleged invention by the
5. That the complainant was not the original and first inventor
of the supposed improvement; that the same had been previously
invented and known and used by the persons named in the answer, and
by many other persons whose names are unknown to the respondents,
which, when discovered, the respondents pray leave to insert and
set forth in the answer.
Proofs were taken on both sides; and the parties went to hearing
upon bill, answer, replication, and the proofs exhibited in the
record. Both parties were fully heard, and the court entered a
decree in favor of the respondents, dismissing the bill of
complaint, and the complainant appealed to this court.
Three errors are assigned, in substance and effect as
1. That the court did not give due effect to the agreement
between the parties which was introduced in evidence by the
2. That the evidence introduced by the respondents to prove use
and knowledge of the thing patented prior to the patent granted to
the complainant was insufficient to establish that defense.
3. That the court erred in admitting evidence to prove such
prior use and knowledge, or which no notice had been given in the
Questions not involved in the assignment of errors will be
passed over without examination.
1. By the articles of agreement, the respondents agreed that
"they will not manufacture or use the clasp or catch
manufactured by a certain firm therein mentioned without the
consent of the complainant, his executors, administrators, or
They did not agree not to manufacture or use the thing patented
in the complainant's patent. Instead of that, the charge in the
bill of complaint is that the respondents have manufactured and
sold to others large quantities of traveling bags in violation of
he complainant's rights and privileges under his letters patent.
Attempt is made to show that the clasp or catch manufactured by the
firm referred to in the agreement is the same as that of the
complainant, but that is a question of fact open to controversy,
which is sufficient to show that the agreement does not work an
estoppel, as supposed by the respondents. Curtis on Patents (4th
ed.), sec. 217.
Much reference to the specification is unnecessary, as the
Page 95 U. S. 217
defense, that the respondents have not infringed the supposed
invention, is not pressed in the argument for the appellee. My
invention, says the patentee, consists in the application of two
staples or clamps, one at or near each end, to the frame of a
traveling bag in such a manner that when the bag is packed full the
staples or clamps shall fasten the ends or corners together. In the
same connection he also describes a mode of fastening the staples
or clamps to the frame of the bag by a strap which passes over the
center of each staple; and he adds, that the staple or clamp "is
made of strong iron turned down at each end." Sufficient
description is given of the staple or clamp; but the strap is not
described except by being exhibited in the drawings.
Clamps, the patentee admits, have before been applied to small
and fancy bags instead of a lock at or near the center of the
frame, and therefore he does not claim the application of clamps or
staples broadly; but, says the patentee, what I claim as my
invention and desire to secure by letters patent is a frame for
traveling bags having staples and straps, meaning the described
staple and strap adjusted at the top thereof, relieving the lock
from strain, as combined, arranged, and described.
Suffice it to say that it is obvious from an inspection of the
specification that the real invention, if any, is in the staples or
clamps, and perhaps in the arrangement of two of them at the top of
the frame. Doubtless one method of arrangement may be better than
another; but the particular method of attachment to the frame
cannot be very material, as any mechanic, if furnished with the
clamps, could affix the device in various equivalent ways.
Five witnesses admitted to be credible were examined by the
respondents, whose testimony clearly shows that the thing patented
had been previously known and used very extensively in this country
by the persons named in the answer and by many others.
Exclusive rights of the kind are granted only to inventors or
discoverers of some new and useful art, machine, manufacture, or
composition of matter, or some new and useful improvement thereof,
and the law is well settled that nothing short of invention
Page 95 U. S. 218
or discovery will support a patent for any such alleged new and
useful improvement. Certain other important conditions are also
annexed to the exercise of the right to obtain such a muniment of
title for such an invention or discovery, as, for example, the
improvement must not only be new and useful, but it must be one not
known or used by others in this country and not patented, or
described before the invention or discovery in any printed
publication in this or any foreign country, and must not have been
in public use or an sale more than two years prior to the
application for a patent. 16 Stat. 201; Rev.Stat. sec. 4886;
Collar Company v. Van
23 Wall. 531; Dunbar v. Myers,
94 U. S.
Antecedent patents here or elsewhere are not set up in the
answer, and it is clear that proof of prior use in a foreign
country will not supersede a patent granted here, unless the
alleged invention was patented in some foreign country. Proof of
such foreign manufacture and use, if known to the applicant for a
patent, may be evidence tending to show that he is not the inventor
of the alleged new improvement; but it is not sufficient to
supersede the patent if he did not borrow his supposed invention
from that source, unless the foreign inventor obtained a patent for
his improvement, or the same was described in some printed
Doubt upon that subject cannot be entertained, but it is equally
clear that if the alleged improvement had been previously patented
here or in a foreign country, or if it had been previously known or
used by others in this country, or if it had been in public use or
on sale for more than two years prior to his application for a
patent, the letters patent cannot be sustained. 16 Stat. 201.
Competent proof of a prior patent anywhere is entirely wanting,
nor is there any satisfactory evidence that the invention was
previously described in any printed publication; but the evidence
shows beyond any reasonable doubt that the thing patented was known
and used extensively by others in this country before the invention
or discovery made by the patentee, as set forth and described in
the bill of complaint. Such was the finding of the court below; and
the evidence is so full to the point, and is so fully set forth in
the record and in the opinion
Page 95 U. S. 219
delivered in the circuit court, that it is not necessary to
reproduce it in the present opinion.
Suppose that is so, still it is insisted by the complainant that
the testimony of two of the witnesses should have been excluded,
because their names and residences were not set forth in the answer
as persons alleged to have had a prior knowledge of the thing
Written notice of the names of the witnesses intended to be
called by the defendant or respondent to prove such a defense is
not required by the act of Congress. Instead of that, the
requirement is that the defendant party shall state the names of
the patentees, and the dates of their patents and when granted,
"the names and residences of the persons alleged to have
invented or to have had the prior knowledge of the thing patented,
and where and by whom it had been used."
16 Stat. 208.
Notice of the kind is required, in order to guard the moving
party from being surprised at the trial by a defense of a nature
which he could not be presumed to know or be prepared to meet; and,
to prevent such consequences, the defendant or respondent is
required to state
"the names and residences of the persons alleged to have
previously invented the improvement, or to have the prior knowledge
of the thing patented, and where and by whom it had been used."
23 How. 2.
Prior use and knowledge of the thing patented may be pleaded as
a defense to a suit for infringement; but the respondent cannot be
allowed to give evidence to support such defense, if seasonable
objection be made, unless it appears that he gave notice in his
answer of the names and residences of the persons alleged to have
had such prior knowledge of the thing patented. Blanchard
8 Wall. 420.
Seasonable objection was made in that case by the plaintiff, the
suit being an action at law, and the court held that the evidence
was not admissible without an antecedent compliance with the
conditions of the patent act; but the case before the court is
clearly distinguished from that in several particulars. Due notice
was given in the answer that the invention and every material and
substantial part thereof had been previously
Page 95 U. S. 220
invented and used by and was known to certain persons therein
named, twelve in all; and the respondents in due form stated the
names and residences of the persons alleged to have had such prior
knowledge, and where and by whom the invention had been used.
Superadded to that, they also alleged that the supposed invention
had previously been known to and used by many other persons to the
respondents unknown; and they prayed leave, as before remarked,
that, when discovered, they might be permitted to insert and set
forth their names in the answer. Pursuant to that reservation, two
witnesses were examined upon that subject by the respondents
without objection; nor does the record, irrespective of the opinion
of the court, show that any objection to the admissibility of the
evidence was ever made.
Previous notice of the examination of those two witnesses, it
seems, was not given; but the presiding justice states that, if
seasonable objection had been made, the evidence would have been
excluded. None such was made, and it is well settled law that the
failure to interpose any such objection before the final hearing is
a waiver of the required notice in an equity suit. Brown v.
6 Blatch. 405.
Explicit notice was given in the answer that such a defense
would be made, and that leave to amend the answer would be asked in
case the names and residences of other persons having like
knowledge in that regard should be discovered; and, when such a
discovery was made, the respondents in due form applied to the
court for leave to insert their names and residences in the answer.
Viewed in the light of these circumstances, we are all of the
opinion, that it was clearly competent to allow the proposed
amendment. Teese v. Huntington, supra.
Authority to grant the amendment being established, it follows
that the court might properly allow it to be entered nunc pro
as originally prayed in the answer. Due notice was there
given that such defense would be made, and that the respondents
would move to insert the names and residences of other persons when
discovered. Such notice prevented surprise, and fully justified the
court in allowing the amendment and making the order in the form
exhibited in the record.
Page 95 U. S. 221
Suppose the rule were otherwise, still a new hearing would not
benefit the complainant, as the testimony of the other three
witnesses is abundantly sufficient to establish the defense of
prior knowledge and use.