City of Elizabeth v. American Nicholson Pavement Co.

U.S. Supreme Court Elizabeth v. Pavement Company, 97 U.S.
126 (1877) Elizabeth v. Pavement
Company 97 U.S.
126 APPEAL FROM THE CIRCUIT COURT OF
THE UNITED STATES FOR THE DISTRICT OF NEW
JERSEY Syllabus 1. A foreign patent or publication describing an invention,
unless published anterior to the making of the invention or
discovery secured by letters patent issued by the United States, is
no defense to a suit upon them.

															2. The presumption arising from the oath of the applicant that
he believes himself to be the first inventor or discoverer of the
thing for which he seeks letters patent remains until the contrary
is proved.

															3. The use of an invention by the inventor or by persons under
his direction, if made in good faith, solely in order to test its
qualities, remedy its defects, and bring it to perfection, is not,
although others thereby derive a knowledge of it, a public use of
it within the meaning of the patent law, and does not preclude him
from obtaining letter patent therefor.

															4. Samuel Nicholson having, in 1847, invented a new and useful
improvement in wooden pavements and filed in the Patent Office a
caveat of his invention, put down in 1854, as an experiment, his
wooden pavement on a street in Boston, where it was exposed to
public view and traveled over for several years, and it proving
successful, he, Aug. 7, 1854, obtained letters patent therefor. Held: 1. that there having been no public use or sale of
the invention, he was entitled to such letters patent; 2. that they
were not avoided by English letters patent for the same invention,
enrolled in 1850. Page 97 U. S. 127 5. Where contractors laid a pavement for a city which infringed
the patent of Nicholson and the city paid them as much therefor as
it would have had to pay him had he done the work, thus realizing
no profits from the infringement, held that in a suit in
equity, to recover profits, against the city and the contractors,
the latter alone are responsible, although the former might have
been enjoined before the completion of the work, and perhaps would
have been liable in an action for damages.

															6. Where profits are made by an infringes by the use of an
article patented as an entirety or product, he is responsible to
the patentee for them, unless he can show and the burden is on him
to show it that a portion of them is the result of some other thing
used by him.

															7. No stipulations between a patentee and his assignee, as to
royalty to be charged, can prevent the latter from recovering from
an infringes the whole profits realized by reason of the
infringement.

															The facts are stated in the opinion of the Court.

															MR. JUSTICE BRADLEY delivered the opinion of the Court.

															This suit was brought by the American Nicholson Pavement Company
against the city of Elizabeth, N.J., George W. Tubbs, and the New
Jersey Wood Paving Company, a corporation of New Jersey, upon a
patent issued to Samuel Nicholson, dated Aug. 20, 1867, for a new
and improved wooden pavement, being a second reissue of a patent
issued to said Nicholson Aug. 8, 1854. The reissued patent was
extended in 1868 for a further term of seven years. A copy of it is
appended to the bill, and, in the specification, it is declared
that the nature and object of the invention consists in providing a
process or mode of constructing wooden block pavements upon a
foundation along a street or roadway with facility, cheapness, and
accuracy, and also in the creation and construction of such a
wooden pavement as shall be comparatively permanent and durable, by
so uniting and combining all its parts, both superstructure and
foundation, as to provide against the slipping of the horses' feet,
against noise, against unequal wear, and against rot and consequent
sinking away from below. Two plans of making this pavement are
specified. Both require a proper Page 97 U. S. 128 foundation on which to lay the blocks, consisting of tarred
paper or hydraulic cement covering the surface of the roadbed to
the depth of about two inches, or of a flooring of boards or plank,
also covered with tar, or other preventive of moisture. On this
foundation, one plan is to set square blocks on end arranged like a
checker board, the alternate rows being shorter than the others, so
as to leave narrow grooves or channel ways to be filled with small
broken stone or gravel, and then pouring over the whole melted tar
or pitch, whereby the cavities are all filled and cemented
together. The other plan is, to arrange the blocks in rows
transversely across the street, separated a small space (of about
an inch) by strips of board at the bottom, which serve to keep the
blocks at a uniform distance apart, and then filling these spaces
with the same material as before. The blocks forming the pavement
are about eight inches high. The alternate rows of short blocks in
the first plan and the strips of board in the second plan should
not be higher than four inches. The patent has four claims, the
first two of which, which are the only ones in question, are as
follows:

															"I claim as an improvement in the art of constructing
pavements:"

															"1. Placing a continuous foundation or support, as above
described, directly upon the roadway, then arranging thereon a
series of blocks, having parallel sides, endwise, in rows, so as to
leave a continuous narrow groove or channel way between each row,
and then filling said grooves or channel ways with broken stone,
gravel, and tar, or other like materials."

															"2. I claim the formation of a pavement by laying a foundation
directly upon the roadway, substantially as described, and then
employing two sets of blocks -- one a principal set of blocks that
shall form the wooden surface of the pavement when completed, and
an auxiliary set of blocks or strips of board which shall form no
part of the surface of the pavement, but determine the width of the
groove between the principal blocks, and also the filling of said
groove, when so formed between the principal blocks, with broken
stone, gravel, and tar, or other like material."

															The bill charges that the defendants infringed this patent by
laying down wooden pavements in the City of Elizabeth, N.J., Page 97 U. S. 129 constructed in substantial conformity with the process patented,
and prays an account of profits, and an injunction.

															The defendants answered in due course, admitting that they had
constructed and were still constructing wooden pavements in
Elizabeth, but alleging that they were constructed in accordance
with a patent granted to John W. Brocklebank and Charles Trainer,
dated Jan. 12, 1869, and denied that it infringed upon the
complainant.

															They also denied that there was any novelty in the alleged
invention of Nicholson, and specified a number of English and other
patents which exhibited, as they claimed, every substantial and
material part thereof which was claimed as new.

															They also averred that the alleged invention of Nicholson was in
public use, with his consent and allowance, for six years before he
applied for a patent on a certain avenue in Boston called the Mill
dam, and contended that said public use worked an abandonment of
the pretended invention.

															These several issues, together with the question of profits and
liability on the part of the several defendants to respond thereto,
are the subjects in controversy before us.

															We do not think that the defense of want of novelty has been
successfully made out. Nicholson's invention dates back as early as
1847 or 1848. He filed a caveat in the Patent Office in August,
1847, in which the checkerboard pavement is fully described, and he
constructed a small patch of pavement of both kinds, by way of
experiment, in June or July, 1848, in a street near Boston, which
comprised all the peculiarities afterwards described in his patent,
and the experiment was a successful one. Before that period, we do
not discover in any of the forms of pavements adduced as
anticipations of his, any one that sufficiently resembles it to
deprive him of the claim to its invention. As claimed by him, it is
a combination of different parts or elements, consisting, as the
appellant's counsel, with sufficient accuracy for the purposes of
this case, enumerates them, 1st, of the foundation prepared to
exclude moisture from beneath; 2d, the parallel sided blocks; 3d,
the strips between these blocks, to keep them at a uniform distance
and to create a space to be filled with gravel and tar; and, 4th,
the filling. Though it may be true that every one of these
elements Page 97 U. S. 130 had been employed before, in one kind of pavement or another,
yet they had never been used in the same combination and put
together in the same manner as Nicholson combined and arranged
them, so as to make a pavement like his. The one which makes the
nearest approach to it, and might, perhaps, be deemed sufficiently
like to deprive Nicholson of the merit of invention, is that of
John Hosking, which, in one form, consisted of alternate rows of
short and long blocks, the latter partially resting on the former
by their being mutually rabbeted so as to fit together. The spaces
thus formed between the longer blocks, and on the top of the
shorter ones, were filled with loose stone and cement or asphalt,
substantially the same as in Nicholson's pavement. It would be very
difficult to sustain Nicholson's patent if Hosking's stood in his
way. But the only evidence of the invention of the latter is
derived from an English patent, the specification of which was not
enrolled until March, 1850, nearly two years after Nicholson had
put his pavement down in its completed form, by way of experiment,
in Boston. A foreign patent, or other foreign printed publication
describing an invention, is no defense to a suit upon a patent of
the United States, unless published anterior to the making of the
invention or discovery secured by the latter, provided that the
American patentee, at the time of making application for his
patent, believed himself to be the first inventor or discoverer of
the thing patented. He is obliged to make oath to such belief when
he applies for his patent, and it will be presumed that such was
his belief until the contrary is proven. That was the law as it
stood when Nicholson obtained his original patent, and it is the
law still. Act of 1836, secs. 7, 15; Act of 1870, secs. 24, 25, 61;
Rev.Stat., secs. 4886, 4887, 4920; and see Curtis,
Patents, secs. 375, 375a. Since nothing appears to show that
Nicholson had any knowledge of Hosking's invention or patent prior
to his application for a patent in March, 1854, and since the
evidence is very full to the effect that he had made his invention
as early as 1848, the patent of Hosking cannot avail the defense in
this suit.

															It is unnecessary to make an elaborate examination of the other
patents which were referred to for the purpose of showing Page 97 U. S. 131 an anticipation of Nicholson's invention. They are mostly
English patents, and we will only advert in a summary way to such
of them as seem to be most nearly relevant to the question in
controversy, premising that in England, the enrollment of the
specification is the first publication of the particulars of a
patented invention.

															Stead's patent, enrolled in November, 1838, shows a plan of
pavement consisting of a series of hexagonal, triangular, or square
sided blocks, standing close together on the surface of the roadway
in a layer of sand and being a little smaller at the bottom than at
the top, so as to admit a packing of sand, or pitch and sand, in
the interstices between them below the surface. Small recesses at
the top, around the edges of the blocks, are suggested, apparently
for giving a better hold to the horses' feet. It had no prepared
foundation like Nicholson's, and no spaces filled with gravel,
&c.

															Parkin's patent, enrolled October, 1839, proposes a pavement to
consist of blocks leaning upon each other and connected together
with a mixture of sand and bitumen, and connected by keys laid in
grooves, and having grooves cut in the surface, either across the
blocks or along their edges, to give the horses a better foothold.
This plan exhibits no spaces to be filled with gravel or other
filling.

															Wood's patent, enrolled in April, 1841, shows a pavement made of
adjoining blocks fitted together, but alternately larger and
smaller at the top, like the frustrum of a pyramid, and not
parallel-sided, those larger at the top standing slightly higher
than the others so that, when pounded down or pressed by rollers or
loaded vehicles, they would act as wedges, binding the whole
pavement more tightly together. No filling is used on the surface,
and no prepared foundation is suggested. In one form of his
pavement, he describes continuous grooves, the grooves being formed
of blocks which are shorter than the others, and states that the
groove is to be filled with concrete, coal tar, &c., mixed with
gravel or sand, but there is no foundation described for the
pavement, and the description given for laying down the pavement, viz., by ramming down the taller blocks after considerable
surface has been covered by the pavement, shows that the roadbed on
which the blocks Page 97 U. S. 132 are to be laid is to be a yielding one, capable of conforming
itself to the under surface of the blocks in the same way as sand
does to the ordinary stone pavement when the stones are rammed.

															Perring's patent, enrolled January, 1843, shows a pavement
consisting, in one form, of blocks leaning one upon another in
rows, with strips of board between the row, coming to within an
inch or so of the top of the pavement and the same distance from
the bottom, leaving gutters for the water underneath, and the
adjoining rows being connected with pins passing through the strips
of board. The rows are thus separated to enable the horses' feet to
get a better hold. No filling is suggested, and indeed would not be
admissible, as the boards have no support but the pins, and no
prepared foundation is required.

															Crannis & Kemp's patent, enrolled Aug. 21, 1843, presents,
amongst other things, first a pavement consisting of rows of blocks
adjoining each other, but each block having a small recess on one
side on the surface, to enable the horses to get a better foothold;
secondly, a pavement of alternate blocks adjoining each other, but
differing in width, and slightly differing in height, the top of
one block being rounded off so as to make a groove next to the
adjoining blocks, and the rounded blocks in one row alternating
with the rectangular topped blocks in the next row, the object of
rounding off the alternate blocks being to give a foothold to the
horses. This pavement is to be built on a flooring of plank, either
of one or two thicknesses, but without any preparation to exclude
moisture, and it has no filling in the depressions or grooves
formed by rounding the alternate blocks.

															A French patent, granted to Hediard in 1842, shows a pavement
constructed of rows of blocks laid on a board foundation, cemented
together by a thin filling (four tenths of an inch thick) of cement
or mastic, from top to bottom; no provision being made to prevent
the accession of moisture from the ground below, and no strips
between the rows to keep them separate from each other.

															None of these pavements combines all the elements of
Nicholson's, much less a combination of those elements arranged and
disposed according to his plan. We think they present Page 97 U. S. 133 no ground for invalidating his patent and no defense to this
suit.

															The next question to be considered is whether Nicholson's
invention was in public use or on sale, with his consent and
allowance, for more than two years prior to his application for a
patent within the meaning of the sixth, seventh, and fifteenth
sections of the act of 1836, as qualified by the seventh section of
the act of 1839, which were the acts in force in 1854, when he
obtained his patent. It is contended by the appellants that the
pavement which Nicholson put down by way of experiment, on Mill Dam
Avenue in Boston in 1848 was publicly used for the space of six
years before his application for a patent, and that this was a
public use within the meaning of the law.

															To determine this question, it is necessary to examine the
circumstances under which this pavement was put down and the object
and purpose that Nicholson had in view. It is perfectly clear from
the evidence that he did not intend to abandon his right to a
patent. He had filed a caveat in August, 1847, and he constructed
the pavement in question by way of experiment for the purpose of
testing its qualities. The road in which it was put down, though a
public road, belonged to the Boston and Roxbury Mill Corporation,
which received toll for its use, and Nicholson was a stockholder
and treasurer of the corporation. The pavement in question was
about seventy-five feet in length, and was laid adjoining to the
toll gate and in front of the toll house. It was constructed by
Nicholson at his own expense, and was placed by him where it was in
order to see the effect upon it of heavily loaded wagons and of
varied and constant use, and also to ascertain its durability and
liability to decay. Joseph L. Lang, who was toll collector for many
years commencing in 1849, familiar with the road before that time
and with this pavement from the time of its origin, testified as
follows:

															"Mr. Nicholson was there almost daily, and when he came, he
would examine the pavement, would often walk over it, cane in hand,
striking it with his cane and making particular examination of its
condition. He asked me very often how people liked it and asked me
a great many questions about it. I have heard him say a number of
times that this was his first experiment with this pavement, and
he Page 97 U. S. 134 thought that it was wearing very well. The circumstances that
made this locality desirable for the purpose of obtaining a
satisfactory test of the durability and value of the pavement were
that there would be a better chance to lay it there, he would have
more room and a better chance than in the city, and besides it was
a place where most everybody went over it, rich and poor. It was a
great thoroughfare out of Boston. It was frequently traveled by
teams having a load of five or six tons, and some larger. As these
teams usually stopped at the toll house and started again, the
stopping and starting would make as severe a trial to the pavement
as it could be put to."

															This evidence is corroborated by that of several other witnesses
in the cause, the result of the whole being that Nicholson merely
intended this piece of pavement as an experiment, to test its
usefulness and durability. Was this a public use within the meaning
of the law?

															An abandonment of an invention to the public may be evinced by
the conduct of the inventor at any time, even within the two years
named in the law. The effect of the law is that no such consequence
will necessarily follow from the invention's being in public use or
on sale, with the inventor's consent and allowance, at any time
within two years before his application, but that if the invention
is in public use or on sale prior to that time, it will be
conclusive evidence of abandonment and the patent will be void.

															But in this case it becomes important to inquire what is such a
public use as will have the effect referred to. That the use of the
pavement in question was public in one sense cannot be disputed.
But can it be said that the invention was in public use? The use of
an invention by the inventor himself or of any other person under
his direction by way of experiment and in order to bring the
invention to perfection has never been regarded as such a use.
Curtis, Patents, sec. 381; Shaw v.
Cooper , 7 Pet. 292.

															Now the nature of a street pavement is such that it cannot be
experimented upon satisfactorily except on a highway, which is
always public.

															When the subject of invention is a machine, it may be tested and
tried in a building, either with or without closed doors. Page 97 U. S. 135 In either case, such use is not a public use within the meaning
of the statute so long as the inventor is engaged in good faith in
testing its operation. He may see cause to alter it and improve it,
or not. His experiments will reveal the fact whether any and what
alterations may be necessary. If durability is one of the qualities
to be attained, a long period, perhaps years, may be necessary to
enable the inventor to discover whether his purpose is
accomplished. And though during all that period he may not find
that any changes are necessary, yet he may be justly said to be
using his machine only by way of experiment, and no one would say
that such a use, pursued with a bona fide intent of
testing the qualities of the machine, would be a public use within
the meaning of the statute. So long as he does not voluntarily
allow others to make it and use it and so long as it is not on sale
for general use, he keeps the invention under his own control and
does not lose his title to a patent.

															It would not be necessary in such a case that the machine should
be put up and used only in the inventor's own shop or premises. He
may have it put up and used in the premises of another, and the use
may inure to the benefit of the owner of the establishment. Still,
if used under the surveillance of the inventor and for the purpose
of enabling him to test the machine and ascertain whether it will
answer the purpose intended and make such alterations and
improvements as experience demonstrates to be necessary, it will
still be a mere experimental use, and not a public use within the
meaning of the statute.

															Whilst the supposed machine is in such experimental use, the
public may be incidentally deriving a benefit from it. If it be a
grist mill, or a carding machine, customers from the surrounding
country may enjoy the use of it by having their grain made into
flour or their wool into rolls, and still it will not be in public
use within the meaning of the law.

															But if the inventor allows his machine to be used by other
persons generally, either with or without compensation, or if it is
with his consent put on sale for such use, then it will be in
public use and on public sale within the meaning of the law. Page 97 U. S. 136 If, now, we apply the same principles to this case, the analogy
will be seen at once. Nicholson wished to experiment on his
pavement. He believed it to be a good thing, but he was not sure,
and the only mode in which he could test it was to place a specimen
of it in a public roadway. He did this at his own expense and with
the consent of the owners of the road. Durability was one of the
qualities to be attained. He wanted to know whether his pavement
would stand and whether it would resist decay. Its character for
durability could not be ascertained without its being subjected to
use for a considerable time. He subjected it to such use in good
faith for the simple purpose of ascertaining whether it was what he
claimed it to be. Did he do anything more than the inventor of the
supposed machine might do in testing his invention? The public had
the incidental use of the pavement, it is true, but was the
invention in public use within the meaning of the statute? We think
not. The proprietors of the road alone used the invention, and used
it at Nicholson's request, by way of experiment. The only way in
which they could use it was by allowing the public to pass over the
pavement.

															Had the City of Boston, or other parties, used the invention by
laying down the pavement in other streets and places with
Nicholson's consent and allowance, then, indeed, the invention
itself would have been in public use within the meaning of the law;
but this was not the case. Nicholson did not sell it nor allow
others to use it or sell it. He did not let it go beyond his
control. He did nothing that indicated any intent to do so. He kept
it under his own eyes and never for a moment abandoned the intent
to obtain a patent for it.

															In this connection it is proper to make another remark. It is
not a public knowledge of his invention that precludes the inventor
from obtaining a patent for it, but a public use or sale of it. In
England, formerly, as well as under our Patent Act of 1793, if an
inventor did not keep his invention secret, if a knowledge of it
became public before his application for a patent, he could not
obtain one. To be patentable, an invention must not have been known
or used before the application; but this has not been the law of
this country since the passage of the act of 1836, and it has been
very much qualified in England. Page 97 U. S. 137 Lewis v. Marling, 10 B. & C. 22. Therefore, if it
were true that during the whole period in which the pavement was
used, the public knew how it was constructed, it would make no
difference in the result.

															It is sometimes said that an inventor acquires an undue
advantage over the public by delaying to take out a patent,
inasmuch as he thereby preserves the monopoly to himself for a
longer period than is allowed by the policy of the law; but this
cannot be said with justice when the delay is occasioned by a bona fide effort to bring his invention to perfection or
to ascertain whether it will answer the purpose intended. His
monopoly only continues for the allotted period, in any event, and
it is the interest of the public as well as himself that the
invention should be perfect and properly tested before a patent is
granted for it. Any attempt to use it for a profit, and not by way
of experiment, for a longer period than two years before the
application would deprive the inventor of his right to a
patent.

															The next question for consideration is whether the defendants
have infringed the patent of Nicholson. On this question we
entertain no doubt. The pavement put down by the defendants in the
City of Elizabeth differs in nothing from that described by
Nicholson in his patent except in the form of the strips placed
between the rows of blocks and the nicks or grooves made in the
blocks to fit them. In Nicholson's description, they are simply
strips of board standing endwise on the foundation. The patent
describes the strips as

															"so arranged as to form spaces of about one inch in thickness
between the rows of principal blocks. The auxiliary strip may be
about half the height of the principal block, but it must not be
permitted to fill up the grooves permanently and entirely when the
pavement is completed, or to perform any part of the pavement."

															The strips used by the defendants are substantially the same as
here described, and perform the same office. The only difference in
their construction and application between the blocks is that they
are beveled by being made wider at the top than at the bottom --
the extra width of the top part being let into a notch or groove in
the blocks. If they perform the additional office of partially
sustaining the Page 97 U. S. 138 pressure of the blocks and locking them together, they do not
any the less perform the office assigned to them in Nicholson's
pavement. Their peculiar form and application may constitute an
improvement on his pavement, but it includes his.

															It is objected that the blocks of the Elizabeth pavement have
not parallel sides, as prescribed in Nicholson's patent, by reason
of the notch or groove in the side into which the strips are
fitted, but this notch or groove does not take from the blocks
their general conformity to the requisition of the patent. They are
parallel sided blocks, with a groove made in the lower part to
receive the edges of the strips. The parallel sided blocks
described in Nicholson's patent were probably intended to
distinguish them from such blocks as those described in Stead's
patent, which were hexagonal and triangular in form, or those in
Wood's patent, which were of a pyramidal shape, the opposite sides
being at an angle with each other. As contradistinguished from
these, both the Nicholson blocks and those used by the appellants
are properly denominated blocks with parallel sides.

															The next subject for consideration is the form and principles of
the decree rendered by the court below. The bill prayed a decree
for damages and profits, but, as it was filed before the passage of
the Act of July 8, 1870, which first authorized courts of equity to
allow damages in addition to profits, the court below correctly
held that a decree for profits alone could be rendered. It is
unnecessary here to enter into the general question of profits
recoverable in equity by a patentee. The subject, as a whole, is
surrounded with many difficulties which the courts have not yet
succeeded in overcoming. But one thing may be affirmed with
reasonable confidence -- that if an infringer of a patent has
realized no profit from the use of the invention, he cannot be
called upon to respond for profits; the patentee, in such case, is
left to his remedy for damages. It is also clear that a patentee is
entitled to recover the profits that have been actually realized
from the use of his invention, although, from other causes, the
general business of the defendant, in which the invention is
employed, may not have resulted in profits -- as where it is shown
that the use of his invention produced a definite saving in the
process of a manufacture. Mowry v.
Whitney , Page 97 U. S. 139 14 Wall. 434; Cawood Patent, 94 U. S.
695 . On the contrary, though the defendant's general
business be ever so profitable, if the use of the invention has not
contributed to the profits, none can be recovered. The same result
would seem to follow where it is impossible to show the profitable
effect of using the invention upon the business results of the
party infringing. It may be added that where no profits are shown
to have accrued, a court of equity cannot give a decree for profits
by way of damages or as a punishment for the infringement. Livingston v.
Woodworth , 15 How. 559. But when the entire profit
of a business or undertaking results from the use of the invention,
the patentee will be entitled to recover the entire profits if he
elects that remedy. And in such a case, the defendant will not be
allowed to diminish the show of profits by putting in
unconscionable claims for personal services or other inequitable
deductions. Rubber Company v.
Goodyear , 9 Wall. 788. These general propositions
will hardly admit of dispute, and they will furnish us some guide
in deciding the questions raised in this case.

															Only the defendants have appealed, and the errors assigned by
them on this branch of the case are the following:

															1st,

															"The court erred in decreeing that the complainants do recover
of the defendants, the city of Elizabeth and George W. Tubbs, the
sums set forth in the decree, because the master did not find that
said defendants had made any profits, which failure to find was not
excepted to by complainants, and because no proof was offered by
complainants of any profits whatever made by said defendants."

															2d,

															"The court erred in finding that the profits received by the
defendants were the fruits of the use of the devices described and
claimed in the first and second claims of the Nicholson patent --
there being no proof of any advantage derived by the defendants
from such use of the Nicholson devices -- or was incident to the
use of the devices of the Brocklebank & Trainer patent. The
failure to specifically show such profits makes the recovery
nominal."

															3d,

															"The court erred in decreeing the whole amount of profits made
by the New Jersey Wood Paving Company in the construction of the
pavements referred to in the master's Page 97 U. S. 140 report. Whereas if any profits ought to have been decreed, they
should have been confined to the amount of the license for a
royalty which the complainants had been accustomed to receive, and
were bound by the terms of their title to accept, from any party
constructing such pavement in New Jersey."

															We will consider these assignments in order.

															The first seems to be well taken. The party who made the profit
by the construction of the pavement in question was the New Jersey
Wood Paving Company. The City of Elizabeth made no profit at all.
It paid the same for putting down the pavement in question that it
was paying to the defendant in error for putting down the Nicholson
pavement proper -- namely, $4.50 per square yard. It made itself
liable to damages, undoubtedly, for using the patented pavement of
Nicholson, but damages are not sought, or at least are not
recoverable, in this suit. Profits only, as such, can be recovered
therein. The very first evidence which the appellees offered before
the master was the contracts made between the city and the other
defendants for the construction of the pavement, and these
contracts show the fact that the city was to pay the price named,
and that any benefit to be derived from the construction of the
pavement was to be enjoyed by the contractors.

															It is insisted that the defendants, by answering jointly,
admitting that they were jointly cooperating in laying the
pavement, precluded themselves from making this defense. We do not
think so. That admission is not inconsistent with the actual facts
of the case, to-wit that this cooperation consisted of a contract
for having the pavement made, on one side, and a contract to make
it, on the other, and is by no means conclusive as to which party
realized profit from the transactions. The complainants themselves,
by their own evidence, showed that the contractors and not the city
realized it.

															The appellant, Tubbs, is in the same predicament with the city.
Several of the contracts were made in his name, it is true, but
they were made in behalf of the New Jersey Wood Paving Company, for
whose use and benefit the contracts were made and completed. Tubbs
only received a salary for his superintendence. Page 97 U. S. 141 The next assignment of error, based on the hypothesis that the
profits received by the defendants were not the fruits of the use
of Nicholson's invention, appears to us destitute of foundation.
This matter is so fully and ably presented in the opinion of the
circuit court as to require but little discussion from us. The
Nicholson pavement was a complete thing, consisting of a certain
combination of elements. The defendants used it as such -- the
whole of it. If they superadded the addition made to it by
Brocklebank & Trainer, they failed to show that such addition
contributed to the profits realized. The burden of proof was on
them to do this. The evidence, if it shows anything, tends to prove
that the addition diminished the profits instead of increasing
them, but it could not have had much influence either way, inasmuch
as the evidence shows that the profit made on this pavement was
about the same as that made on the pavement of Nicholson, without
the improvement. The appellants, however, obtained an allowance of
nearly $14,000 for the royalty paid by them for the use of the
Brocklebank & Trainer patent. This allowance went so far in
diminution of the profits recovered.

															Equally without foundation is the position taken by the
appellants that other pavements, approaching in resemblance to that
of Nicholson, were open to the public, and that the specific
difference between those pavements and Nicholson's was small, and
that therefore the Nicholson patent was entitled to only a small
portion of the profits realized. Nicholson's pavement, as before
said, was a complete combination in itself, differing from every
other pavement. The parts were so correlated to each other from
bottom to top that it required them all, put together as he put
them, to make the complete whole and to produce the desired result.
The foundation impervious to moisture, the blocks arranged in rows,
the narrow strips between them for the purposes designated, the
filling over those strips, cemented together, as shown by the
patent -- all were required. Thus combined and arranged, they made
a new thing, like a new chemical compound. It was this thing, and
not another, that the people wanted and required. It was this that
the appellants used, and, by using, made their profit, and
prevented the appellee from making it. It is not the case Page 97 U. S. 142 of a profit derived from the construction of an old pavement
together with a superadded profit derived from adding thereto an
improvement made by Nicholson, but of an entire profit derived from
the construction of his pavement as an entirety. A separation of
distinct profit derived from Brocklebank & Trainer's
improvement, if any such profit was made, might have been shown,
but, as before stated, the appellants failed to show that any such
distinct profit was realized.

															We have looked over the various items claimed by the appellants
by way of reduction of profits, and disallowed by the master and by
the court below, and we are satisfied with the result which they
reached. The gross profits of the work over actual expenses for
material and labor were conceded to be $123,610.78. The total
deductions claimed before the master amounted to $139,875.63, which
would have been considerably more than sufficient to absorb the
whole profits. The master and the court allowed deductions to the
amount of $48,618.62, which reduced the profits to $74,992.16, for
which amount the decree was rendered. The deductions overruled and
disallowed amounted to $91,257.85. Of these, $31,111.92 was a
profit of twenty percent, which the appellants claimed they had a
right to add to the actual cost of lumber and other materials and
labor. It is only necessary to state the claim to show its
preposterousness. Other items were one of $7,000 for salaries, and
another of $3,000 for rent, for a period of time that occurred
after the work was completed. Another item was one of $2,675.09 for
the cost of a dock which the parties built on their own land, and
another of $25,000, paid for an interest in the Brocklebank &
Trainer patent. As the appellants still hold these properties, we
cannot well conceive what the purchase of them has to do in this
account. They also claim $15,241.33 for that amount abated from the
assessments of some of their stockholders who owned lands along the
streets paved. As this was a gratuity which they made to
themselves, they cannot claim a deduction for it here. The last
item was $6,572.75, claimed to have been profits made upon other
work, which were allowed to be included in these contracts. As this
is not explained in any satisfactory way, we think the master did
right in rejecting it. Page 97 U. S. 143 We are entirely satisfied with the disposition made of these
various items and with the correctness of the decree so far as the
statement of the account is concerned.

															But the appellants assign a third error. They insist that the
appellee, as assignor of the Nicholson patent for the State of New
Jersey (which was the ground of its title), was entitled to recover
only thirty-one cents per square yard in any event -- being limited
to that charge for the use of the patent by the terms of the
assignment, sixteen cents of which was to be paid to the
proprietors and fifteen to be retained by the appellee.

															This matter is quite satisfactorily disposed of in the opinion
of the court below. The stipulation was between third parties, and
the appellants have no concern in it. It only applied by its terms
to cases where, by reason of the decisions of the courts or
otherwise, it should be found impracticable for the appellees to
obtain contracts for laying the pavement in any town or city or
where the work of constructing pavements should be required by law
to be let under public lettings, open to general competition. The
object was to secure as extensive a use of the pavement as
possible, as thereby the emoluments of the proprietors would be
increased. But the assignment gave to the appellee the exclusive
right in the patent for the State of New Jersey. It did not
prohibit the appellee from constructing the pavements itself, if it
could obtain contracts for doing so, and making thereby any profit
it could. There was no obstacle to its doing this in the City of
Elizabeth. On the contrary, it did obtain from the city large
contracts, and would have obtained more if the appellants had not
interfered. There is nothing in this state of things which entitles
the latter, after making large profits from the use of the
invention, to refuse to respond therefor. It is not for them to say
that the hands of the appellee are tied by its contract with its
grantor. This would be to take advantage of their own wrong.
Whatever bearing the stipulation in the assignment may have on the
measure of damages in an action at law, it affords no defense to
the appellants when called upon to account for the profits which
they have wrongfully made by pirating the invention.

															We think there is no error in the decree of the circuit court
except in making the City of Elizabeth and George W. Tubbs Page 97 U. S. 144 accountable for the profits. As to them, a decree for injunction
only to prevent them from constructing the pavement during the term
of the patent should have been rendered, which, of course, cannot
now be made. As to the New Jersey Wood Paving Company, the decree
was in all respects correct. A decree for costs in the court below
should be awarded against all the defendants.

															The decree of the circuit court therefore must be reversed with
costs, and the cause remanded to said court with instructions to
enter a decree in conformity with this opinion, and it is So ordered.

Summary:
Here is a summary of the key holdings from Elizabeth v. Pavement Company:

1. Foreign patents or publications describing an invention are not a defense to a lawsuit in the United States unless they were published before the making of the invention or discovery secured by US patents.
2. The inventor's belief in their own originality is presumed true until proven otherwise.
3. Testing an invention in good faith to improve its quality and bring it to perfection is not considered public use and does not invalidate a patent.
4. Samuel Nicholson's invention of a wooden pavement was entitled to patent protection as there was no public use or sale prior to the patent being obtained.
5. In a patent infringement case, a city that paid contractors to lay a pavement infringing on a patent was not liable for profits, but only for an injunction to prevent future construction during the patent term.
6. Infringers are responsible for profits made from using a patented product and must prove that any other sources contributed to those profits.
7. Stipulations between a patentee and assignee regarding royalty charges do not prevent the assignee from recovering full profits from infringers.
8. The court ruled in favor of the American Nicholson Pavement Company, holding that the New Jersey Wood Paving Company was solely responsible for profits made from infringing on the patent.


U.S. Supreme Court Egbert v. Lippmann, 104
U.S. 333 (1881) Egbert v. Lippmann 104
U.S. 333 APPEAL FROM THE CIRCUIT COURT OF
THE UNITED STATES FOR THE SOUTHERN DISTRICT OF
NEW YORK Syllabus 1. Reissued letters patent No. 5216,
granted Jan. 7, 1873, to Frances Lee Barnes, executrix of Samuel H.
Barnes, deceased, for an "improvement in corset springs," are void,
the invention for which the original letters, bearing date July 17,
1866, were granted, having with his consent been in public use for
more than two years prior to his application for them. 2. There may be a public use of the
invention although but a single machine or device for which the
letters were subsequently granted was used only by one
person. The facts are stated in the opinion of
the Court. MR. JUSTICE WOODS delivered the opinion
of the Court. This suit was brought for an alleged
infringement of the complainant's reissued letters patent No. 5216,
dated Jan. 7, 1873, for an improvement in corset
springs. The original letters bear date July 17,
1866, and were issued to Samuel H. Barnes. The reissue was made to
the complainant, under her then name, Frances Lee Barnes, executrix
of the original patentee. Page
104 U. S. 334 The specification for the reissue
declares: "This invention consists in forming the
springs of corsets of two or more metallic plates, placed one upon
another, and so connected as to prevent them from sliding off each
other laterally or edgewise, and at the same time admit of their
playing or sliding upon each other in the direction of their length
or longitudinally, whereby their flexibility and elasticity are
greatly increased, while at the same time much strength is
obtained." The second claim is as
follows: "A pair of corset springs, each member
of the pair being composed or two or more metallic plates, placed
one on another and fastened together at their centers, and so
connected at or near each end that they can move or play on each
other in the direction of their length." The bill alleges that Barnes was the
original and first inventor of the improvement covered by the
reissued letters patent, and that it had not, at the time of his
application for the original letters, been for more than two years
in public use or on sale with his consent or allowance. The answer takes issue on this averment
and also denies infringement. On a final hearing, the court
dismissed the bill, and the complainant appealed. As the second defense above mentioned,
it is sufficient to say that the evidence establishes beyond
controversy the infringement by the defendants of the second claim
of the reissue. We have therefore to consider whether
the defense that the patented invention had, with the consent of
the inventor, been publicly used for more than two years prior to
his application for the original letters is sustained by the
testimony in the record. The sixth, seventh, and fifteenth
sections of the Act of July 4, 1836, c. 357, 5 Stat. 117, as
qualified by the seventh section of the Act of March 8, 1839, c.
88, id. 353, were in force at the date of his application.
Their effect is to render letters patent invalid if the invention
which they cover was in public use, with the consent and allowance
of the inventor, for more than two years prior to his application.
Since the passage of the act of 1839, it has been strenuously
contended Page
104 U. S. 335 that the public use of an invention for
more than two years before such application, even without his
consent and allowance, renders the letters patent therefor
void. It is unnecessary in this case to
decide this question, for the alleged use of the invention covered
by the letters patent to Barnes is conceded to have been with his
express consent. The evidence on which the defendants
rely to establish a prior public use of the invention consists
mainly of the testimony of the complainant. She testifies that Barnes invented the
improvement covered by his patent between January and May, 1855;
that between the dates named, the witness and her friend Miss
Cugier were complaining of the breaking of their corset steels.
Barnes, who was present and was an intimate friend of the witness,
said he thought he could make her a pair that would not break. At
their next interview, he presented her with a pair of corset steels
which he himself had made. The witness wore these steels a long
time. In 1858, Barnes made and presented to her another pair, which
she also wore a long time. When the corsets in which these steels
were used wore out, the witness ripped them open and took out the
steels and put them in new corsets. This was done several
times. It is admitted and in fact is asserted
by complainant that these steels embodied the invention afterwards
patented by Barnes and covered by the reissued letters patent on
which this suit is brought. Joseph H. Sturgis, another witness for
complainant, testifies that in 1863, Barnes spoke to him about two
inventions made by himself, one of which was a corset steel, and
that he went to the house of Barnes to see them. Before this time,
and after the transactions testified to by the complainant, Barnes
and she had intermarried. Barnes said his wife had a pair of steels
made according to his invention in the corsets which she was then
wearing, and if she would take them off, he would show them to
witness. Mrs. Barnes went out, and returned with a pair of corsets
and a pair of scissors, and ripped the corsets open and took out
the steels. Barnes then explained to witness how they were made and
used. This is the evidence presented by the
record, on which the Page
104 U. S. 336 defendants rely to establish the public
use of the invention by the patentee's consent and
allowance. The question for our decision is
whether this testimony shows a public use within the meaning of the
statute. We observe in the first place that to
constitute the public use of an invention, it is not necessary that
more than one of the patented articles should be publicly used. The
use of a great number may tend to strengthen the proof, but one
well defined case of such use is just as effectual to annul the
patent as many. McClurg v.
Kingsland , 1 How. 202; Consolidated Fruit Jar
Co. v. Wright, 94 U. S. 92 ; Pitts v. Hall, 2 Blatchf. 229. For instance, if the
inventor of a mower, a printing press, or a railway car makes and
sells only one of the articles invented by him, and allows the
vendee to use it for two years without restriction or limitation,
the use is just as public as if he had sold and allowed the use of
a great number. We remark secondly that whether the use of an invention is
public or private does not necessarily depend upon the number of
persons to whom its use is known. If an inventor, having made his
device, gives or sells it to another, to be used by the donee or
vendee without limitation or restriction or injunction of secrecy
and it is so used, such use is public even though the use and
knowledge of the use may be confined to one person.

															We say thirdly that some inventions are by their very character
only capable of being used where they cannot be seen or observed by
the public eye. An invention may consist of a lever or spring,
hidden in the running gear of a watch, or of a rachet, shaft, or
cog wheel covered from view in the recesses of a machine for
spinning or weaving. Nevertheless if its inventor sells a machine
of which his invention forms a part, and allows it to be used
without restriction of any kind, the use is a public one. So, on
the other hand, a use necessarily open to public view, if made in
good faith solely to test the qualities of the invention and for
the purpose of experiment, is not a public use within the meaning
of the statute. Elizabeth v. Pavement Company, 97 U. S. 126 ; Shaw v.
Cooper , 7 Pet. 292. Page 104 U. S. 337 Tested by these principles, we think the evidence of the
complainant herself shows that for more than two years before the
application for the original letters, there was, by the consent and
allowance of Barnes, a public use of the invention covered by them.
He made and gave to her two pairs of corset steels, constructed
according to his device, one in 1855 and one in 1858. They were
presented to her for use. He imposed no obligation of secrecy nor
any condition or restriction whatever. They were not presented for
the purpose of experiment, nor to test their qualities. No such
claim is set up in her testimony. The invention was at the time
complete, and there is no evidence that it was afterwards changed
or improved. The donee of the steels used them for years for the
purpose and in the manner designed by the inventor. They were not
capable of any other use. She might have exhibited them to any
person, or made other steels of the same kind and used or sold them
without violating any condition or restriction imposed on her by
the inventor.

															According to the testimony of the complainant, the invention was
completed and put into use in 1855. The inventor slept on his
rights for eleven years. Letters patent were not applied for till
March, 1866. In the meantime, the invention had found its way into
general and almost universal use. A great part of the record is
taken up with the testimony of the manufacturers and venders of
corset steels showing that before he applied for letters, the
principle of his device was almost universally used in the
manufacture of corset steels. It is fair to presume that, having
learned from this general use that there was some value in his
invention, he attempted to resume, by his application, what by his
acts he had clearly dedicated to the public.

															"An abandonment of an invention to the public may be evinced by
the conduct of the inventor at any time, even within the two years
named in the law. The effect of the law is that no such consequence
will necessarily follow from the invention being in public use or
on sale, with the inventor's consent and allowance, at any time
within the two years before his application, but that if the
invention is in public use or on sale prior to that time, it will
be conclusive evidence of Page 104 U. S. 338 abandonment, and the patent will be void. Elizabeth v.
Pavement Company, supra. "

															We are of opinion that the defense of two years' public use by
the consent and allowance of the inventor before he made
application for letters patent is satisfactorily established by the
evidence. Decree affirmed. MR. JUSTICE MILLER dissenting.

															The sixth section of the Act of July 4, 1836, c. 357, makes it a
condition of the grant of a patent that the invention for which it
was asked should not, at the time of the application for a patent,
"have been in public use or on sale with the consent or allowance"
of the inventor or discoverer. Section fifteen of the same act
declares that it shall be a good defense to an action for
infringement of the patent that it had been in public use or on
sale with the consent or allowance of the patentee before his
application. This was afterwards modified by the seventh section of
the Act of March 3, 1839, c. 88, which declares that no patent
shall be void on that ground unless the prior use has been for more
than two years before the application.

															This is the law under which the patent of the complainant is
held void by the opinion just delivered. The previous part of the
same section requires that the invention must be one "not known or
used by others" before the discovery or invention made by the
applicant. In this limitation, though in the same sentence as the
other, the word "public" is not used, so that the use by others
which would defeat the applicant, if without his consent, need not
be public; but where the use of his invention is by his consent or
allowance, it must be public or it will not have that affect.

															The reason of this is undoubtedly that if without his consent
others have used the machine, composition, or manufacture, it is
strong proof that he was not the discoverer or first inventor. In
that case, he was not entitled to a patent. If the use was with his
consent or allowance, the fact that such consent or allowance was
first obtained is evidence that he was the inventor, and claimed to
be such. In such case, he was not to Page 104 U. S. 339 lose his right to a patent unless the use which he permitted was
such as showed an intention of abandoning his invention to the
public. It must, in the language of the act, be in public
use or on sale. If on sale, of course the public who buy can
use it, and if used in public with his consent, it may be copied by
others. In either event, there is an end of his exclusive right of
use or sale.

															The work public is therefore an important member of the
sentence. A private use with consent, which could lead to no copy
or reproduction of the machine, which taught the nature of the
invention to no one but the party to whom such consent was given,
which left the public at large as ignorant of this as it was before
the author's discovery, was no abandonment to the public, and did
not defeat his claim for a patent. If the little steep spring
inserted in a single pair of corsets, and used by only one woman,
covered by her outer clothing, and in a position always withheld
from public observation, is a public use of that piece of
steel, I am at a loss to know the line between a private and a
public use.

															The opinion argues that the use was public because, with the
consent of the inventor to its use, no limitation was imposed in
regard to its use in public. It may be well imagined that a
prohibition to the party so permitted against exposing her use of
the steel spring to public observation would have been supposed to
be a piece of irony. An objection quite the opposite of this
suggested by the opinion is that the invention was incapable of a
public use. That is to say that while the statute says the right to
the patent can only be defeated by a use which is public, it is
equally fatal to the claim, when it is permitted to be used at all,
that the article can never be used in public.

															I cannot on such reasoning as this eliminate from the statute
the word public, and disregard its obvious importance in
connection with the remainder of the act, for the purpose of
defeating a patent otherwise meritorious.

Summary: Egbert v. Lippmann (1881) concerned the validity of a patent for an improvement in corset springs. The Supreme Court held that the patent was invalid because the invention had been in public use for more than two years before the patent application, with the inventor's consent. The Court defined "public use" as use that is not confidential or restricted and that may lead to copying or disclosure of the invention to the public. A single use of the invention by one person was sufficient to constitute public use.


U.S. Supreme Court Special Equipment Co. v. Coe, 324
U.S. 370 (1945) Special Equipment Co. v.
Coe No. 469 Argued March 2, 5,
1945 Decided March 26,
1945 324
U.S. 370 CERTIORARI TO THE UNITED STATES
COURT OF APPEALS FOR THE DISTRICT OF
COLUMBIA Syllabus 1. In this suit in equity under R.S. § 4915 to compel the
Commissioner of Patents to issue a patent upon an application for a
subcombination of the elements of a machine, assumed to be a useful
invention, for which the claimant had previously filed a patent
application, the record fails to establish that the claimant
intended to misuse the patent on the subcombination or to make no
use of the alleged invention, and the decision of the court below
refusing on that ground to order issuance of the patent was
therefore erroneous. Pp. 324 U. S. 374 , 324 U. S.
380 .

															2. A subcombination patent may legitimately be used as a means
of preventing appropriation by others of a combination invention
which the claimant is using where there is absent any purpose to
enlarge the patent monopoly of either invention. P. 324 U. S.
376 .

															A patent on a combination embodied in an inventor's complete
machine, without allowance of subcombination claims, would not
prevent free use of the subcombination. Hence, denial of a patent
on the subcombination would deprive the inventor of the benefit of
the exclusive right to use the subcombination in the ways specified
by the patent laws. It would also leave the public free to use, and
thus to appropriate, a part, however important, of the inventor's
complete machine, even though patented.

															3. The statutes permit, and it is the settled practice of the
Patent Office to allow, subcombination as well as combination
claims. P. 324 U. S.
377 .

															4. The patent grant is not of a right to the patentee to use the
invention, but of the right to exclude others from using it. P. 324 U. S.
378 .

															5. Ethyl Gasoline Corp. v. United States, 309 U.
S. 436 , lends no support to the contention that a
patentee may not use his patent as a Page 324 U. S. 371 protection against misappropriation of his invention even though
the invention is not used. P. 324 U. S.
379 .

															6. Petitioner's intended use of the subcombination patent to
prevent others from appropriating the alleged invention, and, by
that means, from appropriating an essential part of the complete
machine is in no way inconsistent with petitioner's making other
permissible uses of the subcombination patent. P. 324 U. S.
379 .

															144 F.2d 497, reversed.

															Certiorari, 323 U.S. 697, to review the affirmance of a judgment
dismissing the complaint in a suit under R.S. § 4915 to compel the
Commissioner of Patents to issue a patent.

															MR. CHIEF JUSTICE STONE delivered the opinion of the Court.

															This is a suit in equity, brought in the District Court of the
District of Columbia, under R.S. § 4915, to compel respondent, the
Commissioner of Patents, to issue a patent upon an application for
a subcombination of the elements of a machine for which the
inventor had previously filed a patent application. The district
court gave judgment for respondent. The Court of Appeals for the
District affirmed, 144 F.2d 497, 498, and we granted certiorari,
323 U.S. 697. The question is whether the Court of Appeals
correctly rested its decision upon the ground that petitioner did
not intend to make or use the invention, and that the purpose of
seeking the patent was to exploit and protect the combination
invention embodied in the complete machine, of which the
subcombination is a part. Page 324 U. S. 372 Ewald, the plaintiff in the district court in whose stead
petitioner, his assignee, was later substituted as a party made
application for a patent on a "fruit-treating apparatus" embracing
the combination embodied in his complete machine. Certain claims of
his application were allowed October 27, 1938, but a patent has not
yet issued. The following year, he made a renewed application for
the subcombination, with which the present suit is concerned. The
specifications of the original application disclosed mechanisms for
automatically performing the successive operations of bobbing
(cutting off the stems), splitting, paring, and coring pears in
preparation for canning or other processing.

															The original application specified and claimed an apparatus
consisting of two spaced, horizontally mounted turrets or turn
tables, combined with means for continuously, but intermittently,
rotating both in the same direction. Fixed upon, and rotatable
with, the table of the first turret are a plurality of pear
receiving and clamping means, spaced upon the upper surface of the
turntable, adapted to receive and clamp either a pre-split or a
whole pear. At the first intermittent stop, a swinging knife shears
off (bobs) the stem of the fruit, which extends beyond the clamps.
At the next intermittent stop, overhead traveling jaws or clamps
grasp the fruit concurrently with its release from the first clamp
and carry the fruit longitudinally to a point over the second
turntable.

															As the pear is thus carried from the first turret to a position
over the second, it is split by a fixed vertically positioned knife
straddled by the overhead traveling clamps. As the clamps force the
pear against and past the knife, it cleaves the pear into
substantially equal half sections. The pear sections are then
automatically, successively deposited in spaced cups fixed on the
second revolving turntable. At the next stop of that turntable, the
pear section resting in its cup is peeled by an automatically Page 324 U. S. 373 operated paring knife. At the next successive stop, the core is
removed from the pear section by an automatically operated coring
device. After completing the coring, the mechanism automatically
separates the pear section from the core and the peeling and
discharges them and the pear section into appropriate
receptacles.

															In the operation of the machine, whole or split pears may be fed
by hand to the holding and clamping devices on the first turret,
where the pears are bobbed. The whole pear is then split as it is
carried by the overhanging jaws from the first turret to the
second. The peeling and coring of both pre-split and whole pears
are then carried through by the operation of the second turret.

															The patent application for the complete machine discloses a
highly ingenious device which is said to have achieved a great
advance in the art by increasing the speed and skill with which
pears are prepared for canning, and to result in a great saving of
manpower. The renewed application for the subcombination specifies
and claims the apparatus which we have described, but without the
splitting knife. In the operation of the device thus claimed, the
pears are pre-split by hand. The split sections are placed face to
face in the receiving and clamping means upon the first turntable,
after which the operation, except the splitting by the splitting
knife, proceeds in exactly the same way and accomplishes the same
result as when the splitting knife is present.

															Additional claims, which are those sued on, covering all the
elements of the combination except the splitting knife were duly
presented to the Patent Office. There, they were rejected as
incomplete, broader than the invention disclosed by the petitioner
in his application, and misleading, and as covering constructions
not contemplated by petitioner's application. Respondent
Commissioner, alleging no prior art against the allowance of the
claims, set up these objections in his answer in the district court
as the Page 324 U. S. 374 sole grounds of defense to the suit. The district court
sustained the Commissioner on the grounds assigned by him for
rejection of the claims, and for the further reason that the
subcombination claims did not "combine to produce any useful
result."

															The Court of Appeals, after observing the operation of
petitioner's subcombination without the cutting knife, as shown by
moving pictures, concluded that the device was far more useful in
its operation than the old method of preparing fruit by hand, and,
without deciding the point, added that it was plausible to say
"that two distinct inventions are disclosed in the
application."

															Without further examination of the issues raised by the
pleadings, it affirmed the judgment of the district court upon the
new and independent ground that a patent on the subcombination
should not be granted, because of

															"the dangers of approving a principle which permits a patent
monopoly to be extended by granting claims on distinct inventions,
which the applicant has no intention of exploiting as distinct
inventions."

															It said:

															"The record shows that it [the subcombination patent] is to be
used to exploit and protect the patent monopoly of another related
invention, to-wit: the complete machine. There is no intention to
make or license others to make the partial machine, because,
although it is possible to use it without the cutting knife, it is
not designed for such independent use."

															It thought that the grant of a patent which the patentee has no
intention of exploiting as a distinct invention "for the purpose of
blocking the development of machines which might be constructed by
others" is inconsistent with the constitutional requirement that
the patent grant must "promote the Progress of Science and useful
Arts."

															We are pointed to no factual basis in the record for the
assertion that petitioner contemplates either the misuse or nonuse
of the combination patent other than that Page 324 U. S. 375 suggested in the court's opinion that the complete machine does
the work better than the subcombination, without the knife, can do
it, and that there would be no reason to manufacture the partial
machine when the complete machine was available. A separate opinion
in which all the judges concurred also states that petitioner

															"admitted, both on argument and in its brief in the present
case, that its purpose in filing the disputed claims was to
'protect' the main invention, and that it had no intention of
manufacturing the subcombination machine."

															The reference, as agreed by counsel on the argument before us,
is to a statement in petitioner's brief in the court below that:
"The claims in issue are sought purely to prevent appropriation of
the . . . machine by the obvious expedient of eliminating the
splitting mechanism." It will be observed that this statement of
petitioner is not of a purpose either to suppress the use of the
patented invention or to use it or the patent to exploit or enlarge
the patent monopoly of the complete machine.

															The court below found support for its conclusion in our
decisions holding that a patentee may not enlarge the monopoly of
his patent by licensing his invention on terms or conditions which
tie to its use the use of material or devices which the licensed
invention does not embrace, whether they are patented, Ethyl
Gasoline Corp. v. United States, 309 U.
S. 436 , 309 U. S. 459 ; Standard Sanitary Mfg. Co. v. United States, 226 U. S.
20 , or unpatented. Motion Picture Patents Co. v.
Universal Film Mfg. Co., 243 U. S. 502 ; United Shoe Machinery Corp. v. United States, 258 U.
S. 451 ; Carbice Corporation American Patents
Development Corp., 283 U. S. 27 ; Leitch Manufacturing Co. v. Barber Co., 302 U.
S. 458 .

															It is clear that no such case is presented here. We find nothing
in the statement quoted from petitioner's brief in the court below
or in the record to indicate that petitioner proposes to make any
such use of the patent which Page 324 U. S. 376 it now seeks, either by the method of licensing it or otherwise.
The statement expresses only a purpose to prevent appropriation of
the complete machine by the appropriation of a part of it embodied
in the subcombination for which the patent is asked. There is
nothing to suggest any purpose or reason for a purpose to enlarge
the monopoly either of the subcombination or of the complete
machine by tying together their uses. Control of a part could not
be used as a means of enlarging an already acquired control of the
whole. And obviously, licensing the subcombination, which is less
useful than the whole, would not, in any circumstances disclosed by
the record, be a practical means of enlarging the use of the whole.
Failure to acquire control of the whole would be a legitimate
reason for wishing to acquire and retain control of a part if it
involves a patentable invention. And we think it plainly is
legitimate to use a patent on the subcombination as a means of
preventing appropriation by others of petitioner's more important
complete invention which he is using where there is absent, as
there is here, any purpose to enlarge the monopoly of either
invention.

															A patent on the combination embodied in the complete machine,
without the allowance of the subcombination claims, would not, as
the court below thought, prevent the free use of the
subcombination. Corn-Planter
Patent , 23 Wall. 181, 90 U. S. 224 ; Schumacher v. Cornell, 96 U. S. 549 , 96 U. S. 554 ; Rowell v. Lindsay, 113 U. S. 97 , 113 U. S. 101 ; Mercoid Corp. v. Mid-Continent Co., 320 U.
S. 661 , 320 U. S. 668 .
Hence, denial of a patent on the subcombination would deprive the
inventor of the benefit of the exclusive right to use the
subcombination in the ways specified by the patent laws. It would
also leave the public free to use, and thus to appropriate, a part,
however important, of the inventor's complete machine, even though
patented. Page 324 U. S. 377 If, as we must assume, petitioner has two inventions, both of
which are useful and one of which includes the other in its
entirety, it is evident that the value of the former would be
greatly impaired if the subcombination invention could be freely
used by others. See Deering v. Wingona Harvester Works, 155 U. S. 286 , 155 U. S. 302 .
But such appropriation or impairment of the value of the full
combination could be achieved only by appropriation of the
unpatented subcombination, which is, by hypothesis, also a useful
invention entitled to claim the benefit and protection of the
patent laws.

															The statutes permit, and it is the settled practice of the
Patent Office, many times sustained by this Court, to allow, claims
to a combination and also its subcombinations. Philadelphia, W. & B.R. Co.
v. Dubois , 12 Wall. 47, 79 U. S. 60 ; Deering v. Wingona Harvester Works, supra; Leeds & Catlin
Co. v. Victor Talking Mach. Co., 213 U.
S. 301 , 213 U. S. 318 ; Altoona Publix Theaters v. American Tri-Ergon Corp., 294 U. S. 477 , 294 U. S. 487 ; Mercoid Corp. v. Mid-Continent Co., supra, 320 U. S. 667 .
The question, then, is whether, without more, the use of the
subcombination patent to prevent appropriation of the complete
machine so infringes any provisions or principles of the patent
laws, or is so contrary to principles governing the award of
equitable relief, as to permit the court to refuse the judgment,
which the statute authorizes, directing that the patent issue.

															In answering it, the court below assumed that such purpose to
protect the whole invention was to be achieved by complete
suppression of the use of the subcombination invention, and that
the suppression for the protection of the complete machine would
invalidate the patent because it would be contrary to the
constitutional purpose and to the spirit, if not the letter, of the
patent laws. We think both assumptions are unwarranted. Section
4886 of the Revised Statutes authorizes "any person who has
invented Page 324 U. S. 378 . . . any new and useful . . . machine" to "obtain a patent."
The patent grant is not of a right to the patentee to use the
invention, for that he already possesses. It is a grant of the
right to exclude others from suing it. As the statute, R.S. § 4884,
provides, the grant is of the "exclusive right to make, use, and
vend" the invention, and this includes the exclusive right to
license others to make, use, and vend it. By the very terms of the
statute, the grant is nothing more than a means of preventing
others, except under license from the patentee, from appropriating
his invention.

															It by no means follows that such a grant is an inconsistent or
inappropriate exercise of the constitutional authority of Congress
"to promote the Progress of Science and useful Arts" by securing to
inventors "the exclusive Right to their . . . Discoveries." Art. 1,
§ 8 cl. 8. Congress, in the choice of means of promoting the useful
arts by patent grants, could have provided that the grant should be
conditioned upon the use of the patented invention, as in fact it
did provide by the Act of 1832 (4 Stat. 577), authorizing the issue
of patents to aliens conditioned upon the use of the invention,
which provision was later repealed (5 Stat. 117, 125). But Congress
was aware that an unpatented invention could be suppressed, and the
public thus deprived of all knowledge or benefit of it. It could
have concluded that the useful arts would be best promoted by
compliance with the conditions of the statutes which it did enact,
which require that patents be granted only for a limited term upon
an application fully disclosing the invention and the manner of
making and using it. It thus gave to the inventor limited
opportunity to gather material rewards for his invention, and
secured to the public the benefits of full knowledge of the
invention and the right to use it upon the expiration of the
patent.

															This Court has consistently held that failure of the patentee to
make use of a patented invention does not affect Page 324 U. S. 379 the validity of the patent. Continental Paper Bag Co. v.
Eastern Paper Bag Co., 210 U. S. 405 ; Crown Die & Tool Co. v. Nye Tool & Machine Works, 261 U. S. 24 , 261 U. S. 34 ; Woodbridge v. United States, 263 U. S.
50 , 263 U. S. 55 ; Fox Film Corp. v. Doyal, 286 U. S. 123 , 286 U. S. 127 ; Hartford-Empire Co. v. United States, 323 U.
S. 386 . No question of nonuse was involved in Ethyl
Gasoline Corp. v. United Stares, supra, 309 U. S. 459 ,
on which the court below relied, and it lends no support to the
contention that a patentee may not rightly use his patent as a
protection against misappropriation of his invention, even though
it is not used. There, it was held only that the monopoly of a
patent afforded no defense for violations of the Sherman Act which
the patentee had effected by using his patent to enlarge the patent
monopoly beyond the grant and as a means of increasing the use of
an independent patented invention.

															Congress has frequently been asked to change the policy of the
statutes as interpreted by this Court by imposing a forfeiture
[ Footnote 1 ] or providing for
compulsory licensing [ Footnote
2 ] if the patent is not used within a specified time, but has
not done so.

															We have no occasion to consider here whether a better rule
governing the grant of patents could be devised than that
prescribed by Congress, as this Court has interpreted it, or
whether the courts, on equitable principles, should decline to
enjoin patent infringements or decline to compel the issue of a
patent if and when it appears that the patentee or inventor intends
to make no use of the invention. The record neither calls upon nor
permits us to decide any of these questions, for it fails to
establish that petitioner has any such intention. Petitioner's
intended use of the patent to prevent others from appropriating it,
and, by that means, from appropriating an essential part of Page 324 U. S. 380 his complete machine is in no way inconsistent with petitioner's
making other permissible uses of the subcombination patent. In
fact, he does use the subcombination as a part of his completed
machine, and proposes to continue to use it. Execution of his
declared purpose to prevent appropriation of either of his
inventions, whether used separately or together, would not prevent
his licensing others to make, use, and vend the subcombination on
terms which would adequately protect the value of the monopoly of
both his inventions to which he is entitled by the patent laws. And
we cannot say that others, who could not secure a license to use
the complete machine, would not find it profitable to secure, or
that petitioner would not find it profitable to grant, licenses to
use the subcombination which the court below has found to be a
useful device which has advanced the art.

															The record establishes no intention by petitioner not to use his
invention, and no proposed use of it disclosed or suggested by the
record affords any basis for withholding the grant of the patent.
The judgment below must therefore be reversed, and the cause
remanded to the Court of Appeals for further proceedings in
conformity to this opinion to enable it to consider and decide the
issues raised by the pleadings. See Bates v. United
States, 323 U. S. 15 , 323 U. S. 17 ,
and cases cited. Reversed. [ Footnote 1 ] See Hartford-Empire Co. v. United States, supra, 323 U. S. 433 ,
n. 26.

															[ Footnote 2 ] See Hartford-Empire Co. v. United States, supra, n.
27.

															MR. JUSTICE DOUGLAS, with whom MR. JUSTICE BLACK and MR. JUSTICE
MURPHY concur, dissenting.

															The right of suppression of a patent came into the law over a
century after the first patent act was passed. In 1886, Judge
Blodgett had ruled that a patentee "is bound either to use the
patent himself or allow others to use it on reasonable or equitable
terms." Hoe v. Knap, 27 F. 204, 212. In 1896, that rule
was repudiated by the Circuit Page 324 U. S. 381 Court of Appeals for the Sixth Circuit in Heaton-Peninsular
Button-Fastener Co. v. Eureka Specialty Co., 77 F. 288, 295,
where the court stated that a patentee's

															"title is exclusive, and so clearly within the constitutional
provisions in respect of private property that he is neither bound
to use his discovery himself, no permit others to use it."

															That theory was adopted by this Court in Continental Paper
Bag Co. v. Eastern Paper Bag Co., 210 U.
S. 405 , decided in 1908. That was an infringement suit.
One defense was that the patentee had suppressed the patent. The
Court held, Mr. Justice Harlan dissenting, that suppression of the
patent was no defense; that the patentee's "right can only retain
its attribute of exclusiveness by a prevention of its violation." Id., page 210 U. S.
430 .

															I think it is time to be rid of that rule. It is inconsistent
with the Constitution and the patent legislation which Congress has
enacted.

															Article I, Section 8 of the Constitution grants Congress the
power

															"to promote the Progress of Science and useful Arts, by securing
for limited Times to Authors and Inventors the exclusive Right to
their respective Writings and Discoveries."

															Of the various enumerated powers, it is the only one which
states the purpose of the authority granted Congress.

															"The Congress is given no general power to issue letters patent
or to reward inventors as it will. An experience with grants of
monopoly in England was fresh in the minds of the Fathers; the
lesson had been underlined in recent differences with the
Crown."

															Hamilton, Patents and Free Enterprise (1941), p. 152, Temporary
National Economic Committee, Monograph No. 31, 76th Cong., 3d Sess.
The purpose "to promote the Progress of Science and useful Arts"
accordingly provides the standards for the exercise of the power
and sets the limits beyond which it may not go. That purpose also
provides Page 324 U. S. 382 the guide for the interpretation of patent laws enacted pursuant
to that power.

															It is a mistake, therefore, to conceive of a patent as but
another form of private property. The patent is a privilege
"conditioned by a public purpose." Mercoid Corp. v.
Mid-Continent Co., 320 U. S. 661 , 320 U. S. 666 .
The public purpose is "to promote the Progress of Science and
useful Arts." The exclusive right of the inventor is but the means
to that end. That was early recognized by this Court. See Pennock v.
Dialogue , 2 Pet. 1, 27 U. S. 19 ; Kendall v.
Winsor , 21 How. 322, 62 U. S.
327 -328; Seymour v.
Osborne , 11 Wall. 516, 78 U. S.
533 -534. But the Paper Bag case marked a
radical departure from that theory. It treated the "exclusive"
right of the inventor as something akin to an "absolute" right. It
subordinated the public purpose of the grant to the self-interest
of the patentee.

															The result is that suppression of patents has become
commonplace. Patents are multiplied to protect an economic barony
or empire, not to put new discoveries to use for the common good.
[ Footnote 2/1 ]

															"It is common practice to make an invention and to secure a
patent to block off a competitor's progress. By studying his ware
and developing an improvement upon it, a concern may 'fence in' its
rival; by a series of such moves, it may pin the trade enemy within
a technology which rapidly becomes obsolete. As often as not, such
maneuvers retard, rather than promote, the progress of the useful
arts. Invariably their effect is to enlarge and to prolong personal
privilege within the public domain."

															Hamilton, op. cit. supra, p. 161. One patent is used
merely to protect another. The use of a new patent is suppressed so
as to preclude experimentation which Page 324 U. S. 383 might result in further invention by competitors. [ Footnote 2/2 ] A whole technology is blocked
off. The result is a clog to our economic machine and a barrier to
an economy of abundance.

															It is difficult to see how that use of patents can be reconciled
with the purpose of the Constitution "to promote the Progress of
Science and the useful Arts." Can the suppression of patents which
arrests the progress of technology be said to promote that
progress? It is likewise difficult to see how suppression of
patents can be reconciled with the provision of the statute which
authorizes a grant of the "exclusive right to make, use, and vend
the invention or discovery." Rev.Stat. § 4884, 35 U.S.C. § 40. How
may the words "to make, use, and vend" be read to mean "not to
make, not to use, and not to vend"? Take the case of an invention
or discovery which unlocks the doors of science and reveals the
secrets of a dread disease. Is it possible that a patentee could be
permitted to suppress that invention for seventeen years (the term
of the letters patent) and withhold from humanity the benefits of
the cure? But there is no difference in principle between that case
and any case where a patent is suppressed because of some immediate
advantage to the patentee.

															I think it is time to return to the earlier, and I think the
true, philosophy of the patent system. We should not pass on to
Congress the duty to remove the private perquisites which we have
engrafted on the patent laws. This Court Page 324 U. S. 384 was responsible for their creation. This Court should take the
responsibility for their removal. I would adopt the view of Hoe
v. Knap, supra. In a case like the present ( Butterworth v.
Hoe, 112 U. S. 50 , 112 U. S. 61 ),
as in infringement suits ( Morton Salt Co. v. G. S. Suppiger
Co., 314 U. S. 488 , 314 U. S.
492 -494), the Court sits as a court of equity. It should
withhold its aid from a patentee who has employed or plans to
employ the patent not to exploit the invention, but to suppress it
in order to protect another patent or otherwise. [ Footnote 2/3 ] Cf. Ethyl Gasoline Corp. v.
United States, 309 U. S. 436 , 309 U. S. 459 .
If that purpose were clear, a patent should not issue in the first
instance. If it has been issued and not cancelled and the patent
has been suppressed, anyone should be permitted to use it, at least
on payment of reasonable royalties. In that way, the constitutional
objective will be more nearly realized -- the product of he
inventive genius of the human mind will be put to work in the
economy.

															[ Footnote 2/1 ]

															For illustrations, see Investigation of Concentration
of Economic Power, Hearings, Temporary National Economic Committee,
Pt. 2 (1939), pp. 345, 776; Hamilton, op.cit. supra, pp.
46, 47, 59.

															[ Footnote 2/2 ]

															The vice is the same as the practice, consistently condemned by
this Court, of writing into the claims broad, general
specifications. As stated by Mr. Justice Bradley in Carlton v.
Bokee , 17 Wall. 463, 84 U. S.
471 -472,

															"We think it proper to reiterate our disapprobation of these
ingenious attempts to expand a simple invention of a distinct
device into an all-embracing claim, calculated by its wide
generalizations and ambiguous language to discourage further
invention in the same department of industry. . . ."

															[ Footnote 2/3 ]

															These situations are to be distinguished from the case of the
inventor who, though he has an expectation of exploiting the
patent, has not yet arranged the necessary financing or, for other
reasons, has not yet been able to go into production.

															MR. JUSTICE RUTLEDGE, dissenting.

															I would affirm the judgment. But I do not reach the interesting
and important questions debated by the Court's opinion and my
dissenting brethren. They are of such a character that, in my
opinion, they should not be determined in the absence of a record
presenting facts and issues making this necessary. In this case,
the facts do not so clearly present the issues of "fencing" and
"blocking" that decision upon them is required or appropriate.

															Those issues were not raised or considered until the case
reached the Court of Appeals. Evidence concerning intent to
suppress was not received in the District Court, and Page 324 U. S. 385 petitioner is entitled to its day in court upon that question,
unless it has conceded it. The record, as this Court's opinion
indicates, is not clear that the concession has been made with the
effect of admitting that petitioner had no intention to exploit the
patent. If, as the trial court found, the machine without the
splitting knife would not "produce any useful result," this fact,
together with the assertion of the claims relating to the full
combination, or with it and the concessions apparently made in the
Court of Appeals, might be sufficient to sustain that court's
conclusion that the only purpose of the alleged invention was to
"fence" or "block." But the Court of Appeals expressly rejected the
trial court's finding in this respect, and a showing of motion
pictures here such as took place in the Court of Appeals appeared
to demonstrate conclusively that the machine not only works without
the cutting knife, but produces a highly useful result if the pears
are split before being placed in the machine for bobbing, peeling,
and coring. Whatever foundation might have been found, therefore,
to support the conclusion of intent to fence or block in the
machine's lack of capacity to produce any useful result disappears
from the case.

															The record, however, discloses another ground which was
considered in the Patent Office and the District Court wholly
sufficient to dispose of the case and requiring affirmance of the
judgment. This was that the claims in issue are too broad to cover
the invention. No one of the claims specifies or indicates that the
pears must be pre-split in order for the invention to be used or to
produce a useful result. With commendable candor, counsel conceded
this in the argument here, and indeed the claims on their face
require the concession. Patents are not to be granted upon claims
which do not accurately describe the invention and all of its
essential features. These claims are stated in language broad
enough to include whole Page 324 U. S. 386 pears. Admittedly, the machine will not work without the knife
as to them. In my judgment, therefore, the claims are too broad.
The Patent Office and the District Court so found. The question is
open, and was presented in the Court of Appeals and here.
Accordingly, I would affirm the judgment.

Summary: The Supreme Court ruled that a patent on a subcombination of a machine's elements can be legitimately used to prevent others from appropriating the full combination invention, as long as there is no intent to misuse the patent or to not use the invention. The Court reversed the lower court's decision and ordered the issuance of the patent.