AGAWAM COMPANY V. JORDAN, 74 U. S. 583 (1868)

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U.S. Supreme Court

Agawam Company v. Jordan, 74 U.S. 7 Wall. 583 583 (1868)

Agawam Company v. Jordan

74 U.S. (7 Wall.) 583


1. In a suit in chancery under a patent, evidence of prior knowledge or use of the thing patented is not admissible unless the answer contains the names and places of residence of those alleged to have possessed a prior knowledge of the thing and where the same had been used.

2. The defense "that the patentee fraudulently and surreptitiously obtained the patent for that which he knew was invented by another" is not a chanrobles.com-red

Page 74 U. S. 584

sufficient defense to a charge of infringement unless accompanied by the further allegation that the alleged first inventor was at the time using reasonable diligence in adapting and perfecting the invention.

3. The inventor who first perfects a machine and makes it capable of useful operation is entitled to the patent.

4. Where a master workman, employing other people in his service, has conceived the plan of an invention and is engaged in experiments to perfect it, no suggestions from a person employed by him not amounting to a new method or arrangement which in itself is a complete invention is sufficient to deprive the employer of the exclusive property in the perfected improvement.

5. Letters patent of long standing will not be declared invalid upon testimony largely impeached, as ex. gr. where forty persons swear that the character of the witness for truth and veracity is bad, although very numerous witnesses on the other hand swear that they never heard his reputation in that way questioned.

6. On a bill in chancery for an infringement of a patent, the allegation in an answer of sale and public use "prior to the filing of an application for a patent," with the consent and allowance of the inventor, is insufficient unless it is also alleged in the answer that such sale or use was more than two years before he applied for a patent.

7. Forbearance to apply for a patent during the progress of experiments and until the party has perfected his invention and tested its value by practical experiment affords no ground for presumption of abandonment.

8. Where a patent is extended by virtue of a special act of Congress, it is not necessary to recite in the certificate of extension all the provisos contained in the act.

9. A patentee claiming under a reissued patent cannot recover damages for infringements committed antecedently to the date of his reissue.

Error to the Circuit Court for Massachusetts, the suit having been one to restrain the use by the Agawam Woolen Company of a certain machine for manufacturing wool and other fibrous materials patented to John Goulding.

The process formerly in use in the production of yarn from wool, was by a set of carding engines, a billy and a jenny, a series usually consisting of three carding machines, commonly called a first breaker, a second breaker, and a finisher, one billy and two jennies, sometimes two double carding machines being used instead of three single carding machines.

The wool was fed to the first carding machine, called the first breaker, on a feed table, and was doffed off the doffer chanrobles.com-red

Page 74 U. S. 585

of that machine by a comb. The material thus doffed off was taken to the second carding machine, called the second breaker, and was fed into it in the same manner as in the first, and upon leaving the doffer was either wound round a large cylinder, making what was called a lap or bat, or dropped on the floor. The material was then taken to the third carding machine and was fed to it in the same way, and, by a roller and shell at the delivery end of this machine, was made into short rolls, which were about as long as this machine was wide. These short rolls were then taken to the billy, and were spliced together on the apron roll of the billy by children by rubbing the rolls together with their hands, and were carried forward on the billy, after being so spliced together, by the apron roll, which fed them through the jaws of the billy to the spindles. The product of the billy was called roving. This roving was then taken from the billy and set up on cops to the jenny, upon which it was spun into yarn.

As early as 1812, Goulding, born in 1793, the son of a machinist, and from early years familiar in his father's factory with machines and machinery, sought to improve this long train of engines, called in their whole series "the carding machine." He thought that he could so improve it as to produce yarn from wool in a cheaper manner, of better quality, and in greater quantity than was produced by the old process. Engaged at different times in Massachusetts, at Worcester, Halifax, and, lastly, at Dedham, where, in 1823, he fixed himself as both a machinist and a manufacturer of textile fabrics, he only sought for some years to improve the billy, but as experiments were made by him, he aimed finally at dispensing with the billy entirely and accomplishing with four machines that which had previously required the use of five. His purpose was also to dispense with short rolls entirely and get the perpetual or endless roll and carry it through its different stages, from the crude wool until it became finally converted into yarn.

The result of his experiments and trials, extending over a long term of time and after the use by him of very many chanrobles.com-red

Page 74 U. S. 586

devices, was, as he alleged, successful. He dispensed with the billy entirely, and by processes testified to by many witnesses as invented by him, and by himself so sworn to be, obtained a continuous or perpetual roll as the product of each carding engine; accomplished a successful mixing of the wool -- as well where the same color was used as where different colors were used; dispensed with a large amount of manual labor, and secured a larger product at half the expense as compared with the old process, a better and more uniform roving, and a better and more uniform quality of yarn.

Such was his view and his case as set forth in the bill.

But Goulding's claim to these high merits of invention were not conceded. There were witnesses also, chiefly one Cooper, of Concord, New Hampshire, who swore that he derived great aid from others. Specific conversations and admissions of Goulding, about the time of the alleged invention, were sworn to by Cooper. But his testimony was strongly impeached, and relationship, bad feeling, or interest were shown in others of the witnesses. As to Cooper himself, forty different persons swore that his general reputation for truth and veracity was bad. Very numerous ones, however, swore that they had not heard it called in question. This sort of testimony covered some hundred pages of the record.

Taken all together, this part of the case, on favorable assumption for the defendant, seemed somewhat thus:

After Goulding came to Dedham and had been experimenting there for a considerable time, one Edward Winslow, a blacksmith by trade but if the testimony in his favor was to be believed, an ingenious man, came into his service. Winslow professed no skill out of his business, but made himself useful generally in whatever Goulding found it most convenient to set him to do, working generally in iron. He had no charge of Goulding's machine shop, but was not unfrequently in it. Goulding himself directed all that was done about machinery, whether as to making or as to altering it. In 1824, Winslow having been to a neighbor's factory, where chanrobles.com-red

Page 74 U. S. 587

certain devices, meant to produce long or endless rolls and to serve as receptacles for the rovings, had been introduced on machinery for spinning yarn, Goulding, who had now nearly completed his improvement, and while he was diligently prosecuting his experiments, asked him what he thought of them. Winslow replied that the principle of them was good, but that the agencies employed were bad, and suggested certain substitutes (a spool and drum) for them. "You don't know anything," was Goulding's first reply. However, upon seeing an experiment, apparently at first successful, made at his own mill on the basis of Winslow's idea, he exclaimed, "Winslow, you have got it. I will give you $2,500 and half of what we can make." But the experiment broke down in the process of exhibiting it. Goulding then exclaiming, "Your plan isn't worth a cent. I would not give a fig for it," left the mill. Upon further conversation and consideration, Goulding saw merit in Winslow's suggestions, and having made them practicable by an addition of his own (the "traverser," whose effect was to wind the roving evenly on the spool), he adopted them (instead of cans, the far less convenient agency previously used) as two items of his far larger improvement. As it turned out in the result, they proved useful.

It appeared, however, and was so assumed by this Court, after a very minute statement [Footnote 1] in the terms of art of many details of the matter, that it was only as an auxiliary part of Goulding's invention that they were of value, and that they did not make either the entire invention or any one of its separate combinations.

Goulding went on continuously engaged in perfecting his improvement till November, 1826, before the middle of which month he filed his application for letters patent, and on the 5th December he received them for the whole combined invention. None of the devices described in his specifications were new, and the claims were for combinations arranged in a manner set forth. chanrobles.com-red

Page 74 U. S. 588

The patented improvement soon came into universal use, and worked a revolution, both here and in Europe, in the art of manufacturing fibrous yarns. It has not been improved, but remains now what it was when the patent was granted.

The patent granted, as above mentioned, expired December 5, 1849. Goulding desired to make application for its renewal, but through erroneous information given him by the Commissioner of Patents, he failed to apply for the extension until too late for the Commissioner legally to entertain his application, and the patent expired accordingly, as already stated. Congress finally, and after persistent efforts by Goulding, passed May 30, 1862, a special act authorizing the Commissioner to entertain his application for extension as though it had been made within the time prescribed by law. This special act contained a proviso,

"That the renewal and extension shall not have the effect or be construed to restrain persons who may be using the machinery invented by said Goulding at the time of the renewal and extension, thereby authorized for continuing the use of the same, nor subject them to any claim or damage for having so used the same."

The patent was extended by the Commissioner August 30, 1862. The patent having been reissued July 29, 1836, was again reissued in June, 1864, having before this last date become vested in Jordan, the complainant, to whom the reissue was made.

The proviso of the act authorizing a renewal and extension was not recited in the reissued letters patent. But the certificate of renewal and extension was made subject, in express terms, to the proviso contained in the act. In this condition of things, the Agawam Woolen Company, using certain machinery alleged to be the same with that now patented to Jordan, he filed his bill against them, praying for injunction, account, and other relief. The bill put specific and categorical interrogatories in reference to the fact of infringement. The defendants did not answer the interrogatories as put. They only denied the use of any machinery chanrobles.com-red

Page 74 U. S. 589

"in violation and infringement of any rights of the plaintiff, or that they are using, or have made, or sold, or used any machines not protected or covered by the proviso in the act of Congress,"

and putting it to the court to say whether they should make further answer. The machinery which they did use they began to use after the date of the extension (the company not being incorporated at that date), but before the surrender and reissue of June, 1864.

With this implied admission of infringement, the answer put the defense chiefly on four grounds:


"This defendant denies that the said Goulding ever bestowed any ingenuity upon the invention or improvement mentioned in either of the letters patent aforesaid, and alleges that the improvements therein described, were invented and applied by one Edward Winslow, then of Dedham, from whom said Goulding first obtained knowledge of the same, and fraudulently and surreptitiously obtained a patent on the 15th day of December as aforesaid, for that which he well knew was the invention of said Winslow, at and before the application by him for a patent, as set forth in said bill."

Second. That at the time of Goulding's application for a patent, the invention had been on sale and in public use with his consent and allowance for a long time, and that he abandoned the same to the public. Sale and public use for more than two years prior to the application for a patent were not, however, alleged in the answer.

Third. That the certificate on the reissued letters patent of 1864 was not in conformity with the act of Congress and did not contain the limitations or conditions as annexed to the patent as extended and therefore that the reissued patent was void.

Fourth. That the defendant's machinery, although built subsequently to the date of the extension, yet having been in use before and at the time of the reissuing of that patent in 1864, was within the saving proviso of the act of Congress. chanrobles.com-red

Page 74 U. S. 590

The court below decreed for the complainant, and the case was now here on appeal by the other side. chanrobles.com-red

Page 74 U. S. 592


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