Andrews v. Hovey

• Decision Date: 20 February 1888
• Citation: 8 S.Ct. 676,124 U.S. 694,31 L.Ed. 557
• Parties: ANDREWS et al. v. HOVEY. 1
• Court: U.S. Supreme Court

124 U.S. 694

8 S.Ct. 676

31 L.Ed. 557

ANDREWS et al. v. HOVEY.¹

February 20, 1888.

[Petition for Rehearing from pages 694-699 intentionally omitted] Jos. C. Clayton, A. Q. Keasley.

[Argument of Counsel on pages 699-701 intentionally omitted] Geo, Ticknor Curtis, for petitioners.

BLATCHFORD, J.

This is a petition by the appellants in the case of Anarews v. Hovey, reported in 123 U. S. 267, ante, 101, for a rehearing of that case upon the points upon which the decision was based. The suit was a suit in equity, brought by the appellants for the infringement of reissued letters patent No. 4372, granted to Nelson W. Green, one of the appellants, May 9, 1871, for an 'improvement in the method 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. The circuit court had dismissed the bill on the ground of the invalidity of the patent. The plaintiffs appealed, and this court affirmed the decree. In its opinion, it was said: 'The patent is famil- iarly 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, [122 U. S. 40, 7 Sup. Ct. Rep. 1073.] 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 appllants 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.)' 123 U.S. 269, ante, 102. Our decision was that the patent was invalid, because the invention covered by it had been in public use more than two years before Green applied for the patent, without reference to the question whether he consented to such use or not. The views which led to this conclusion were set forth at length in the opinion, and a further consideration of them, in the light of the arguments presented on this application for a rehearing, has only served to confirm us in the conviction that they were correct. But, as the briefs of counsel in support of the application proceed upon the ground that certain views and authorities, which they think bear upon the question involved, were not presented to us upon the original hearing, we deem it proper to state the reasons for our adherence to our conclusion.

The main proposition urged by the counsel for the appellants is, that the question involved was adjudged by this court in accordance with their views, in the case of Kendall v. Winso , 21 How. 322, decided in 1858. In the same connection other authorities, which, it is alleged, were not cited by counsel on the former hearing, are presented. It is also urged, that the court omitted to give due weight to what is said to be the current of executive and judicial authority in favor of the construction upon which the appellants rely; and that the seventh section of the act of 1839 does not apply to the patent in question, because it is a patent for a process. The question involved arises upon the second clause of section 7 of the act of 1839, which section was in these words: 'That every person or corporation who has or shall have purchased or constructed any newly-invented machine, manufacture, or composition of matter, prior to the application of the inventor or discoverer for a patent, shall be held to possess the right to use, and vend to others to be used, the specific machine, manufacture, or composition of matter so made or purchased, without liability therefor to the inventor, or any other person interested in such invention; and no patent shall be held to be invalid by reason of such purchase, sale, or use prior to the application for a patent as aforesaid, except on proof of abandonment of such invention to the public; or that such purchase, sale, or prior use has been for more than two years prior to such application for a patent.' This section contains two clauses, all that precedes the first semicolon being the first clause, and all that comes after the first semicolon being the second clause. The first clause relates to the right of a person, as against a suit by the patentee for infringement, to use and sell the specific machine, manufacture, or composition of matter purchased or constructed prior to the application for the patent, and the use of which would otherwise be a violation of the patent. The second clause relates to the effect upon the validity of the patent, of such purchase, sale, or use prior to the application. The questions involved in the two clauses are quite different. The first clause relates to the particular right of a particular defendant to use a particular machine, manufacture, or composition of matter after the grant of the patent, and notwithstanding its grant, and in no manner relates to the validity or invalidity of the patent. The second clause relates wholly to the validity of the patent.

Most of the authorities laid before us and relied upon on the present application relate entirely to the first clause of the section.

The first case in which the seventh section of the act of 1839 appears to have come under consideration in this court was that of McClurg v. Kingsland, 1 How. 202, decided in 1843. But that was a case which involved only the first clause of the section. The patent was for an improvement in the mode of casting chilled rollers. It was, therefore, a patent for an improvement in a process. The patentee invented it while he was a workman in the employ of the defendants. The put it into use in their business. He left their employment, and then applied for and obtained his patent. His assignees sued the defendants in an action at law for continuing to use the improvement. There was a verdict for the defendants, upon the ground that, by reason of their unmolested, notorious use of the invention before the application for the patent, they had a right to continue to use it, under the provisions of the first clause of the seventh section. The judgment for the defendants was affirmed by this court upon that ground. It held that the defendants were on the same footing as if they had had from the inventor a special license to use his invention, given before he applied for his patent, and that the first clause of the seventh section extended to the invention or thing patented in that case, although it consisted of a new mode of operating an old machine, as contradistinguished from a patent for a machine. The court distinctly held that the words 'newly-invented machine, manufacture, or composition of atter,' and the words 'such invention,' in the first clause of the seventh section, meant the invention patented; and that the words 'the specific machine, manufacture, or composition of matter' meant the thing invented, the right to which was secured by the patent. We see nothing in this case which sustains the position of the appellants.

The first reported case in a circuit court, involving any part of the seventh section, is that of Pierson v. Screw Co., 3 Story, 402, in 1844, in the circuit court for the district of Massachusetts, before Mr. Justice STORY. That was a case which involved only the first clause of the section. The defendant had, prior to the patentee's application for his patent, purchased the right to use a certain number of machines embracing the patented improvement, from the assignee of an independent inventor thereof, and claimed the right, under the seventh section, to use the machines which it had actually in operation, notwithstanding the fact that the patentee was the first inventor. The circuit court charged the jury that the first clause of the seventh section did not confer such right upon the defendant, because there was no license or consent by the patentee, as inventor, to the use of the machines by the defendant. In considering that question, the court observed, in regard to the second clause of the seventh section, that it limited the right to apply for a patent to the period of two years after the inventor had sold his invention or allowed it to be used by others. But the second clause was not directly in judgment in the case. This observation on the subject appears to have been the origin of much that has been said on the question in subsequent cases, for this case of Pierson v. Screw Co. is generally cited as the leading authority in favor of the position taken by the appellants.

In Hovey v. Stevens, 1 Woodb. & M. 290, in the circuit court for the district of Massachusetts, in 1846, before Mr. Justice WOODBURY, a motion was made for a preliminary injunction, on a patent granted to Hovey. The question arose whether Stevens did not himself, before Hovey obtained his patent, discover or construct the patented invention. The court considered the question whether Stevens had not obtained a knowledge of Hovey's invention through a workman in his employ, who had previously been in the employ of Hovey and had used the improvement, and whether Stevens did not copy the improvement from Hovey's, without Hovey's consent, and before Hovey made his machine public or sold it. The court observed that in such a case...