Gregerson v. Imlay.

to the peace of society and the safety of individuals, and against public policy.

It may be claimed, that this contract is not champertous, inasmuch as the plaintiff does not agree to indemnify the defendant against taxable costs. This distinction has sometimes been taken; and some of the elementary treatises seem to regard it as valid. But the doctrine was pretty effectually exploded in the case of Lathrop v. The Amherst Bank, (9 Metcalf, 489.) Indeed, where the power over the prosecution of the claims is, as claimed in the present case, exclusive and irrevocable, the exemption of the prosecutor from liability for costs, aggravates rather than relieves the mischievous character of the contract.

The case of Call v. Calef, (13 Metcalf, 362,) was one in which a contract was involved, resembling in many features the one now before me. The facts were these: Leeds & Co. claimed to own the exclusive right to use a patent planing machine in the town of Manchester, New Hampshire, in which town Baldwin & Stevens were infringing upon their rights by the use of another machine. Call, the plaintiff, had an interest in the same patent in Lowell,' and Leeds & Co. executed a power of attorney to him, authorizing him, by suit or otherwise, to restrain Baldwin & Stevens from using the machine in Manchester, and promised him one-half of what he might recover or collect for his compensation. It was claimed, on a subsequent trial, in which this agreement was drawn in question, that it was void for champerty and maintenance. The Court held it valid, upon the sole ground, however, that, as the unauthorized use of the machine in Manchester would diminish the profits and value of the patent in the adjoining town of Lowell, where Call owned the right, the latter had a direct interest in preventing the infringement in Manchester, and that this interest supported the validity of the contract. It is needless to remark that, in the present case, the plaintiff had no interest whatever in the claims committed to his control by the plaintiff, except what arose out of the contract itself.

Sickels v. The Falls Company.

I am aware that, in Sedgwick v. Stanton (4 Kernan, 289,) Selden, J., in an able opinion maintains that the doctrines of the common law touching champerty and maintenance are pretty effectually swept away in New York, by State legislation. But, although the contract under consideration was made in New York, still the lex loci cannot control the determination of the present case. The contract was, by its terms, to be executed in all the States of the Union except four, and the effect of the injunction asked for would be to support the contract in many States where it is clearly void. But, as already intimated, if the contract were barely valid at law, still, by applying the salutary doctrines of the English Court of Exchequer, in Prosser v. Edmonds, in which I fully con- · cur, I should feel compelled to deny this motion.

FREDERICK E. SICKELS vs. THE FALLS COMPANY.

The claim in the patent granted to Frederick E. Sickels, September 19th, 1845, extended September 19th, 1859, and reissued February 21st, 1860, for an "improvement in steam engines," "to imparting a co-existing movement to two reciprocating catch-pieces, in the operation of the trip cut-off valves," is a claim for an effect or function, and is, therefore, not patentable. The claim is also void on the ground that the improvement is substantially described and claimed in a patent granted to the patentee October 19th, 1844. It is also void because, the improvement having been invented in 1844, it was not embodied in the original patent of 1845, or noticed therein until the reissue of 1860.

(Before NELSON and SHIPMAN, JJ., Connecticut, August 13th, 1861.)

THIS was an action at law for the infringement of letters patent granted to the plaintiff, September 19th, 1845, for an "improvement in steam engines," and extended for seven years from September 19th, 1859, and reissued February 21st, 1860. The patentee, after describing the nature of his improvement, and the machinery for effecting it, claimed as fol

Toppan v. The National Bank Note Co.

lows: "Imparting a co-existing movement to two reciprocating catch-pieces, in the operation of the trip cut-off valves."

NELSON, J. The claim is, in terms, for an effect, or function, and is, therefore, not patentable. But, without placing the case upon this strict ground, the unanswerable objection to the plaintiff's recovery is, that the improvement is substantially described and claimed in a patent granted to him on the 19th of October, 1844. This is a bar to the subsequent patent.

Another difficulty in the case is, that the patentee admits that he invented the improvement early in 1844. It was not embodied in the original patent of 1845, or noticed therein, until the reissue of February 21st, 1860, more than fourteen years after the invention.

We think that the defendant is entitled to judgment.

TOPPAN, CARPENTER & Co.

v8.

THE NATIONAL BANK NOTE CO. AND OTHERS.

IN EQUITY.

An inventor, by permitting a public use of his invention for more than two years before he applies for a patent for it, forfeits all right to a patent, under section 7 of the Act of March 3d, 1839, (5 U. S. Stat. at Large, 354.)

To obtain a provisional injunction on a patent, the title of the patentee must be strengthened by exclusive possession for some period of time, or by an adjudication sustaining the validity of the patent.

Such possession must be one as against the public, and, therefore, a use of the invention before the application for a patent, must, to constitute such possession, be a public use, under an avowed claim of a right to a patent. Questions of forfeiture and abandonment, in a patent suit, ought to be passed upon by a jury.

(Before SHIPMAN, J., Southern District of New York, September 10th, 1861.)

Toppan v. The National Bank Note Co.

THIS was a motion for a provisional injunction, to restrain the defendants from infringing letters patent granted to Goorge C. Howard, May 21st, 1861, for a machine for perforating paper. The bill alleged that Howard, after the issuing of the patent, assigned to the plaintiffs the exclusive right under it, for one year. It was not stated in the bill when the year began to run, nor was the date of the assignment stated. Charles Tracy, for the plaintiffs.

Charles M. Keller, for the defendants.

SHIPMAN, J. From the allegations of the bill, and the affidavits filed in the cause, I must, in deciding this motion, assume the following facts: 1. That the machine patented was invented by Howard more than four years before he applied for a patent. 2. That, for a valuable consideration to the patentee, and for the profit of the plaintiffs, the former permitted the latter to use one or more of the machines for more than two years before any application was made for a patent. 3. That, at the instance of the plaintiffs, the patentee permitted the American Bank Note Company to construct one or more of the machines, and use them in their business; precisely how long, or upon what consideration, does not appear. 4. That only one month and ten days, or, at the longest, about two months, elapsed, during which exclusive possession of the invention secured by the patent could have been enjoyed either by the patentee or the plaintiffs.

Without touching upon the question of abandonment, if I were called upon to decide this motion on the question as to whether or not the patentee had forfeited his right to a patent, under the 7th section of the Act of March 3d, 1839, (5 U. S. Stat. at Large, 354,) I should, as the case now stands, be compelled to deny the relief asked. I could not resist the conclusion that the use of the machines by the plaintiff with the consent of the patentee, for a period of more than two years before the application for a patent, in the absence of any evidence that a single step was taken to secure

Toppan v. The National Bank Note Co.

one, or that either the inventor or the plaintiff's ever intended to secure one, worked a forfeiture of the right to a patent. It would be difficult, on the present evidence, to hold that the use was not a public one. And, if it was a public use, then the patentee, by permitting such use for more than two years before he made any application for a patent, forfeited all right to one, and his patent is void. This I understand to be the doctrine laid down in McCormick v. Seymour, (2 Blatchf C. C. R., 254.) In that case Mr. Justice Nelson remarked, in construing the 7th section of the Act of 1839, that if a patentee "either sells a machine, or uses one, or puts one into public use two years before his application for a patent, it works a forfeiture of his right."

But I do not wish to prejudge this point of forfeiture in the present case, nor the question of abandonment. Courts should be very tender of the rights of inventors, and not draw hasty conclusions adverse to the validity of their rights secured by patent. I am, therefore, disposed to decide this motion on another ground, and one which will throw no doubt on the validity of this patent, although it is difficult to see how it can be saved, on the conceded facts. I will, therefore, assume, for the purpose of this decision, that there was no public use of this invention prior to the application for a patent, no forfeiture of the patentee's rights by a use of more than two years, and no abandonment and dedication to the public. I will assume that whatever use there was was secret, and under such circumstances that the right to a patent was not lost. But, after all these assumptions, it is equally clear that I can grant no próvisional injunction. This extraordinary relief is never granted as a matter of course. It is never granted on filing a bill and producing a patent. The patent itself, although in a certain sense it is prima facie evidence of the validity of the grant, is never sufficiently strong per se to warrant the relief asked for on this motion. The title of the patentee must, in order to obtain this relief, always be strengthened by exclusive possession for some period of time,