Campbell v. City of New York

• Decision Date: 10 July 1888
• Citation: 35 F. 504
• Parties: CAMPBELL v. CITY OF NEW YORK.
• Court: U.S. District Court — Southern District of New York

35 F. 504

CAMPBELL v. CITY OF NEW YORK.

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

July 10, 1888

Roger M. Sherman, Marcus P. Norton, Harvey D. Hadlock, William E Hagan, and Horace G. Wood, for plaintiff.

Frederic H. Betts, for defendant.

WHEELER J.

This suit is brought upon letters patent No. 42,920, granted to James Knibbs for an improvement in steam fire-engines consisting of a relief valve. He was the engineer of a steam fire-engine called the 'Arba Reade,' of the city of Troy, and made the invention, and applied it to that engine in 1860, and it was used on that engine as occasion required afterwards. It operated well, but he thought that experience might suggest improvements. In 1861 the city of Troy ordered another engine, to be called the 'J. C. Osgood' to be built for its use by the Amoskeag Manufacturing Company, of Manchester, N.H., and at the request of Knibbs this invention was put into it in a somewhat modified form, for which he furnished some rough drawings. That engine was completed and sent to Troy, where it arrived on January 14, 1862, and it was put to use January 27, 1862. The invention operated well on that engine, but he made some further changes up to February, 1863, when he became satisfied that the invention could not be further improved, and consulted counsel about applying for a patent for it. On April 27, 1864, an application was made and executed; on May 13th it was filed in the patent-office, and on May 24, 1864, the patent was granted. It was applied for and granted for the invention as first made, and did not cover any improvement made afterwards. This bill was brought for infringement of the patent in October, 1877. The answer alleged that the patent was void 'because that the said alleged invention, with the knowledge, acquiescence, and consent of said inventor,' had been in public use and on sale in this country for more than two years before the application for the patent, among other defenses. The answer was traversed, and proofs were taken, and the cause was heard in chief at February term, 1881. On the hearing, the Amoskeag Manufacturing Company appeared to have put the invention into other steam fire-engines made and sold more than two years prior to the application for the patent; but without the consent, acquiescence, allowance, or knowledge of the applicant. The patent was granted under the provisions in this respect of the acts of 1836 and 1839. The act of 1836 cut off all right to a patent if the invention had been in public use or on sale with the applicant's consent or allowance prior to the application. The act of 1839 gave to makers and purchasers of newly-invented machines manufactures, or compositions of matter, before the application for a patent, the right to use, and to sell for use, the specific things, without liability; but provided that such purchase, sale, or use should not invalidate the patent unless it had been for more than two years prior to the application. This was understood to mean that if the purchase, sale, or use should amount to what under the act of 1836 would defeat a patent if it took place before the application, it should not have that effect unless it took place two years before the application. This would require that it should be a public use or a being on sale, with the applicant's consent or allowance, two years before the application. On this construction of the statutes the issue formed by the traverse of this part of the answer, as well as the other decisive issues in the case, was found for the plaintiff, and an accounting was ordered, which has been entered upon, and proceeded with at great expense, and is far from being completed.

Since the decision in Andrews v. Hovey, 123 U.S. 267, 8 S.Ct. 101, and 124 U.S. 694, 8 S.Ct. 676, holding that the applicant's consent or allowance is not requisite, on motion of the defendant, a rehearing has been had. The orator insists that as the answer sets up public use and being on sale with the knowledge, consent, and acquiescence of the inventor the whole must be proved. The defendant claims that only enough of the answer to make out a good defense need be proved, but asks leave to amend if more is held to be necessary. If what is said about knowledge, consent, and acquiescence should be stricken out, a good answer would be left. It is wholly immaterial, and mere surplusage, although it appears to have been regarded as quite material when the answer was drawn. Mere surplusage in pleading may be wholly disregarded in evidence, both at common law and in equity. The answer and traverse appear to well raise the question now made. The evidence is all in, without objection on this account. This would be no waiver, however, for the evidence as to sale and use without consent would be equally admissible under either form of answer.

The orator insists further that the former finding in this respect, as stated in the opinion then filed, is not borne out by the evidence. 20 Blatchf. 67, 9 F. 500. In the view of the law then taken, this would not be decisive, and it might be considered with less pains than it would otherwise receive. It has now been reconsidered upon further argument. The evidence tends to show that several engines containing this invention, besides the J. C. Osgood, were made and sold by the Amoskeag Manufacturing Company after the invention was made known to them, and before May 13, 1862, the limit of the two years prior to the application. Some doubt, and perhaps a reasonable and fair doubt, is raised about all of those except the Governor Hill, sold and forwarded to the city of Concord, N.H., April 28, 1862. There is no evidence to which attention has been called about any use of this engine further than what may be implied from its purchase by that city. It was probably bought for the use for which cities ordinarily want such engines. Such use is so occasional that none may have been had prior to May 13th after its purchase. The sale only is to be considered. That was not till within the two years before the application was executed. The statute requires that it be more than two years prior to the application to defeat the patent. The orator argues that a sale not shown to have been two years prior to the execution and completion of the application as an instrument is not shown to have been two years prior to it. But the application is to be for a patent, and must be made to the patent-office to be there acted upon, and...