717 Madison Place

27 U.S. 1 (____)

2 Pet. 1

ABRAHAM L. PENNOCK & JAMES SELLERS, PLAINTIFFS IN ERROR
vs.
ADAM DIALOGUE.

Supreme Court of United States.

4*4 Mr Webster, for the plaintiff in error.

Mr Sergeant, for the defendant.

14*14 Mr. Justice STORY delivered the opinion of the Court.

This is a writ of error to the circuit court of Pennsylvania. The original action was brought by the plaintiffs in error for an asserted violation of a patent, granted to them on the 6th of July 1818, for a new and useful improvement in the art of making leather tubes or hose, for conveying air, water, and other fluids. The cause was tried upon the general issue, and a verdict was found for the defendant, upon which judgment passed in his favour; and the correctness of that judgment is now in controversy before this court.

At the trial, a bill of exceptions was taken to an opinion delivered by the court, in the charge to the jury, as follows, viz. “That the law arising upon the case was, that if an inventor makes his discovery public, looks on and permits others freely to use it, without objection or assertion of claim to the invention, of which the public might take notice; he abandons 15*15 the inchoate right to the exclusive use of the invention, to which a patent would have entitled him had it been applied for before such use. And, that it makes no difference in the principle, that the article so publicly used, and afterwards patented, was made by a particular individual, who did so by the private permission of the inventor. And thereupon, did charge the jury, that if the evidence brings the case within the principle which had been stated, the court were of opinion that the plaintiffs were not entitled to a verdict.”

The record contains, embodied in the bill of exceptions, the whole of the testimony and evidence offered at the trial by each party, in support of the issue. It is very voluminous, and as no exception was taken to its competency, or sufficiency, either generally or for any particular purpose; it is not properly before this Court for consideration, and forms an expensive and unnecessary burthen upon the record. This Court has had occasion in many cases to express its regret, on account of irregular proceedings of this nature. There was not the slightest necessity of putting any portion of the evidence in this case upon the record, since the opinion of the court delivered to the jury, presented a general principle of law, and the application of the evidence to it was left to the jury.

In the argument at the bar, much reliance has been placed upon this evidence, by the counsel for both parties. It has been said on behalf of the defendants in error; that it called for other and explanatory directions from the court, and that the omission of the court to give them in the charge, furnishes a good ground for a reversal, as it would have furnished in the court below for a new trial. But it is no ground of reversal that the court below omitted to give directions to the jury upon any points of law which might arise in the cause, where it was not requested by either party at the trial. It is sufficient for us that the court has given no erroneous directions. If either party deems any point presented by the evidence to be omitted in the charge, it is competent for such party to require an opinion from the court upon that point. If he does not, it is a waiver of it. 16*16 The court cannot be presumed to do more, in ordinary cases, than to express its opinion upon the questions which the parties themselves have raised at the trial.

On the other hand, the counsel for the defendant in error has endeavoured to extract from the same evidence, strong confirmations of the charge of the court. But, for the reason already suggested, the evidence must be laid out of the case, and all the reasoning founded on it falls.

The single question then is, whether the charge of the court was correct in point of law. It has not been, and indeed cannot be denied, that an inventor may abandon his invention, and surrender or dedicate it to the public. This inchoate right, thus once gone, cannot afterwards be resumed at his pleasure; for, where gifts are once made to the public in this way, they become absolute. Thus, if a man dedicates a way, or other easement to the public, it is supposed to carry with it a permanent right of user. The question which generally arises at trials, is a question of fact, rather than of law; whether the acts or acquiescence of the party furnish in the given case, satisfactory proof of an abandonment or dedication of the invention to the public. But when all the facts are given, there does not seem any reason why the court may not state the legal conclusion deducible from them. In this view of the matter, the only question would be, whether, upon general principles, the facts stated by the court would justify the conclusion.

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23 U.S. 358 (1825)

10 Wheat. 358

KEPLINGER
v.
DE YOUNG.

Supreme Court of United States.

359*359 This cause was argued by Mr. Webster and Mr. Sergeant, for the plaintiff, and by the Attorney General, for the defendant.

Mr. Justice WASHINGTON delivered the opinion of the Court.

This was a suit commenced by the plaintiff, Keplinger, in the Fourth Circuit for the District of Maryland, against the defendant, for the violation of the plaintiff’s patent right, secured to him according to law, in a certain new and useful improvement, to wit, a machine for making watch chains, &c. The third count in the declaration, upon which alone this cause has been argued, is in the usual form, charging the defendant with having unlawfully used the said improvement, without the consent of the plaintiff first had and obtained in writing. The defendant pleaded the general issue, and gave notice to the plaintiff that he should deny that the exclusive right of using the improvement mentioned in the declaration, was vested in the plaintiff, or that he was the original and first inventor of the said improvement, and that he should give evidence to establish those facts.

360*360 At the trial, the plaintiff read in evidence the letters patent duly granted, bearing date the 4th of May, 1820, and proved, that he was the true and original inventor of the machine specified in the patent, and that the defendant, together with John Hatch and John C. Kirkner, did use the said machine in the making of watch-chains from steel, from the 4th of May till some time in the month of December, 1820.

The defendant, in order to prove that any concern or connexion which he had with the said Hatch and Kirkner, in the making of watch-chains, by means of the said machine, was merely as a purchaser of watch-chains from them under the following contract, produced and gave the same in evidence. The agreement referred to, bearing date the 3d of May, 1820, is between M. De Young, and J. Hatch and J. Kirkner, and witnesses, “that the said Hatch and Kirkner do hereby engage and obligate themselves to manufacture and deliver to M. De Young, or at his store in said city, not less than three gross, but as many as five gross, of wire watch chains, agreeably to a sample to be deposited with T. Barly, (if practicable to manufacture so many,) in each week, from the date hereof, for the term of six months, one half of which number to be with turned slides, and the other half wire slides; the whole number to be four strands, if the said De Young so choose; but he is to have the privilege of directing the description to be furnished, that is to say, what number of four, five, six, or eight strands; the prices of 361*361 which to be as follows: four strands, two dollars per dozen; six strands, two dollars sixty-six cents and two thirds per dozen, and eight strands at the rate of three dollars thirty-three cents per dozen; said Hatch & Kirkner to devote their whole time and attention to said manufactory, and neither to sell, barter, nor dispose of, in any manner, or way, or means whatever, of any goods of the description herein before described, or which may, in any manner or way whatsoever, interfere with the exclusive privilege herein before granted, but will faithfully manufacture for said De Young, and none other, as far as five gross of chains per week, if practicable, and not less than three gross per week, at the prices herein before stipulated, and payable as follows: one half in cash at the end of every week, for the total number delivered within the week, and the other half in said De Young’s promissory note, payable at sixty days from the date thereof. And the said De Young, on his part, doth hereby promise to receive from the said Hatch & Kirkner, such quantity of watch-chains answering the description of the sample, as it may be in their power to manufacture, not exceeding five gross per week, reserving to himself the privilege of directing what proportion thereof shall be four, six, or eight strands, and pay for the same weekly in the following manner, viz. the one half amount of week’s delivery in cash, the other half in a note at sixty days, the same to be settled for weekly; in manner aforesaid, if required.”

The defendant also gave evidence to prove 362*362 that all the connexion he ever had with the said Hatch & Kirkner, relative to watch-chains made by them with the said machine or otherwise, was merely as a purchaser of such chains from them, under and in pursuance of the said contract.

The plaintiff then proved, that, at the time of making the said contract, the defendant was fully apprized of the existence of the machine described and specified in the patent, and of its prior and original invention by the plaintiff, and of the intention of the plaintiff to obtain the said patent; and that the said contract was made with a view to the employment by the said Hatch & Kirkner, in the manufacture of watch-chains, of a machine precisely similar to that invented by the plaintiff, after the plaintiff should have obtained his patent; and that a machine precisely similar to that invented by the plaintiff was employed by the said Hatch & Kirkner in the manufacture of watch-chains by them under the said contract, and with the knowledge and consent of the defendant during the whole period aforesaid, he and they having received notice, on the 5th of May, 1820, of the plaintiff’s patent; and that the watch-chains so manufactured by Hatch & Kirkner, during the whole of the said period, were delivered by them to the defendant, and by him received, under and in conformity with the said contract.

Upon this evidence, the Court, at the request of the defendant’s counsel, instructed the jury, that the plaintiff was not entitled to a verdict on the first and second counts in his declaration. 363*363 because the acts which they charge, if true, constitute no offence against the plaintiff’s patent. And that, if the jury should be of opinion, on the evidence, that the plaintiff is the sole and original inventor of the whole machine; and that the defendant had no other connexion with Hatch & Kirkner with regard to these chains, than that which arose from his said contract with them, under which he procured the chains to be made by Hatch & Kirkner, and sold them when so made; and that the said contract is a real contract; then these acts constituted no breach of the plaintiff’s patent-right on the part of De Young, and that the verdict must be for the defendant; and that this legal aspect would not be changed, although the defendant may, on any occasion, have supplied, at the cost of Hatch & Kirkner, the wire from which the chains so manufactured were made.

To this instruction the plaintiff’s counsel took a bill of exceptions, and a verdict and judgment having been rendered for the defendant, the cause is brought into this Court by a writ of error.

The only question which is presented by the bill of exceptions to the consideration of this Court is, whether the Court below erred in the instruction given to the jury; and this must depend upon the correct construction of the 3d section of the act of Congress, of the 17th of April, 1800, c. 179. which enacts, “that where any patent shall be granted, pursuant to 364*364 the act of the 21st February, 1793, c. 156. and any person without the consent of the patentee, his executors, &c. first obtained in writing, shall make, devise, use, or sell, the thing whereof the exclusive right is secured to the said patentee by such patent, such person so offending shall forfeit and pay to the said patentee, a sum equal to three times the actual damage sustained by such patentee,” &c.

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22 U.S. 603 (1824)

9 Wheat. 603

Ex parte WOOD & BRUNDAGE.

Supreme Court of United States.

March 11, 1824.

March 17, 1824.

This cause was argued by Mr. Haines,^[a] in support of the rule, and by Mr. Emmett,^[b] against it.

Mr. Justice STORY delivered the opinion of the Court.

The District Judge of the southern district of New-York, under the 10th section of the patent act, of the 21st of February, 1793, chapter 11., granted a rule upon Charles Wood and Gilbert 604*604 Brundage, at the instance and complaint of Jethro Wood, to show cause why process should not issue against them, to repeal a patent granted to them for a certain invention, in due form of law; and upon hearing the parties, no sufficient cause being, in his judgment, shown to the contrary, he, on the 2d day of July, 1823, passed an order, that the said rule be made absolute, and that the said patent be repealed; and that process issue to repeal the said patent, and for the costs of the complainant. The patentees, by their counsel, moved the Court to direct a record to be made of the whole proceedings, and that process, in the nature of a scire facias, should be issued, to try the validity of the patent. The Court denied the motion, upon the ground that these were summary proceedings, and that the patent was repealed de facto, by making the rule absolute; and that the process to be issued, was not in the nature of a scire facias, to try the validity of the patent, but merely process repealing the patent.

A motion was made, on a former day of this term, in behalf of the patentees, for a rule upon the district Judge, to show cause why a mandamus should not issue from this Court, directing him to make a record of the proceedings in the cause, and to issue a scire facias, for the purpose of trying the validity of the patent. The rule having been granted, and due service had, the case has since been argued by counsel, for and against the rule; and the opinion of this Court is now to be delivered.

Two objections have been urged at the bar, 605*605 against the making this rule absolute. The first is, that these proceedings, being summary, are not properly matters of record. The second, that this is not a case in which, by law, a scire facias, or process in the nature of a scire facias, can be awarded, to try the validity of the patent.

Both of these objections are founded upon the provisions of the 10th section of the patent act, and must be decided by a careful examination of those provisions. The words are, “that, upon oath or affirmation being made, before the Judge of the District Court, where the patentee, his executors, &c. reside, that any patent, which shall be issued in pursuance of this act, was obtained surreptitiously, or upon false suggestion, and motion made to the said Court within three years after issuing the said patent, but not afterwards, it shall and may be lawful for the Judge of the said District Court, if the matter alleged shall appear to him to be sufficient, to grant a rule that the patentee, or his executor, &c. show cause why process should not issue against him, to repeal such patent; and if sufficient cause shall not be shown to the contrary, the rule shall be made absolute; and thereupon, the Judge shall order process to be issued against such patentee, or his executors, &c., with costs of suit. And in case no sufficient cause shall be shown to the contrary, or if it shall appear that the patentee was not the true inventor or discoverer, judgment shall be rendered by such Court for the repeal of the said patent. And if the party at whose complaint the process issued, shall have judgment given against him, he shall pay all 606*606 such costs as the defendant shall be put to in defending the suit, to be taxed by the Court, and recovered in due course of law.”

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Recently, I was looking for more information on the state granted business monopoly (business method??)  that was at the heart of the dispute in Gibbons v. Ogden when I ran across the book Gibbons v. Ogden, Law, and Society in the Early Republic.   The author, Thomas H. Cox, recounts the legislative process for the Patent Act of 1793:

The Patent Act of 1790 appeared simple, but in practice, it proved unworkable.  Many inventors complained that federal patents were expensive, hard to obtain, impossible to enforce, and limited in scope. Secretary of State Thomas Jefferson condemned the very concept of patents as antidemocratic. In truth, he  and his colleagues lacked the time to review applications. On February 4, 1791, Jefferson lobbied Congress to revise existing U.S. patent law. Three days later, he submitted a bill that made the application process more costly and timeconsuming.  Specifically, the bill required an applicant to petition the secretary of state for a warrant that testified to the usefulness of the invention. After paying a fee directly to the treasury, the inventor then had to register with every U.S. federal district court and publish notices of the invention three times in a major paper in each of those districts to warn away other competitors.

While Jefferson drafted the bill, the Patent Board reviewed requests from John Fitch, James Rumsey, Henry Read, and John Stevens. To avoid confrontations, the board canceled a hearing with the inventors and urged them to wait for the passage of the new patent bill, which was before Congress at the time. Fitch protested the bill, stating he “had no idea that he must go all the way from Kentucky to Cape Cod, and quite the Distance of Province of Main[e] to publish his inventions, and to pay out large fees wherever he goes for the same.” For once on the same side as Fitch, Joseph Barnes published a polemic that condemned Jefferson’s bill for favoring European technological discoveries over American inventive genius. Despite Barnes’s strong words, the ever-wary Fitch suspected Jefferson and Rumsey of collusion to keep him from developing a steamboat franchise.

Jefferson resubmitted his bill to Congress early in March 1792. The measure now required an applicant to register with the secretary of state, pay a fee, and provide a short description and model of the invention. The inventor, however, still had to file and register the patent in every judicial district in the United States. The new bill also allowed an offender to claim ignorance of the law or irrelevancy of the patent in question as valid defenses. It specified that patents were the private, intellectual property of their owners and that the public would not be allowed to view related documents until the originals expired. In addition, the bill asserted that federal patents trumped any state licenses granted before the

ratification of the U.S. Constitution. Furthermore, applicants had to be American citizens.

When Congress reconvened in January 1793, it appointed a committee, chaired by Hugh Williamson, to consider Jefferson’s bill. The following month, the bill passed both houses of Congress to become the Patent Act of 1793. In 1800, Congress revised the act to allow resident aliens to apply and to set heavy fines for those who infringed on patent rights.  However, like its predecessor, the revised act allowed applicants to secure patents for inventions regardless of how similar their discoveries might  be. Fitch, Rumsey, Read, and Stevens quickly secured federal patents for their steamboats under the new federal guidelines. However, realizing the worthlessness of such documents, the inventors quickly turned to the states to protect their work.

 Gibbons v. Ogden, Law and Society in the Early Republic, Ohio University Press-Swallow Press, 2009 at pp. 14-15.

22 U.S. 1 (1824)9 Wheat. 1

GIBBONS, Appellant,
v.
OGDEN, Respondent.

Supreme Court of United States.

February 4, 5, and 6, 1824.

March 2, 1824.

3*3 Mr. Webster, for the appellant.

Mr. Oakley, for the respondent.

186*186 Mr. Chief Justice MARSHALL delivered the opinion of the Court, and, after stating the case, proceeded as follows:

The appellant contends that this decree is erroneous, because the laws which purport to give the exclusive privilege it sustains, are repugnant to the constitution and laws of the United States.

They are said to be repugnant —

1st. To that clause in the constitution which authorizes Congress to regulate commerce.

2d. To that which authorizes Congress to promote the progress of science and useful arts.

The State of New-York maintains the constitutionality of these laws; and their Legislature, their Council of Revision, and their Judges, have repeatedly concurred in this opinion. It is supported by great names — by names which have all the titles to consideration that virtue, intelligence, and office, can bestow. No tribunal can approach the decision of this question, without feeling a just and real respect for that opinion which is sustained by such authority; but it is the province of this Court, while it respects, not to bow to it implicitly; and the Judges must exercise, in the examination of the subject, that understanding which Providence has bestowed upon them, with that independence which the people of the United 187*187 States expect from this department of the government.

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