Root v. Third Ave Co
Decision Date | 21 November 1892 |
Docket Number | No. 39,39 |
Citation | 146 U.S. 210,13 S.Ct. 100,36 L.Ed. 946 |
Parties | ROOT v. THIRD AVE. R. CO |
Court | U.S. Supreme Court |
F. R.
This is a suit in equity, brought July 12, 1886, in the circuit court of the United States for the southern district of New York, by Henry Root against the Third Avenue Railroad Company, founded on the alleged infringement of letters patent No. 262,126, granted August 1, 1882, to the plaintiff, for an 'improvement in the construction of cable railways,' on an application filed September 3, 1881.
The specification of the patent says:
The following are the drawings of the patent, Fig. 1 being a cross-section and Fig. 2 a perspective view:
The specification says: There are seven claims in the patent.
The answer sets up in defense a denial of the allegation of the bill that the alleged invention was not in public use or on sale for more than two years prior to the application for the patent; and it alleges that the invention had been in public and profitable use in the United States for more than two years before the date of the application. It also sets up want of novelty and noninfringement.
There was a replication to the answer, proofs were taken, and the case was brought to a hearing before the circuit court, held by Judge Wallace, and a decree was entered dismissing the bill. From that decree the plaintiff has appealed.
The opinion of the circuit court, found in 37 Fed. Rep. 673, passed upon a single question. The Invention was put into use on the California street railroad, a cable road in the city of San Francisco, on April 9, 1878, the road having been built by the plaintiff, and put into regular operation at that time, and, as constructed, having embodied in it the invention described in the patent. The defendant contended that such use was a public use of the patented invention more than two years before the application, and that, therefore, the patent was invalid. The plaintiff contended, and now contends, that such use was an experimental use, and that the application was filed within two years after the plaintiff became satisfied that his invention was a practical success.
Section 4886 of the Revised Statutes, which was in force when this patent was applied for and issued, enacts that a patent may be obtained when the invention has not been 'in public use or on sale for more than two years prior to the application;' and section 4920 provides that it may be pleaded and proved as a defense in a suit at law or in equity on the patent that the invention 'had been in public use or on sale in this country for more than two years before' the application, or had been abandoned to the public.
From the time the cable road mentioned was put into operation, no change or modification was made in its plan or its details. In the summer of 1876, between May and the 1st of September, the plaintiff conceived the invention. Early in that year certain persons in California obtained a franchise for the construction of a wire cable road on California street, in San Francisco, and the plaintiff was led to believe that he would be called upon, as an engineer, to construct the road. He immediately commenced studying up the matter, to be prepared to recommend a plan of construction, whenever called upon. He testifies that he deemed it necessary in a cable road to get a smooth, even roadway and track, and the tube or tunnel way for the cable and its carrying machinery strong enough to resist any tendency to wards the closing of the slot, to provide for the grip shank, and to make a structure as a whole so permanent and durable as to stand the wear and jar of heavy street traffic, as well as of the car traffic which it was to carry; and that, for that purpose, he deemed it necessary to have a rib or yoke, with connections to the two rails and the two slot irons, so as to connect them permanently, such yoke to be imbedded in and supported by a surrounding mass of concrete to form a support and foundation for the ribs or yokes, the bottom and sides of the cable tube or tunnel, and a foundation for the paving of the roadway. He says that he explained this invention to severl persons prior to September 2, 1876, and on that day discussed the subject and explained the invention in a general way at a meeting of the directors of the proposed road. Between that time and Jamuary 1, 1877, he made a model containing two of the ribs, with an outside casing and cover, and had the space between filed in with concrete, incasing the skeleton ribs and forming 'the shut section' of the completed track and tube.
His invention was adopted by the projectors of the railroad, and active work was commenced upon the structure in July, 1877. The road cost, with the equipment, $418,000, and is about two miles in length, the roadbed and tunnel construction having cost about $225,000. From April 9, 1878, it has been in regular and successful use as a street railroad, carrying passengers for pay. The plaintiff was superintendent of the road from that time until the date of his application for the patent, and afterwards until 1883.
In explanation of his delay in applying for the patent, he testifies that before he began the construction of the road one of the projectors expressed a doubt in regard to the durability of such a structure, and a fear that the jar of street traffic, as well as that of the cars, would in time loosen the ribs, and separate them from the surrounding concrete, and the structure would thus fail; that doubts were expressed also by others: that, while the plaintiff believed that there was...
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