Campbell v. City of New York

• Decision Date: 21 September 1888
• Citation: 36 F. 260
• Parties: CAMPBELL v. MAYOR, ETC., OF NEW YORK.
• Court: U.S. District Court — Southern District of New York

36 F. 260

CAMPBELL v. MAYOR, ETC., OF NEW YORK.

United States Circuit Court, S.D. New York.

September 21, 1888

Marcus P. Norton, Horace G. Wood, and George Bliss, for plaintiff.

Frederic H. Betts, for defendant.

WHEELER J.

The bill in this case sets up as valid letters patent No. 42,920 dated May 24, 1864, and granted to James Knibbs for an improvement in steam fire-engine pumps. The answer, among other things, alleges that the patent was void, 'because that the said alleged invention, with the knowledge acquiescence, and consent of said inventor and patentees, had been in public use and on sale in this country for more than two years before the said alleged inventor's or patentee's application for their patent therefor. ' On traverse of the answer proofs were taken. The record shows clearly that the plaintiff's counsel understood that consent and allowance of the inventor to sale or use of the invention more than two years before the application for a patent were necessary to defeat it; and that they accordingly directed their efforts to disproving consent and allowance to such sales and use as appeared, and not to meeting the evidence of sale and use otherwise. On final hearing sale and use were found, but without consent and allowance. These were held to be essential and controlling. The other issues were found for the plaintiff, and the patent was sustained. Campbell v. Mayor, etc., 20 Blatchf. 67, 9 F. 500. After the decisions in Andrews v. Hovey, 123 U.S 267, 8 S.Ct. 101; 124 U.S. 694, 8 S.Ct. 676, settling that consent and allowance are immaterial, and that mere sale or use, not fraudulent or surreptitious, is sufficient, the defendant moved for leave to amend the answer, if necessary to raise the question of sale and use alone, and for a rehearing. The amendment was held to be unnecessary to form an issue as to mere sale and use. A rehearing was had, and the case was reexamined. The application for the patent was filed in the patent office May 13, 1864. A sale of a steam fire-engine containing this invention, called the 'Governor Hill,' by the Amoskeag Manufacturing Company, to the city of Concord, N.H., sent on the 28th day of April, 1862, was found; and this sale was held, in view of the decisions in Andrews v. Hovey, to be sufficient to defeat the patent. Campbell v. City of New York, 35 F. 504. The plaintiff now, before final decree signed, moves for leave to take proofs to show that the Governor Hill was built on an order from the city of Concord, and, although forwarded before, was not accepted till after May 13, 1862; that this engine did not in fact contain this invention; and that putting the invention into any steam fire-engine by the Amoskeag Manufacturing Company, except into the Jason C. Osgood at the request of the inventor as an experiment, was surreptitious and fraudulent with reference to his right to a patent. This motion is resisted upon the alleged grounds that the evidence is not newly-discovered, or might have been discovered by due diligence; that it is cumulative; that it would not in fact show anything fraudulent or surreptitious in the respect claimed; that it would not change the result as to putting the invention into the Governor Hill; that the effect of the sale upon the patent would not be changed; and that the construction of the Governor Hill, which was unquestionably before May 13, 1862, would without reference to the sale, invalidate the patent, if it contained the invention. All these grounds have been considered in connection with those urged in favor of the motion. These questions of law arise upon section 7 of the act of 1839, (5 St. 354.) That section provided that a constructor or purchaser of a newly-invented machine, manufacture, or composition of matter should have the right to use and vend for use the specific thing without liability, but said nothing further about the effect of the construction. It declared that no patent should be held invalid by reason of the purchase, sale, or use prior to the application for a patent except on proof of abandonment, or that the purchase, sale, or prior use had been for more than two years prior to the application. Here is no declaration at all against the validity of the patent other than what is implied from the exception, and the construction of the patented article is left out of that. The latest reported saying of the supreme court upon the subject appears to be that at the close of the opinion in Andrews v. Hovey, 124 U.S. 719, 8 S.Ct. 686, where ...