Doyle v. Spaulding

• Decision Date: 15 March 1884
• Citation: 19 F. 744
• Parties: DOYLE v. SPAULDING and others. ILLINGWORTH v. SAME.
• Court: U.S. District Court — District of New Jersey

19 F. 744

DOYLE v. SPAULDING and others.

ILLINGWORTH v. SAME.

United States Circuit Court, D. New Jersey.

March 15, 1884

J. C Clayton, for complainants.

Francis Forbes, (with whom was A. Q. Keasbey,) for defendants.

NIXON J.

These two cases will be considered together, for reasons which will hereafter appear. On March 5, 1881, the complainant Illingworth, commenced a suit in this court against the defendants for infringement of letters patent No. 166,700 dated August 17 1875, for 'improvements in moulds for ingots.' The defendants answered, setting up, among other things, that said letters patent were void (1) on account of prior knowledge and use of the alleged invention; (2) because every substantial and material part of the invention was described and claimed in letters patent No. 99,299, and granted to one Patrick Doyle, February 1, 1870, for 'improvement in moulds for making combined ingots of steel and iron,' and in English letters patent No. 3,801, issued to William Moore by the queen of Great Britain and Ireland, dated November 21, 1873, and sealed May 19, 1874; and (3) denying the right of the complainant to recover, because the defendants were the assignees and owners of letters patent No. 240,727, granted to one Alfred E. Jones, and were entitled to use the invention therein described and shown, notwithstanding the letters patent of complainant, on which the suit was brought.

It appears in the testimony that for several years previous to the filing of the bill, two of the defendants, Fitzsimmons and Jennings, were in the employ of the complainant's firm, and these became familiar with the use of moulds made under the Doyle patent, which is set up as anticipating the alleged invention of Illingworth. It also appears that the complainant used the Doyle patent for several years previous to 1875, in the manufacture of iron and steel ingots, the inventor Doyle, during the time being in the business with the complainant; that the above patent was obtained by Illingworth in view of the fact Doyle was about going out of the firm, after which, it was supposed, that the continued use of his patent would not be allowed; and that he went out and remained away from the complainant from 1875 to 1880, when he returned and became the superintendent of his works.

On the seventh of May, 1881, Patrick Doyle began his suit against the defendants for the infringement of the letters patent, which had been set up in the former action as anticipation of the Illingworth patent. The answer of the defendants denies (1) that Doyle was the original and first inventor of the improvements therein claimed, and (2) alleges that every substantial and material part of the invention was known to several persons now residing in this country, and by whom it had been used in Sheffield, England, during their residence there.

Pending the taking of testimony in these suits, two applications were made to the court by the respective parties-- one by the defendants in the Illingworth suit, asking that they might be allowed to amend their answer by inserting the allegation that the invention claimed by Illingworth was known to certain persons residing in this country, who used it in the city of Sheffield, England, before coming hither; and the other by the complainant in the Doyle suit, who moved to strike out the said allegation in the answer filed therein. The questions involve the interpretation of the clause, 'not known or used by others in this country,' in section 4886 of the Revised Statutes, which first appeared in section 24 of the act of July 8, 1870, and which had never received judicial construction. Being willing to afford the parties an opportunity, without embarrassment, to correct any mistake which the court might fall into in deciding a matter of first impression, we allowed the allegation to stand in the answer in the Doyle suit and to be inserted in the Illingworth answer, and directed the parties to make their proofs of the facts and to present their views more fully at the final hearing. See Illingworth v. Spaulding, 9 F. 611. After a careful consideration of the provisions of the three sections of the patent act which bear upon the subject, (sections 4886, 4920, and 4923, Rev. St.,) we are of the opinion that the use, or a knowledge of the use, of an invention in a foreign country by persons residing in this country will not defeat a patent which has here been granted to a bona fide patentee who at the time was ignorant of the existence of the invention or its use abroad.

When the parties began to take the proofs they united in a stipulation that the evidence should be entitled in both causes, and that the two should be argued together. The defendants also admitted in writing, in each of the cases, that before the commencement of the suits, and since the granting of the letters patent, respectively, they had manufactured combined ingots of iron and steel in the following manner and for the following purposes:

(1) By means of a mould made in conformity to letters patent of the United States, No. 240,727, granted to them April 26, 1881, as assignees of Alfred E. Jones, a copy of which is hereto annexed, marked Complainants' Exhibit 'Jones' Patent.'

(2) By means of a mould made with two covers, in all respects like that shown in the above-named letters patent, except that there were two covers instead of one, and the slide was omitted. The covers are so made that a part of the cover first used projects into the mould. The process is as follows: The mould being clamped together, the first metal to be cast is poured into it, and, when sufficiently set, the cover is removed and a second one, perfectly flat, is inserted in its place. When this is done there remains a space between the newly-cast metal and the side or cover of the mould into which is cast the remaining part of the ingot. The mould is shown in the model, complainants'...