Opinion of the court.

before the jury retired from the bar; and, as the matter thereof did not appear of record, prayed the court to allow and seal this bill of exceptions; which, being found correct, has been allowed and sealed accordingly by the presiding judge.

B. R. CURTIS,

Justice Sup. Ct. U. S.

[L. S.] The first ground of defense assumed under the notice from the defendant in the court below, viz., a license from the patentee, may at once be disposed of by the remark that no evidence was offered on the trial, bearing directly or remotely upon the fact of an actual license from the patentee, either to the defendant or to any person whomsoever. The defense, then, must depend exclusively upon the proper construction of the section of the law above cited, and the application of that section to the conduct of the parties, as shown by the bill of exceptions.

It is undeniably true, that the limited and temporary monopoly granted to inventors was never designed for their exclusive profit or advantage; the benefit to the public or community at large was another, and doubtless the primary, object in granting and securing that monopoly. This was at once the equivalent given by the public for benefits bestowed by the genius and meditations and skill of individuals, and the incentive to further efforts for the same important objects. The true policy and ends of the Patent Laws enacted under this government are disclosed in that article of the Constitution, the source of all these laws, viz., "to promote the progress of science and the useful arts," contemplating and necessarily implying their extension and increasing adaptation to the uses of society. Vide Constitution of the United States, art. 1, sec. 8, clause 9. By correct induction from these truths, it follows that the inventor who designedly, and with the view of applying it indefinitely and exclusively for his own profit, withholds his invention from the public, comes not within the policy or objects of the Constitution or acts of Congress. He does not promote, and if aided in his design would impede, the progress of science and the useful arts. And with a very bad grace could he appeal for favor or protection to that society which, if he had not injured, he certainly had neither benefitted nor intended to benefit. Hence, if, during such a concealment, an invention similar to or identical with his own should be made and patented, or brought into use without a patent, the latter could not be inhibited nor restricted, upon proof of its identity with a machine previously invented and withheld and concealed by the inventor from the public. The rights and interests, whether of the public or of individuals,

Opinion of the court.

can never be made to yield to schemes of selfishness or cupidity. Moreover, that which is once given to or is invested in the public, cannot be recalled nor taken from them.

But the relation borne to the public by inventors, and the obliga tions they are bound to fulfill, in order to secure from the former protection and the right to remuneration, by no means forbid a delay requisite for completing an invention, or for a test of its value or success by a series of sufficient and practical experiments; nor do they forbid a discreet aud reasonable forbearance to proclaim the theory or operation of a discovery during its progress to completion, and preceding an application for protection in that discovery. The former may be highly advantageous, as tending to the perfecting the invention; the latter may be indispensable, in order to prevent a piracy of the rights of the true inventor.

It is the unquestionable right of every inventor to confer gratuitously the benefits of his ingenuity upon the public, and this he may do either by express declaration, or by conduct equally significant with language-such, for instance, as an acquiescence with full knowledge in the use of his invention by others; or he may forfeit his rights as an inventor by a willful or negligent postponement of his claims, or by an attempt to withhold the benefit of his improvement from the public until a similar or the same improvement should have been made and introduced by others. Whilst the remuneration of genius and useful ingenuity is a duty incumbent upon the public. the rights and welfare of the community must be fairly dealt with and effectually guarded. Considerations of individual emolument can never be permitted to operate to the injury of these. But whilst inventors are bound to diligence and fairness in their dealings with the public, with reference to their discoveries, on the other hand, they are, by obligations equally strong, entitled to protection against frauds or wrongs practiced to pirate from them the results of thought and labor, in which nearly a lifetime may have been exhausted: the fruits of more than the viginti annorum lucubrationes, which fruits the public are ultimately to gather. The shield of this protection has been constantly interposed between the inventor and fraudulent spoliator by the courts in England, and most signally and effectually has this been done by this court, as is seen in the cases of Pennock & Sellers v. Dialogue, 2 Peters, 1, and of Shaw v. Cooper, 7 Peters, 292. These may be regarded as leading cases upon the question of the abrogation or relinquishment of patent privileges, as resulting from avowed intention, from abandonment or neglect, or from use known and assented to. Thus, in the former case, the court, on page 18, interpreting the

6

Opinion of the court.

phrase, “not known or used before the application for a patent, make the inquiry, what is the true meaning of the words not known or used,' &c. They cannot mean that the thing invented was not known or used before the application by the inventor himself, for that would be to prevent the only means of his obtaining a patent. The USE as well as the KNOWLEDGE of his invention must be indispensable to enable him to ascertain its competency to the end proposed, as well as to perfect its component parts. The words, then, to have any rational interpretation, must mean, not known or used by others before the application. But how known or used? If it were necessary, as it well might be, to employ others to assist in the original structure or use by the inventor himself, or if, before his application, his invention should be pirated by another, or used without his consent, it can scarcely be supposed that the legislature had within its contemplation such knowledge or use." Further on in the same case, page 19, the court say: "If an inventor should be permitted to hold back from the knowledge of the public the secrets of his invention; if he should, for a long period of years, retain the monopoly and make and sell his invention publicly, and thus gather the whole profits of it, relying on his superior skill and knowledge of the structure, and then, and then only, when the danger of competition should force him to secure the exclusive right, he should be allowed to take out a patent, and thus exclude the public from any further use than what would be derived under it during his fourteen years-it would materially retard the progress of science and the useful arts, and give a premium to those who should be least prompt to communicate their discoveries." In Shaw v. Cooper, 7 Peters, this court, on page 319, in strict coincidence with the decision in 2 Peters, say: "The knowledge or use spoken of in the statute could have referred to the public only, and cannot be applied to the inventor himself. He must necessarily have a perfect knowledge of the thing invented, and its use, before he can describe it, as by law he is required to do preparatory to the emanation of a patent. But there may be cases in which the knowledge of the invention may be surreptitiously obtained and communicated to the public, that do not affect the right of the inventor. Under such circumstances, no presumption can arise in favor of an abandonment of the right by the inventor to the public, though an acquiescence on his part will lay the foundation for such a presumption.”

The real interest of an inventor, with respect to an assertion or surrender of his rights under the Constitution and laws of the United States, whether it be sought in his declarations or acts, or in forbearance or neglect to speak or act, is an inquiry or conclusion of fact,

Statement of the case.

and peculiarly within the province of the jury, guided by legal evidence submitted to them at the trial.

Recurring now to the instruction from the judge at circuit in this case, we consider that instruction to be in strict conformity with the principles hereinbefore propounded, and with the doctrines of this court, as declared in the case of Pennock v. Dialogue and Shaw v. Cooper. That instruction diminishes or excludes no proper ground upon which the conduct and intent of the plaintiff below, as evinced either by declarations or acts, or by omission to speak or act, and on which also the justice and integrity of the conduct of the defendants were to be examined and determined. It submitted the conduct and intentions of both plaintiff and defendants to the jury, as questions of fact to be decided by them, guided simply by such rules of law as had been settled with reference to issues like the one before them; and upon those questions of fact the jury have responded in favor of the plaintiff below, the defendant in error. We think that the rejection by the court of the prayers offered by the defendants at the trial was warranted by the character of those prayers, as having a tendency to narrow the inquiry by the jury to an imperfect and partial view of the case, and to divert their minds from a full comprehension of the merits of the controversy. The decision of the Circuit Court is affirmed, therefore, with costs.

AFFIRMED WITH COSTS.

THOMAS OTIS LE ROY AND DAVID SMITH, APPELLANTS, v. BENJAMIN TATHAM, JR., HENRY B. TATHAM, AND GEORGE N. TATHAM.

(22 Howard, 132.)

The patent of the Tathams, for an improvement upon the machinery used for making pipes and tubes from lead or tin, when in a set or solid state, explained and sustained.

THIS was an appeal from the Circuit Court of the United States for the Southern District of New York, sitting in equity.

It was a bill filed by the Tathams against the appellants, for an infringement of the patent for making lead pipe. which is particularly described in a former case, reported in 14 Howard, 156.

The Circuit Court decreed that John Hanson and Charles Hanson, of England, were the first and original inventors and discoverers of the improvement in making pipes and tubes from metallic substances, set forth and described in the bill of complaint.

Opinion of the court.

That the subject-matter of the said invention and discovery is patentable..

That the complainants are the legal patentees and owners, within the United States, of the said invention and discovery, set forth in the bill of complaint, which sufficiently describes the same.

That the defendants have infringed and violated the said patentright of the complainants in the manner charged in the bill of complaint.

The court thereupon ordered a reference to a master to take an account of the damages sustained by the complainants. Upon the coming in of his report, sundry exceptions were filed by the defendants, which were overruled, and the court decreed the amount which the defendants should pay. An appeal from this decree brought the case up to this court.

The facts of the case are stated in the opinion of the court.

It was argued by Mr. Stoughton and Mr. Noyes, for the appellants, and by Mr. Keller and Mr. Goddard, for the appellees.

The principal ground upon which the counsel for the appellants sought to reverse the decree, was that the patent to the complainants was void, because the Hansons were not the original and first inventors of the improvements therein described and claimed.

The discussion of this proposition filled the court-room with models and machines upon both sides, the description of which would be of little interest to the readers of this volume. They will be, therefore, entirely passed over.

Mr. Justice McLEAN delivered the opinion of the court.

This is an appeal from the final decree of the Circuit Court of the United States for the Southern District of New York, on a bill filed by the appellees to restrain the infringement by the appellants of a patent for making lead pipe, and for general relief.

A suit at law was commenced, after the filing of the bill, on or about the 10th of May, 1847, to recover damages for the same infringement.

The action was twice tried-once on the 3d of May, 1848, and resulted in a verdict for the appellants, which was set aside by the court, and a new trial awarded. It was tried in May, 1849, when the jury gave a verdict for the respondents for $11,394 in damages. Exceptions were taken to the charge, and the judgment was reversed, and a new trial ordered in December Term, 1852. 14 How., 156.