The Suffolk Company v. Hayden

Citation18 L.Ed. 76,70 U.S. 315,3 Wall. 315
PartiesTHE SUFFOLK COMPANY v. HAYDEN
Decision Date01 December 1865
CourtUnited States Supreme Court

IN December, 1854, Hayden, being the inventor of improvement in cotton cleaners, made application to the commissioner for a patent therefor.

The improvements consisted in certain described changes made by Hayden in the interior arrangements of an elongated trunk previously in use for cleaning cotton.

While this application was still pending, Hayden made another distinct improvement, not in the interior arrangements of the elongated trunk, but in the form of the trunk. This improvement consisted in increasing, towards the rear and of the trunk, that part of its area above the screen (which divided it horizontally into two distinct parts), so that as the air moved through the trunk towards its rear, the space for its passage being enlarged, the air would gradually move more slowly.

Hayden desired, apparently, to claim this new improvement in the form of the trunk, both separately, and in combination with his other improvements in the interior arrangements of the trunk, as to which his application was then pending. Accordingly, in November, 1855, he filed his application for a patent, and on the 17th day of March, 1857, letters were issued to him, in the specification whereof he claims the improvement in the form of the trunk, both separately, and in combination with his improvements in the interior arrangements of the trunk; but he made no claim in this specification to his improvements in the interior arrangements of the trunk.

It did not appear that Hayden was guilty of any laches, or was in any default in reference to the delay of the commissioner to act on his first application for a patent for improvements in the interior arrangements of the trunk made in December, 1854. For some cause, however, the commissioner had not acted on that application down till June, 1857; and in that month Hayden made another application for a patent, for what the judge at the trial, at the request of the defendants, ruled to be the same improvements, previously applied for in December, 1854; and upon this second application a patent was granted, bearing date December 1, 1857.

[It may be here mentioned incidentally, since the matter was made a point by counsel and is referred to by the court—though the patent of December 1, 1857, was the only one in suit—that the commissioner finally acted on the original application of December 1854, and on the 11th of September, 1860, granted on it a patent and as was alleged, though not proved, for the same improvement covered by the patent of December 1, 1857.]

Hayden having sued the Suffolk Manufacturing Company in the Massachusetts District, for infringement of this last-mentioned patent, the defendants' counsel at the trial, requested the judge to rule that the patent was void, because the improvements in the interior arrangements of the trunk, which were described and claimed in it, being also described and not claimed in the patent of the 17th of March, were by the legal operation of the last-mentioned patent surrendered to the public use.

The judge refused so to rule, and on error this refusal raised here the first question; the counsel for the Suffolk Company taking the same position here as below.

A second question was on the law as delivered to the jury on the matter of damages.

It appeared that no sales had been made of the patent-right by the plaintiff, or of licenses for the use of it, so as to establish a patent or license-fee as a criterion by which to ascertain the measure of damages. The court below accordingly permitted evidence, after objection, as to the uses and advantages of this improvement over the previous methods of cleaning cotton. And an expert testified that the results were—a more thorough cleaning of the cotton, the saving of all the good fibres, less damage to the staple, the freeing of the room from dust, and the machinery from dust, dirt, and sand; the keeping of the machinery in better order at loss cost, and dispensing with one grinder of the cards in consequence of the diminution of dirt and sand, expelling fine dust and dirt not...

To continue reading

Request your trial
69 cases
  • De Cew v. Union Bag & Paper Corporation
    • United States
    • U.S. District Court — District of New Jersey
    • August 16, 1944
    ...issued to the same patentee, embrace inventions which are patentably indistinguishable, the second patent is void. Suffolk Co. v. Hayden, 3 Wall. 315, 18 L. Ed. 76; James v. Campbell, 104 U.S. 356, 382, 26 L.Ed. 786; Miller v. Eagle Mfg. Co., 151 U.S. 186, 14 S.Ct. 310, 38 L.Ed. 121; Lion F......
  • Pitcairn v. United States
    • United States
    • U.S. Claims Court
    • March 4, 1977
    ...saving of expense. Dowagiac Mfg. Co. v. Minnesota Moline Plow Co., 235 U.S. 641, 648, 649, 35 S.Ct. 221, 59 L.Ed. 398; Suffolk Co. v. Hayden, 3 Wall. 315, 320, 18 L.Ed. 76; U.S. Frumentum Co. v. Lauhoff, supra. * * * Fortunately, in this case there was an admitted, fully paid-up sale of pat......
  • Radio Corporation v. Radio Engineering Laboratories
    • United States
    • U.S. District Court — Eastern District of New York
    • August 29, 1932
    ...all intention of abandonment or dedication thereof to the public which would be otherwise inferred from such a disclosure. Suffolk v. Hayden, 3 Wall. 315, 18 L. Ed. 76; Barbed Wire Patent, 143 U. S. 275, 12 S. Ct. 443, 450, 36 L. Ed. 154; Kinnear Mfg. Co. v. Wilson (C. C. A.) 142 F. 970, 97......
  • Dowagiac Mfg. Co. v. Deere & Webber Co.
    • United States
    • U.S. Court of Appeals — Eighth Circuit
    • September 11, 1922
    ... ... Two ... cases are submitted together, namely: Dowagiac Manufacturing ... Company, Appellant, v. Deere & Webber Company, Appellee, and ... Deere & Webber Company, Appellant, v ... We refer to the opinions of some ... courts holding a contrary view. In Suffolk Co. v. Hayden, ... 3 Wall. 315, 320 (18 L.Ed. 76), the court says: ... 'A ... recovery ... ...
  • Request a trial to view additional results
1 firm's commentaries
  • Patent Law and the Supreme Court: Certiorari Petitions Pending (March 2015)
    • United States
    • Mondaq United States
    • March 10, 2015
    ...held that when two such patents are granted to a single party, "the later one [i]s void." Id. at 197 (discussing Suffolk Co. v. Hayden, 70 U.S. 315 (1865)). In the decision below, the Federal Circuit inverted this century-old doctrine, holding a first issued patent invalid based on the issu......

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT