Reed v. Cutter et al.

effect. And it was probably in reference to that very decision, that the words "by others" were added in the Act of 1836, ch. 357, § 6, by way of explanation of the doubt formerly entertained on the subject. The words "by others" were not designed to denote a plurality of persons, by whom the use should be, but to show, that the use should be by some other person or persons, than the patentee. It would be strange, indeed, if because the first inventor would not permit other persons to know his invention, or to use it, he should thereby be deprived of his right to obtain a patent, and it should devolve upon a subsequent inventor merely from his ignorance of any prior invention or prior use; or that a subsequent inventor should be entitled to a patent, notwithstanding a prior knowledge or use of the invention by one person, and yet should be deprived of it by a like knowledge or use of it by two persons. In Pennock v. Dialogue (2 Peters R. 1, 23), the Supreme Court expressly held, that the sixth section of the Patent Act of 1793, ch. 55, then in force, (and on this point the law has not undergone any alteration,) “gives the right to the first and true inventor, and to him only; if known or used before his supposed discovery, he is not the first, although he may be the true inventor; and that is the case, to which the clause looks."

I am aware of Dolland's case; but I do not consider it to be a just exposition of the Patent Law of this country, however correctly it may have been decided under that of England. In that case, it seems to have been held, that Dolland was entitled to his patent, because he was an inventor of the thing patented, although there was a prior invention thereof by another person, who, however, had kept it a secret, so that the public had no benefit thereof. And, perhaps, this was not an unjustifiable exposition of the Statute of Monopolies, (Stat. of 21 James I. ch. 3, § 6,) under which patents are granted in

Reed v. Cutter et al.

England. But the language of our Patent Acts is different. The Patent Act of 1836, ch. 257, (§ 7, 8, 13, 15, 16,) expressly declares, that the applicant for a patent must be the first, as well as an original inventor.

The passage cited from Mr. Phillips's work on Patents, (p. 395,) in the sense, in which I understand it, is perfectly accurate. He there expressly states, that the party claiming a patent must be the original and first inventor; and that his right to a patent will not be defeated by proof, that another person had anticipated him in making the invention, unless such person 66 was using reasonable diligence in adapting and perfecting the same." These latter words are copied from the fifteenth section of the Act of 1836, chapter 357, and constitute a qualification of the preceding language of that section; so that an inventor, who has first actually perfected his invention, will not be deemed to have surreptitiously or unjustly obtained a patent for that, which was in fact first invented by another, unless the latter was at the time using reasonable diligence in adapting and perfecting the same. And this I take to be clearly law; for he is the first inventor in the sense of the Act, and entitled to a patent for his invention, who has first perfected and adapted the same to use; and until the invention is so perfected and adapted to use, it is not patentable. An imperfect and incomplete invention, resting in mere theory, or in intellectual notion, or in uncertain experiments, and not actually reduced to practice, and embodied in some distinct machinery, apparatus, manufacture, or composition of matter, is not, and indeed cannot be, patentable under our Patent Acts; since it is utterly impossible, under such circumstances, to comply with the fundamental requisites of those acts. In a race of diligence between two independent inventors, he, who first reduces his invention to a fixed, positive, and practical form, would seem to be entitled to a priority of right to

Reed v. Cutter et al.

patent therefor. The clause of the fifteenth section, now under consideration, seems to qualify that right, by providing that, in such cases, he who invents first shall have the prior right, if he is using reasonable diligence in adapting and perfecting the same, although the second inventor has, in fact, first perfected the same, and reduced the same to practice in a positive form. It thus gives full effect to the well known. maxim, that he has the better right, who is prior in point of time, namely, in making the discovery or invention. But if, as the argument of the learned counsel insists, the text of Mr. Phillips means to affirm, (what, I think, it does not,) that he, who is the original and first inventor of an invention, so perfected and reduced to practice, will be deprived of his right to a patent, in favor of a second and subsequent inventor, simply because the first invention was not then known, or used by other persons, than the inventor, or not known or used to such an extent, as to give the public full knowledge of its existence, I cannot agree to the doctrine; for, in my judgment, our Patent Acts justify no such construction.

But if filed be

In respect to another point stated at the argument, of opinion, that a disclaimer, to be effectual for all intents and purposes, under the Act of 1837, ch. 45, (§ 7 and § 9) must be filed in the patent office before the suit is brought. If filed during the pendency of the suit, the plaintiff will not be entitled to the benefit thereof in that suit. fore the suit is brought, the plaintiff will be entitled to recover costs in such suit, if he should establish, at the trial, that a part of the invention, not disclaimed, has been infringed by the defendant. Where a disclaimer has been filed, either before or after the suit is brought, the plaintiff will not be entitled to the benefit thereof, if he has unreasonably neglected or

1 Woodcock v. Parker (1 Gallis. R. 438).

Springer v. Foster et al.

delayed to enter the same at the patent office.

But such an

unreasonable neglect or delay will constitute a good defence

and objection to the suit.

Mem. The cause was then continued on the motion of the plaintiffs.

BENJAMIN H. SPRINGER

v.

BENJAMIN FOSTER AND TRUSTEE.

The Insolvent Act of Massachusetts of 1838, ch. 163, does not dissolve an attachment in the Courts of the United States, under the antecedent State Laws adopted by Congress.

The legislature of Massachusetts can promulgate rules for the State Courts only, and cannot affect the validity or effect of process in the Courts of the United States.

ASSUMPSIT. The principal was defaulted; and the questions arising in the cause respected the liability of the trustees. C. P. and B. R. Curtis, for the plaintiffs, and Fuller and Rand and Fisk, for the trustees.

STORY J. This cause was argued at a former term upon two questions arising upon the facts. The first was, whether an attachment of property upon mesne process, issuing out of the Circuit Court of the United States, was dissolved by the act of the defendant, Foster, in making an assignment under, and taking the benefit of, the Insolvent Act of Massachusetts of 1838, ch. 163. The second was, whether the General Assignment Act of Massachusetts of the 15th of April, 1836, ch. 238, was repealed by the Insolvent Debtor Act of the same State, of the 23d of April, 1838, ch. 163.

The latter question is one altogether dependent upon the

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local statute law of Massachusetts, the construction of which peculiarly belongs to the State tribunals. And as the very point is said to be now pending in judgment before the Supreme Court of the State, I shall reserve my opinion, until it has been disposed of in that Court; for, upon all such questions, the constant habit of the Courts of the United States is to follow the decisions of the State Courts.

The other question is one peculiarly and properly belonging to this Court. And upon it I have not the slightest difficulty. When the State processes and the proceedings thereon were originally adopted by the Courts of the United States under the Acts of Congress, all the incidents thereto, then existing under the State Laws, were by implication and intendment of law also adopted. But no changes of the State law, subsequently made, have been ever admitted to change the nature of the process, or the proceedings thereon, or the effects thereof, as they stood at the time of their original adoption, unless so far as they have been sanctioned or adopted by subsequent Acts of Congress, or by the rules and practice of the Courts of the United States in conformity therewith. Such has been the uniform doctrine upon this subject in all the Courts of the United States, and it has repeatedly received the sanction of the Supreme Court. The cases of Wayman v. Southard (10 Wheat. 1), Bank of United States v. Halstead (10 Wheat. R. 51), United States v. January (10 Wheat. R. 66, note), Ross et al. v. Duvall (13 Peters' R. 45), Beers v. Haughton (9 Peters' R. 329), and United States v. Knight (14 Peters' R. 301), are all in point to show the uniformity, with which this construction has been recognised in the Courts of the United States. The Insolvent Act of Massachusetts of 1838, ch. 163, could, therefore, have no effect to dissolve an attachment in the Courts of the United States under the antecedent State Laws, adopted by Congress; since the