Consolidatedcompany v. Wright

• Decision Date: 01 October 1876
• Docket Number: FRUIT-JAR
• Citation: 24 L.Ed. 68,94 U.S. 92
• Parties: CONSOLIDATEDCOMPANY v. WRIGHT
• Court: U.S. Supreme Court

94 U.S. 92

24 L.Ed. 68

CONSOLIDATED FRUIT-JAR COMPANY v. WRIGHT.

October Term, 1876

APPEAL from the Circuit Court of the United States for the Southern District of New York.

This is a bill in equity filled by the Consolidated Fruit-Jar Company to restrain the alleged infringement by the defendant of letters-patent No. 102,913, issued May 10, 1870, to John L. Mason, for an 'improvement in fruit-jars,' and of which the complainant, by mesne assignments, is the owner. The court below, upon hearing, dismissed the bill; whereupon the complainant appealed here.

The facts are set forth in the opinion of the court.

Mr. John H. B. Latrobe for the appellant.

Mr. George Gifford, contra.

MR. JUSTICE SWAYNE delivered the opinion of the court.

This is a case in equity brought by the appellants to enjoin the appellee from infringing a patent issued by the United States to John L. Mason, on the 10th of May, 1870, 'for an improvement in fruit-jars,' of which patent the complainant is the assignee.

The disclaimer and claim of the patent are as follows:——

'Separately considered, I do not claim a metallic flexible screw-ring or cap, C, for holding a cover on a preserve-jar, nor an external gasket receiving-shoulder upon preserve-jar, except when such gasket-shoulder is at the top of a continuous glass screw; neither do I claim the combination of a screw-ring cap with a packing-ring, so applied to a jar that a portion or the whole of such packing-ring is exposed within the jar, nor when the gasket-shoulder is at the base of the glass screw, as in my patent of 1858; but——

'What I do claim as new, and desire to secure by letters-patent, is——

'The combination, first, of the shoulder, b, to receive a gasket outside and a little below the top of the jar; second, of the cover, B, with the rim, d, extending down outside of the top, to press upon the gasket, C; and, third, of the screw-ring or screw-cap, C, with its screw-threads operating upon those of the jar below the gasket-shoulder,—all substantially as above set forth and described.'

The screw-cap, C, is described in the patent as made of metal.

The answer sets up several defences. Our remarks will be confined to two of them.

1. That there had been 'purchase, sale, and prior use' of the invention 'more than two years prior' to the application for the patent.

2. That the invention was abandoned to the public.

These objections are founded upon the seventh section of the act of 1839. Curtis on Pat. (4th ed.) 696.

The invention was completed in June, 1859. The application for the patent was made on the 15th of January, 1868. The intervening period was between eight and nine years. The two years prior to the application began on the 15th of January, 1866. It is within the limits of the tract of time first mentioned that the facts are to be sought upon which the second point is to be determined, and within the same period, less two years after the 15th of January, 1866, that those relating to the first point must have occurred, in order to avail the defendant.

There is no conflict in the testimony.

In June, 1859, Mason had a model made for his jar and cover, according to his invention. He took the mode to Reed & Co., glass-makers, in Jersey City. They made for him at least two dozen of the jars. When they were done, Mason received five or six of them, and a short time afterwards, the residue. Of the first lot, he gave one to Reed, and one to Fitzgerald, his lawyer. The others he took home. What became of them does not appear. Those of the second and larger lot he certainly sold. His recollection to this effect is distinct. He thinks he received for them three or four dollars a dozen. He does not know what was done with them. The inference is a fair one, that they were used for the purpose for which they were intended. His object in selling was twofold,—to get the money which they yielded, and to test their salability in the market.

The statutory clause upon which the second objection is founded is in the disjunctive. The language is 'purchase, sale, or prior use' . . . 'for more than two years prior' to the application for the patent. The phrase, 'for more,' as thus used, is loose and inaccurate, and is to be understood as if the language were earlier than 'two years prior,' &c., or as if 'for' were omitted from the sentence. This omission would produce the same effect.

The defects specified are also in the singular. It follows that a single instance of sale or of use by the patentee may, under the circumstances, be fatal to the patent; and such is the construction of the clause as given by authoritative adjudications.

In Pitts v. Hall, 2 Blatchf. 235, Mr. Justice Nelson said, 'The patentee may forfeit his right to the invention if he constructs it and vends it to others to use, or if he uses it publicly himself in the ordinary way of a public use of a machine at any time prior to two years before he makes his application for a patent. That is, he is not allowed to derive any benefit from the sale or the use of his machine, without forfeiting his right, except within two years prior to the time he makes his application.' See also American Hide & Leather Co. v. American Tool Co., 4 Fisher, 291; McMillan et al. v. Barclay et al., 5 id. 189; McClurg v. Kingsland, 1 How. 202; Agawam Company v. Jordan, 7 Wall. 583. The result must always depend upon the purpose and incidents accompanying the act or acts relied upon.

If the case stopped here, the facts we have adverted to would be fatal to the patent, upon the ground of the first objection. But there are further facts developed in the testimony which bear upon this as well as the other...