Abraham Pennock James Sellers, Plaintiffs In Error v. Adam Dialogue

• Citation: 7 L.Ed. 327,2 Pet. 1,27 U.S. 1
• Parties: ABRAHAM L. PENNOCK & JAMES SELLERS, PLAINTIFFS IN ERROR v. ADAM DIALOGUE
• Decision Date: 01 January 1829
• Court: United States Supreme Court

27 U.S. 1

2 Pet. 1

7 L.Ed. 327

ABRAHAM L. PENNOCK & JAMES SELLERS, PLAINTIFFS IN ERROR v. ADAM DIALOGUE.

January Term, 1829

[Syllabus from pages 1-3 intentionally omitted] THIS case was brought before the Court, on a writ of error to the circuit court for the eastern district of Pennsylvania.

In that court, the plaintiffs in error had instituted their suit against the defendants, for an infringement of a patent right, for 'an improvement in the art of making tubes or hose for conveying air, water, and other fluids.' The invention claimed by the patentees, was in the mode of making the hose so that the parts so joined together would be tight, and as capable of resisting the pressure as any other part of the machine.

The bill of exceptions, which came up with the record, contained the whole evidence given in the trial of the cause in the circuit court. The invention, for which the patent right was claimed, was completed in 1811; and the letters patent were obtained in 1818. In this interval, upwards of thirteen thousand feet of hose, constructed according to the invention of the patentees, had been made and sold in the city of Philadelphia. One Samuel Jenkins, by the permission of, and under an agreement between the plaintiffs as to the price; had made and sold the hose invented by the plaintiffs, and supplied several hose companies in the city of Philadelphia with the same. Jenkins, during much of the time, was in the service of the plaintiffs, and had been instructed by them in the art of making the hose. There was no positive evidence, that the agreement between Jenkins and the plaintiffs in error was known to, or concealed from the public. The plaintiffs, on the trial, did not allege or offer evidence to prove that they had delayed making application for a patent, for the purpose of improving their invention; or that from 1811 to 1818, any important modifications or alterations had been made in their riveted hose. The plaintiffs claimed before the jury, that all the hose which had been made and sold to the public, prior to their patent, had been constructed and vended by Jenkins under their permission.

Upon the whole evidence in the case, the circuit court charged the jury:- 'We are clearly of opinion that if an inventor makes his discovery public, looks on and permits others freely to use it, without objection or assertion of claim to the invention, of which the public might take notice; he abandons the inchoate right to the exclusive use of the invention, to which a patent would have entitled him, had it been applied for before such use. And we think it makes no difference in the principle, that the article so publicly used, and afterwards patented, was made by a particular individual, who did so by the private permission of the inventor. As long as an inventor keeps to himself the subject of his discovery, the public cannot be injured: and even if it be made public, but accompanied by an assertion of the inventor's claim to the discovery, those who should make or use the subject of the invention would at least be put upon their guard. But if the public, with the knowledge and the tacit consent of the inventor, is permitted to use the invention without opposition, it is a fraud upon the public afterwards to take out a patent. It is possible that the inventor may not have intended to give the benefit of his discovery to the public; and may have supposed that by giving permission to a particular individual to construct for others the thing patented, he could not be presumed to have done so. But it is not a question of intention, which is involved in the principle which we have laid down; but of legal inference, resulting from the conduct of the inventor, and affecting the interests of the public. It is for the jury to say, whether the evidence brings this case within the principle which has been stated. If it does, the court is of opinion that the plaintiffs are not entitled to a verdict.'

To this charge the plaintiffs excepted, and the jury gave a verdict for the defendant.

Mr Webster, for the plaintiff in error, contended,

1. That the invention, being of such a nature that the use of it, for the purpose of trying its utility and bringing it to perfection, must necessarily be open and public; the implication of a waiver or abandonment of the right, furnished by such public use, is rebutted by the circumstance that the article was made and sold only by one individual; and that individual was authorized and permitted so to do by the inventors.

2. That the use of an invention, however public, if it be by the permission and under the continual exclusive claim of the inventor; does not take away his right, except after an unreasonable lapse of time, or gross negligence, in applying for a patent.

3. That the jury should have been instructed, that, if they found the riveted hose, which was in use by the hose companies, had been all made and sold by Jenkins, and by no one else, prior to the grant of the patent; and that he was permitted by the inventors, under their agreement, so to make and sell the same; that such use of the invention, not being adverse to their claim, did not take away their exclusive right, nor imply an abandonment of it to the public.

4. That, if they found the hose had not been made or sold, prior to the grant of the patent, by any person but Jenkins, then the giving of permission to him, being in itself an assertion of claim, was not a dedication to the public; and that the public, by purchasing and using the hose, thus made by the permission of the inventors, acquired no title to the invention—but, on the contrary, if the price paid included a premium for the invention, the public by so purchasing, admitted the right of the inventors.

5. That, at any rate, there being no use, by the public, of this invention, it should have been left to the jury, to say, whether, under all the circumstances, considering the nature of the invention, and the time necessary to perfect it; the plaintiffs have been guilty of negligence, in not sooner applying for a patent.

Mr Webster stated, that the question to be decided by the Court laid within a narrow compass. The defence set up was, that the plaintiffs had suffered their invention to be used before their application for a patent; and had thus lost all right to the exclusive use of it.

The Court, in this case, would be called upon to reverse the English decision relative to abandonments; for it was admitted, that those cases had gone to the whole extent of the principles applied to this case in the circuit court. Those cases have decided, that any public use of an invention, even for experiment, renders it no longer a new machine. In the courts of the United States, a more just view had been taken of the rights of inventors. The laws of the United States were intended to protect those rights, and to confer benefits; while the provisions in the statute of England, under which patents are issued, are exceptions to the law prohibiting monopolies. Hence, the construction of the British statute had been exceedingly straight and narrow, and different from the more liberal interpretation of our laws.

By the decisions of our courts, there must be a voluntary abandonment, or negligence, or unreasonable delay in obtaining letters patent, to destroy the right of the patentee. Goodyear vs. Mathews, Paine's Rep. 300; Morris vs. Huntington, Id. 348.

The exception to the charge of the court is, that they the jury should have been instructed to decide upon the evidence, whether the plaintiff meant to abandon his invention by the permission to Jenkins to use it. Jenkins must be considered as the private agent of the inventors; and their agreement with him, under which he made the hose, is to be considered rather as an assertion of their exclusive right to the invention, than a surrender of it. By omitting to leave to the jury this question of an intention to abandon, the case was erroneously withdrawn from them. The rights of the parties also entitled them to have the causes of their delay in patenting their invention inquired of by the jury. As the case is presented on the bill of exceptions, the court in their charge undertook to state the whole law of the subject matter to the jury; and the omission to instruct them on any one point is error.

If in this charge of the court any thing is omitted which was matter of law for the jury, it is misdirection.

In a case in Massachusetts, said to be reported in 4th Mason's Rep., it was left to the jury to decide whether seventeen years' delay could be accounted for.

Under the provisions of the laws of the United States, the right is created by the invention, and not by the patent. The court, therefore, may have misled the jury, in stating that the plaintiffs allowed the invention to be used. The thing invented was only permitted to be used.

The suggestion, that by adopting the language of the English statute, the cases decided in England upon that statute are adopted, may be answered by a reference to those cases. They have all arisen within a few years, since the enactment of our law; and, except the dictum of Lord Coke in 2d Institute, the authorities are all of modern date.

If this Court shall be of opinion, that as no instructions were particularly asked upon the questions raised here, the court below were not bound to notice them in the charge, and that the court did not undertake to decide the whole law; the plaintiff in error can made out no case here. But if this Court shall consider the questions now submitted doubtful, as the rights of the plaintiffs may not have been fully investigated; by sending the case back to the circuit court, a more full investigation of all the points involved in it may be made.

Mr. Sergeant, for the defendant, insisted,

1. That mere invention gives no right to an exclusive use, unless a patent is obtained; and that if at a time when no right is infringed, the...