47 F. 515 | U.S. Circuit Court for the District of Southern New York | 1891
This suit is brought upon patent No. 48,920, granted May 24, 1864, on an application filed May 13,1864, to James Knibbs, assignor, for a relief-valve in steam fire-engine pumps. It was heard in 1881, and the patent was sustained notwithstanding evidence that the Amoskoag Manufacturing Company of Manchester, N. H., had constructed and sold engines containing the invention more than two years before the application for the patent, because one was made to contain it at the request of the inventor lor experiment, and the others were made to contain it and sold without his consent and allowance. 20 Biatchf. 67, 9 Fed. Rep. 500. After the decision in Andrews v. Hovey, 128 U. S. 267, 8 Sup. Ct. Rep. 101, and 124 U. S. 694, 8 Sup. Ct. Rep. 676, that the consent and allowance of the inventor was not necessary to defeat a patent by prior construction and use of the invention by others, the defendant moved for a rehearing, on which the patent was for this cause held to be invalid. 35 Fed. Rep. 504. After that, on motion of the orator, the proofs were opened as to use of the invention by the Amoskeag Manufacturing Company prior to the application for the patent. 36 Fed. Rep. 260. And after this leave was granted for an amendment of the answer, and for evidence as to the construction of relief-valves on the feed-pumps of the United States naval steamship Powhatan in 1852, and on the steam-ship Knoxville in 1854, and use of them afterwards. Much evidence has been taken upon these issues, and the cause has now been heard on these questions upon all the proofs. The proofs show clearly that the feed-pumps of the Powhatan did have an automatic relief-valve, working against a weight on an outside tubo, for the return of the excess of water not needed by the boilers from the discharge to the supply side of the pumps; and that the feed-pumps of the Knoxville had such a valve within the pumps, working against a spring, for the same purpose. If the patent was only for the process of returning any excess of water from the discharge to
The Amoskeag Manufacturing Company built the steam fire-engine Arba Reade for the city of Troy, and delivered it there in March, 1860. Knibbs was foreman having it in charge. He put this invention, in a rather crude form and make, on the outside of that engine. It worked well, but he thought he could improve it. The city wanted another engine, to be called the J. C. Osgood. At his request the authorities consented that the invention should be built into it for further experiment. In July, 1861, the agént and superintendent of that company were at Troy, negotiating for building it, and were shown the invention. Some one suggested that the valve might be made to work through the shell of the pump to a seat on an opening in a recess to one side of a part of the partition between the suction and discharge sides of the pump, so that the water could be pumped round and round through that opening. They agreed to build the engine in that way. On their
If mere constructing, selling, and using more than two years before the application ior the patent what would have been an anticipation, if made before the invention would defeat a patent, then the construction, delivery, and use of the Phoenix and Atlantic, or either, would defeat this patent. Exactly who suggested an opening in a recess of the partition between the discharge and suction sides of the pump for a seat to the valve in the Osgood is not clear; and whether it would work well, or, with the valve, bo an obstruction, was doubtful; but, if any of those who put it into the Phoenix did and had got a patent for it, the provision of the act of 1836, that a patent surreptitiously or unjustly obtained “for that which was in fact invented or discovered by another, who was using reasonable diligence in adapting and perfecting the same,” might be defeated by pleading and proving these facts, was in force; and it could have been defeated by pleading and proving what Knibbs was doing, and the invention would have been left to him. 5 St. p. 117, § 15. Construction, salo, and use without a patent would not seem to have greater force than a patent which would cover them, unless made to so have by positive statute. However that, may he, this provision shows that an inventor following up his invention has an inchoate right to it protected bylaw. Putting this invention into the Phoenix and Atlantic and other engines, if any, at that time, was an unlawful, and therefore an unjust, invasion of this right in Knibbs. This might defeat the right to use these specific engines under the first clause of section 7 of the act of 1839, (5 St. p. 353.) Kendall v. Winsor, 21 How. 322. Homo of the construction and use there was more than two years prior to the application, and would seem, if lawful, to have been adequate to defeat the patent under the second clause of that section. Andrews v. Hovey, 123 U. S. 267, 8 Sup. Ct. Rep. 101, 124 U. S. 694, 8 Sup. Ct. Rep. 676. “Such purchase, sale, and prior use,” to defeat a patent under the second clause of that section, seems to be, and in that ease seems to he held to.be, that which the purchaser or constructor could be hold to possess the right to under the first clause. If this right should fail as against, the patent -would appear to be saved for, the inventor. The taking of this invention by the Amoskeag Manufacturing Company and putting it into the Phoenix, Atlantic, and other engines, if any, in this ease did not involve procuring any breach of an express agreement for secrecy, as that in Kendall v. Winsor did, but only a breach of trust and confidence, not wicked, and probably not thought to he wrong. Knibbs does not appear to have had any reason to expect that company would put it into any engine but the Osgood, and was not informed that they
“The main object was ‘to promote the progress of science and useful arts,’ and this could be done best by giving the public at large a right to make, construct, use, and vend the thing invented at as early a period as possible, having a due regard to the rights of the inventor.”
And:
“In respect to a use by piracy, it is not clear that any such fraudulent use is within tile intent of the statute, and upon general principles it might well be held excluded.”
In Elizabeth v. Pavement Co., 97 U. S. 126, the invention was in use in public six years before the application. The patent was upheld because the use was by the inventor, in good faith, to perfect his invention. In Egbert v. Lippmann, 15 Blatchf. 295, Judge Blatchford said the policy of the act of 1889 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.” In Manufacturing Co. v. Sprague, 123 U. S. 249, 8 Sup. Ct. Rep. 122, the invention was in use in public, partly for experiment and partly for profit, four years before the application. The court said:
“The thing implied as excepted out of the prohibition of the statute is a use which may be properly characterized as substantially for the purpose of experiment. When 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. ”
In Andrews v. Hovey the invention was completed and used in public by the inventor before the use by others that defeated the patent, which was much more than two years before the application. In the opinion (123 U. S. 267 , 8 Sup. Ct. Rep. 1011 the court, by Mr. Justice Blatchford, repeated the observation in Egbert v. Lippmann, before quoted, and added, in respect to the act of 1839:
“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.”
And in 124 U. S. 694, 8 Sup. Ct. Rep. 676, said:
“It may well be that a fraudulent, surreptitious, and piratical purchase or construction or use of an invention prior to the application for the patent*521 would not affect the rights of the patentee under either clause of the seventh section.”
Knibbs carried forward bis invention by three principal experiment,s: The construction of it according to his first conception of it on the Arba Reade; the putting it into the Osgood; and the putting the completed invention upon the Arba Reade. He did not own a steam fire-engine, and could not well, if possibly, have one made for himself; and he had to make his experiments with those which the city of Troy had and had made, and do so when he could. They came clearly within the requirements laid down in Manufacturing Co. v. Sprague, and in Andrews v. Hovey. His inchoate right to his invention was followed up by the application for the patent within two years from its completion. Whether the construction, sale, and use by others of what would be an infringement of the patent, before the completion of the invention, and more than two years before the application, rightfully and without breach of confidence of the inventor, would defeat the patent, does not appear to have been decided by the supremo court in Andrews v. Hovey, nor in any other case cited or observed. Much less has that court decided that such construction, sale, or use against the right and in violation of the confidence of an inventor using due diligence about completing his invention would defeat the patent; but rather to the contrary, in Pennock v. Dialogue and Kendall v. Winsor as quoted and not dissented from in Andrews v. Hovey. Tiie strongest argument against this patent in this view seems to be that Knibbs could have applied for substantially snob a patent as be got within two years from the sale and use of these engines containing the relief-valve, which would have covered that valve and the alleged iniringemont; and that whatever could be so applied for within two years from salo and use, and was not, became unpatentable. The seventh section of the act of 1839 did not declare that a patent which covered anything made or bought within two years before it was applied for should bo invalid; nor expressly that any sale or use should invalidate a patent if more than two years before the application; nor impliedly that it should, unless the thing made or sold should cover the invention, which would be the whole invention covered by the patent. In Draper v. Wattles, 3 Ban. & A. 618, the inventor had made and sold what “was not the completed and most perfect form of his invention,” more than two years before his application. This was set up against the patent. Of that defense Judge Lowell said:
“Tiie sale or use, to defeat the patent, must have been of the thing patented; and we are of opinion that, in order to defeat the'patent, it is not. enough to prove that the inventor lias sold an earlier and less perfect article, ■ — that is, less perfect in the sense of the patent law, — even if the thing sold would be within the claim of the patent. ”
The court further found support for the plaintiff from the fact that the defendant there made, as the defendant here uses, the completed article. The extent to which the construction must include the invention would be the same whether done by the inventor or by others.
Several motions founded on objections to evidence and otherwise have been brought along to the hearing, none of which appear to be well founded, and all of which are overruled. Upon the case as it now stands, the orator and those standing in his right appear to be entitled to the same decree that was entered before it was opened; and, as the accounting to that time was saved when it was opened, to have that proceed. Let a decree be entered confirming the former decree, and that the accounting proceed.