George Kendall, Leander Ware, and George Jencks, Plaintiffs In Error v. Joseph Winsor

Citation16 L.Ed. 165,62 U.S. 322,21 How. 322
PartiesGEORGE KENDALL, LEANDER M. WARE, AND GEORGE L. JENCKS, PLAINTIFFS IN ERROR, v. JOSEPH S. WINSOR
Decision Date01 December 1858
CourtUnited States Supreme Court

THIS case was brought up by writ of error from the Circuit Court of the United States for the district of Rhode Island.

The facts in the case, the instructions asked for and refused upon the trial in the Circuit Court, and also those given to the jury by the court, are all set forth in the opinion of the court. Under these instructions, the jury found a verdict for the plaintiff, and assessed his damages in the sum of two thousand dollars.

It was argued by Mr. Jenckes for the plaintiffs in error, and by Mr. Keller for the defendant.

The points made by the counsel on each side can be readily inferred from a perusal of the instructions asked for on behalf of the defendants in the Circuit Court, and of those given, which latter were sustained in the argument in this court. All of these instructions are set forth in the following opinion.

Mr. Justice DANIEL delivered the opinion of the court.

This was an action on the case in the Circuit Court of the United States, instituted by the defendant in error against the plaintiffs, for the recovery of damages for an alleged infringement by the latter of the rights of the former as a patentee. No question was raised upon the pleadings or the evidence in this case as to the originality or novelty of the invention patented, nor with respect to the identity of that invention with the machine complained of as an infringement of the rights of the patentee, nor as to the use of that machine. These several facts were conceded, or at any rate were not controverted, between the parties to this suit.

Under the plea of not guilty, the defendant in the Circuit Court gave notice of the following defences to be made by him:

1. A license from the plaintiff to use his invention.

2. A right to use that invention in virtue of the seventh section of the act of Congress of the 3d of March, 1839, which section provides, 'That every person or corporation who has or shall have purchased or constructed any newly-invented machine, manufacture, or composition of matter, prior to the application of the inventor or discoverer for a patent, shall be held to possess the right to use, and vend to others to be used, the specific machine, manufacture, or composition of matter, so made or purchased, without liability therefor to the inventor or any other person interested in such invention.'

To the relevancy and effect of the evidence adduced with reference to the two defences thus notified, and to the questions of law arising upon the issues made by those defences, this controversy is properly limited.

Upon the trial in the Circuit Court, in support of this defence, evidence was introduced tending to show that the plaintiff constructed a machine in substantial conformity with his specification as early as 1846, and that in 1849 he had several such machines in operation, on which he made harness to supply all such orders as he could obtain; that he continued to run these machines until he obtained his letters patent; that he repeatedly declared to different persons that the machine was so complicated that he preferred not to take a patent, but to rely on the difficulty of imitating the machine, and the secrecy in which he kept it. And the defendants also gave evidence tending to prove that the first of their machines was, completed in the autumn of 1853, and the residue in the autumn of 1854; and that, in the course of that fall, the plaintiff had knowledge that the defendants had built, or were building, one or more machines like his invention, and did not interpose to prevent them.

The plaintiff gave evidence tending to prove that the first machine built by him was never completed so as to operate; that his second machine was only partially successful, and improvements were made upon it; that in 1849 he began four others, and completed them in that year, and made harness on them, which he sold when he could get orders; that they were subject to some practical difficulties, particularly as it respected the method of marking the harness, and the liability of the bobbin to get out of the clutch; that he was employed in devising means to remedy these defects, and did remedy them; that he also endeavored to simplify the machine by using only one ram-shaft; that he constantly intended to take letters patent when he should have perfected the machine; that he applied to Mr. Keller for this purpose in February, 1853, but the model and specifications were not sent to Washington till November, 1854; that he kept the machines from the view of the public, allowed none of the hands employed in the mill to introduce persons to view them, and that the hands pledged themselves not to divulge the invention; that among the hands employed by the plaintiff was one Kendall Aldridge, who left the plaintiff's employment in the autumn of 1852, and entered into an arrangement with the defendants to copy the plaintiff's machine for them, and did so; and that it was by Aldridge, and under his superintendence, and by means of the knowledge which he had gained while in the plaintiff's employment, under a pledge of secrecy, that the defendant's machines were built and put in operation; and that one of the defendants had procured drawings of the plaintiff's machine, and has taken out letters patent for it in England.

Each party controverted the facts thus sought to be proved by the other.

The defendant's counsel prayed the court to instruct the jury as follows:

1. That it is the duty of an inventor, if he would secure the protection of the patent laws, to apply for a patent as soon as his machine (if he has invented a machine) is in practical working order, so as to work regularly every day in the business for which it was designed; and if he does not so apply, he has no remedy against any persons who possess themselves of the invention, with his knowledge and without his notification to desist, or of his claims as an inventor before he applies for his patent.

2. That a machine can no longer be considered as an experiment, or the subject of experiment, when it is worked regularly in the course of business, and produces a satisfactory fabric, in quantities sufficient to supply the entire demand for the article.

3. That in order to justify the delay of the plaintiff in applying for a patent after his machine was in practical working order, on the ground of the desire to improve and perfect it, the plaintiff must show some defect in construction, or difficulty in the operation or mode of operation, which he desired and expected to remove by further thought and study; and if no such thing is shown, then the machine must be held to have been completed and finished, in the sense of the patent law, at the time it was put in regular working use and operation.

4. That under the 7th section of the act of 1839, entitled, &c., if the jury are satisfied that the machines for the use of which the defendants are sued were constructed and put in operation before the plaintiff applied for his patent, then the defendants possessed the right to use, and vend to others to be used, the specific machines made or purchased by them, without liability therefor to the plaintiff; and the jury are to inquire and find only the fact of such construction before the date of the plaintiff's application, in order to render a verdict for the defendants.

5. That under said section of said act, if the machines used by the defendants were purchased or constructed by them before the application of the plaintiff for his patent, with the knowledge of the plaintiff, then they must be held to possess the right to use, and vend to others to be used, the machines so purchased or constructed; and the jury are to inquire into and find only the...

To continue reading

Request your trial
124 cases
  • Dix-Seal Corporation v. New Haven Trap Rock Company
    • United States
    • United States District Courts. 2nd Circuit. United States District Court (Connecticut)
    • December 12, 1964
    ...may be found in Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502, 37 S.Ct. 416, 61 L.Ed. 871 (1917); Kendall v. Winsor, 62 U.S. 322, 16 L.Ed. 80 (1858); Macbeth-Evans Glass Co. v. General Elec. Co., 246 Fed. 695 (6th Cir. 1917), cert. denied, 246 U.S. 659, 38 S.Ct. 316, 6......
  • Shapiro v. General Motors Corp., Civ. No. Y-71-1329.
    • United States
    • United States District Courts. 4th Circuit. United States District Court (Maryland)
    • May 29, 1979
    ...emolument can never be permitted to operate to the injury of these. * * *" (Footnote omitted). Id. citing Kendall v. Winsor, 21 How. 322, 327-29, 16 L.Ed. 165 (1859). 4 Posner notes that some commentators believe that the implicit theory in Parke, Davis is that the combination between Parke......
  • United States v. Line Materials Co
    • United States
    • United States Supreme Court
    • March 8, 1948
    ...of the invention enures to the people, who are thus enabled without restriction to practice it and profit by its use. Kendall v. Winsor, 21 How. 322, 327, 16 L.Ed. 165; United States v. American Bell Telephone Co., supra, page 239 of 167 U.S., 17 S.Ct. 809 (at page 810, 72 L.Ed. 144). To th......
  • Application of Bergy, Appeal No. 76-712
    • United States
    • United States Court of Customs and Patent Appeals
    • March 29, 1979
    ...new technologies—by their nature unforeseeable—and their progressive development. This has been clear since Kendall v. Winsor, 21 How. 322, 62 U.S. 322, 328, 16 L.Ed. 165 (1859), wherein the Supreme Court The true policy and ends of the patent laws enacted under this Government are disclose......
  • Request a trial to view additional results
2 books & journal articles
  • THE PATENT ACT AND THE CONSTITUTIONALITY OF STATE PHARMACEUTICAL REGULATION.
    • United States
    • Rutgers Computer & Technology Law Journal Vol. 45 No. 1, March 2019
    • March 22, 2019
    ...fortunes for the owners of patents, but is 'to promote the progress of science and the useful arts.'"); see also Kendall v. Winsor, 62 U.S. 322, 327-28 (1858) ("It is undeniably true, that the limited and temporary monopoly granted to inventors was never designed for their exclusive profit ......
  • THE MACROECONOMICS OF INTELLECTUAL PROPERTY.
    • United States
    • Washington University Law Review Vol. 100 No. 4, April 2023
    • April 1, 2023
    ...meditations and skill of individuals and the incentive to further efforts for the same important objects.'" (quoting Kendall v. Winsor, 62 U.S. 322, 328 (1858)). Many commentators draw a distinction between incentivizing new innovation creation and new innovation commercialization. See, e.g......

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT