Toppan v. The National Bank Note Co.

or by an adjudication in which the validity of the patent has been sustained. This patent never having been litigated, of course no judgment has ever been pronounced in its favor. The right could not have been in the exclusive enjoyment of any one for more than one month and ten days, or, at farthest, about two months, as the application was made on the 23d of April, 1861, and the patent was granted on the 21st of May, 1861, and, before, the 1st of July following, the defendants asserted their right to use the machine, and insisted that the patent was void. The principle that exclusive possession for a time strengthens the title of a patentee, is founded on the idea that, as it is a claim of right adverse to the public, and the public acquiesce in that claim, such acquiescence raises a presumption that the claim is good. But no such presumption can be raised in this case. There is no evidence that the public, or that small portion of them which would be likely to avail themselves of this invention, knew even of its existence, much less of the existence of an exclusive grant to this patentee or to any one else.

Nor, in this view of the case, can I take into account the possession of the right, and the use of the invention, before the application for the grant of the patent. This is sometimes done on the principle laid down in Sargent v. Seagrave, (2 Curtis C. C. R., 553.) But, of course, the use in such a case must be a public use, under an avowed claim of a right to a patent; otherwise, there is no exclusive possession as against the public, and no claim in which the public can acquiesce. In this case, I must assume the use prior to the application to have been secret, or the patent is clearly void. This unavoidably places the plaintiffs, so far as this motion is concerned, between Scylla and Charybdis. To hold that the use prior to the application was a public use, and was exclusive as against the public, would, as it extended beyond two years, wreck the patent. To hold that it was a secret use, away from the eye of the public, sweeps away the ground of exclusive possession and acquiescence by the public, and leaves no foundation upon which the motion can stand. But the latter result is

Toppan v. The National Bank Note Co.

least prejudicial to the patent. The motion is, therefore, denied.

As these questions of forfeiture and abandonment are peculiarly within the province of a jury, I think that unless the answer, when filed, should change the aspect of the case, they should be passed upon by a jury, before an injunction is asked for.

VOL. IV.-33

APPENDIX.

I.

[The following proceedings took place in the Circuit Court of the United States for the Southern District of New York, at the city of New York, on the 4th of May, 1859.]

THE DEATH OF NICHOLAS HILL.

Mr. James T. Brady announced to the Court, (held by Mr. Justice NELSON,) the death of NICHOLAS HILL, an eminent member of the bar, late of Albany, in this State, and thereupon moved that, as a tribute to the memory of the deceased, and as a mark of regard for his elevated personal aud professional character, an appropriate entry be made on the minutes of the Court, and that the Court do then adjourn. This motion was seconded by Mr. Charles O'Conor, with the concurrence of Mr. Francis B. Cutting, Mr. William M. Evarts and Mr. William Fullerton.

Mr. Justice NELSON approved the motion, in a few observations eulogistic of the deceased, and directed that this entry be made on the minutes of the Court, and that the Court then adjourn.

II.

[The following regulations in regard to costs and fees were adopted in the Circuit and District Courts of the United States for the Southern District of New York, on the 28th of May, 1859.]

COSTS TAXABLE TO COMMISSIONERS APPOINTED AND ACTING ON REFERENCES, UNDER RULE 44 OF THE RULES OF PRACTICE FOR THE COURTS OF THE UNITED STATES IN ADMIRALTY AND MARITIME JURISDICTION, PRESCRIBED BY THE SUPREME COURT OF THE UNITED STATES AT THE JANUARY TERM, 1845, AND UNDER RULES OF PRACTICE IN ADMIRALTY, ADOPTED IN JANUARY Term, 1839, by the District COURT OF THE UNITED STATES FOR THE SOUTHERN DISTRICT OF NEW YORK.

It being made a question of taxation, what fees or compensation may be lawfully allowed to said officers, for services rendered by them, under their appointments by authority of the above Rules of Court; and it appearing, that the Act

of Congress, entitled. "An Act to regulate the fees and costs to be allowed Clerks, Marshals, and Attorneys of the Circuit and District Courts of the United States, and for other purposes," approved February 26th, 1853, (10 U. S. Stat. at Large, 161,) makes no provision for compensating Commissioners appointed by the Courts under the aforesaid Rules, for their services rendered in aid of the administration of justice, in the matters and cases therein specified; and we being of opinion, that these special officers of the Court do not come strictly within the Act, and that, upon the usages and doctrines of Courts of the United States, officers called upon to render services in those Courts, according to their rules and modes of practice, for which no specific fees or costs are appointed by statute law, will be awarded compensation therefor by the Courts respectively in which the services are performed, corresponding in amount to that allowed by law in the State, for similar services rendered by State officers, in a like capacity, particularly in Chancery procedures, (1 Blatchf. C. C. R., 652; Hathaway v. Roach, 2 Woodb. & M., 63;) and it further appearing to us, that such is an equitable and sound rule to be applied in relation to this class of officers, especially as the above cited statute law of costs contains no prohibition of compensation to them by authority of the Courts otherwise than through a positive appointment by statutory law: We are, therefore, of opinion, that such Commissioners are entitled to have taxed in their behalf, by the proper taxing officers, the rate of fees or costs allowable in the Court of Chancery of the State of New York to Masters in Chancery of that Court, for services therein, performed by them, on the first of September, 1845, being the time the Rule of Practice aforesaid adopted by the Supreme Court went into operation, unless in particulars in which the rate of allowance then prevailing in the State Court shall have been rescinded or modified by subsequent regulations made by orders of the Courts of the United States; and we designate as proper subjects of taxation, in cases where those services have been actually performed by such Commissioners, in Admiralty and Maritime causes referred to them pursuant to the aforesaid Rules, the following items, embraced in the Rules and Orders of the Court of Chancery of the State of New York, revised and established by Chancellor Walworth, in .1844, under the head of "Master's Fees," (pages 190, 191,) to wit:

Commissioners' Costs.

For signing every summons for a witness or party to attend a reference, twelve cents.

For attending at the time and place, and adjourning the same at request, or upon reasonable cause, one dollar.

Attendance and hearing every argument upon any matter referred to him, when litigated, three dollars; and when he proceeds ex parte, one dollar.

Attending and settling his report after argument, if both parties attend and litigate the same, three dollars; if he proceeds ex parte, one dollar.

For writing out and certifying the testimony of witnesses taken orally before him on the hearing, to file with his report, for every folio of 100 words, twenty cents.

Copies of the same, furnished, on request, to either party, for each folio, ten cents.

Drawing every report in pursuance of an order of reference to him, (exclu sive of schedules and the written proofs,) for every folio, twenty cents.