Beach v. Wheeler

• Decision Date: 12 March 1855
• Parties: Beach v. Wheeler.
• Court: Pennsylvania Supreme Court

24 Pa. 212

Beach v. Wheeler.

Supreme Court of Pennsylvania.

March 12, 1855

1855

1. In an action for a malicious suit and imprisonment, a letter of the defendant, when plaintiff in the former suit, addressed to his counsel therein and enclosing a proposition of compromise, was not admissible on his part. The proposition for settlement might have been evidence for the party who wrote it, but his letter accompanying it was not admissible except as authority for the submission of the proposition.

2. To sustain an action for a malicious suit and imprisonment on account of an alleged infringement of a patent, it was not necessary for the plaintiff to show that the patent claimed by the defendant when plaintiff in the first action was invalid, and that he knew it to be so. If there was no infringement of the defendant's patent, and the defendant had not reasonable ground for believing that an infringement existed, he had not probable cause, and from its absence malice might be inferred, unless disproved by the other evidence in the cause.

ERROR to the District Court, Philadelphia.

This was an action of trespass on the case by William Beach v William Wheeler, for maliciously instituting suit against the plaintiff in October, 1849, and having him arrested and imprisoned.

The suit by Wheeler against Beach was for an alleged infringement of a patent procured by Wheeler, on 25th April, 1846, for an improvement in curry-combs. The said suit was brought in the Circuit Court of the United States in Massachusetts, and under it Beach was imprisoned in Boston for above fifty days when, on surety being given, he was discharged. For such imprisonment, and the injury resulting therefrom, the present suit was brought.

The suit of Wheeler v. Beach was continued on two occasions on motion of plaintiff's counsel, and a nonsuit was entered in October, 1851.

On 13th March, 1849, Beach obtained a patent for an improvement in curry-combs. This patent he, subsequently, surrendered, and obtained another patent, on an amended specification, dated 12th February, 1850.

On the trial of the present suit, Beach, the plaintiff, gave evidence to show that he experimented in making combs in 1812 and 1815, and manufactured them as early as in the year 1843.

Wheeler the defendant, endeavored to show that he manufactured the kind of combs in question before the date of the plaintiff's manufacture.

On the trial, the plaintiff contended: 1. That the two patents were not for the same invention; that his curry-comb was different from, and a better comb than the defendant's and that the plaintiff's patent was issued by the department in view of the previous patent to the defendant. 2. But, if this were not so, that he, the plaintiff, had invented and made the open-back curry-comb before the defendant made it, and that the defendant's patent was invalid. 3. That the defendant, by selling his combs and keeping them for sale in the market in 1845, before applying for a patent, had abandoned his invention to the public. See 15th section of Act of 1836, 5 Statutes at Large 123, and 2 Peters 1; 7 Peters 292, as to abandonment.

On the trial there was offered, on part of Wheeler, the defendant, a letter, dated Philadelphia, October 20, 1849, viz., about sixteen days after the arrest of Beach, and addressed by Wheeler to his counsel in Boston, of record in the suit against Beach, and was annexed to the deposition of the said counsel taken in the present suit. The letter enclosed a proposition for a settlement of the matter with Beach, which the counsel was authorized to propose, and contained other remarks relative to the controversy with Beach.

The admission of the letter was excepted to.

HARE, J., charged the jury, that what is probable cause for a criminal or civil proceeding, is a question of law for the Court, although whether the facts constituting probable cause exist or not, must be determined by the jury. That a patent issued by the United States is probable cause for a suit against one who infringes it, unless it is invalid and known to be so by the patentee; and that the jury could not find a verdict for the plaintiff, unless they were satisfied that the patent of 25th April, 1846, claimed by the defendant, was invalid, and that he knew that it was invalid; or unless they found that the cnrry-combs manufactured by the plaintiff were not an infringement of the right primâ facie given by the patent, which they must determine on the evidence.

Verdict was rendered for the defendant.

Error was assigned to the admission of the letter, and to the charge that the plaintiff was not entitled to a verdict unless the jury were satisfied that the patent claimed by the...