Thecases Andrews v. Hovey

• Decision Date: 14 November 1887
• Docket Number: DRIVEN-WELL
• Citation: 123 U.S. 267,8 S.Ct. 101,31 L.Ed. 160
• Parties: THECASES. 1 ANDREWS and others v. HOVEY
• Court: U.S. Supreme Court

8 S.Ct. 101

123 U.S. 267

31 L.Ed. 160

THE DRIVEN-WELL CASES.¹

ANDREWS and others

v. HOVEY.

November 14, 1887.

J. C. Clayton and A. Q. Keasbey, for appellants.

Jed Lake, for appellee.

BLATCHFORD, J.

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, 7 Sup. Ct. Rep. 1073, and Beedle v. Bennett, 122 U. S. 71, 7 Sup. Ct. Rep. 1090, (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. 5 McCrary, 181, 16 Fed. Rep. 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 section 7 of the act of March 3, 1839, (5 St. 354,) interpreted in connection with sections 6, 7, and 15 of the act of July 4, 1836, (5 St. 119, 123.)

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 page 47. 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 Blatchf. 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, 19 Blatchf. 294, 8 Fed. Rep. 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 Beedle v. Bennett, and in the opinion in the latter case it was said, (page 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, 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 whthout 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 Blatchf. 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 sections 24 and 61 of the act of July 8, 1870, (16 St. 201, 208,) now sections 4886 and 4920, Rev. St., 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 in 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...