# Sellers v. Dialogue

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United States Supreme Court
27 U.S. 1
Sellers v. Dialogue
[Syllabus from pages 1-3 intentionally omitted]
THIS case was brought before the Court, on a writ of error to the circuit court for the eastern district of Pennsylvania.
In that court, the plaintiffs in error had instituted their suit against the defendants, for an infringement of a patent right, for 'an improvement in the art of making tubes or hose for conveying air, water, and other fluids.' The invention claimed by the patentees, was in the mode of making the hose so that the parts so joined together would be tight, and as capable of resisting the pressure as any other part of the machine.
The bill of exceptions, which came up with the record, contained the whole evidence given in the trial of the cause in the circuit court. The invention, for which the patent right was claimed, was completed in 1811; and the letters patent were obtained in 1818. In this interval, upwards of thirteen thousand feet of hose, constructed according to the invention of the patentees, had been made and sold in the city of Philadelphia. One Samuel Jenkins, by the permission of, and under an agreement between the plaintiffs as to the price; had made and sold the hose invented by the plaintiffs, and supplied several hose companies in the city of Philadelphia with the same. Jenkins, during much of the time, was in the service of the plaintiffs, and had been instructed by them in the art of making the hose. There was no positive evidence, that the agreement between Jenkins and the plaintiffs in error was known to, or concealed from the public. The plaintiffs, on the trial, did not allege or offer evidence to prove that they had delayed making application for a patent, for the purpose of improving their invention; or that from 1811 to 1818, any important modifications or alterations had been made in their riveted hose. The plaintiffs claimed before the jury, that all the hose which had been made and sold to the public, prior to their patent, had been constructed and vended by Jenkins under their permission.
Upon the whole evidence in the case, the circuit court charged the jury:'We are clearly of opinion that if an inventor makes his discovery public, looks on and permits others freely to use it, without objection or assertion of claim to the invention, of which the public might take notice; he abandons the inchoate right to the exclusive use of the invention, to which a patent would have entitled him, had it been applied for before such use. And we think it makes no difference in the principle, that the article so publicly used, and afterwards patented, was made by a particular individual, who did so by the private permission of the inventor. As long as an inventor keeps to himself the subject of his discovery, the public cannot be injured: and even if it be made public, but accompanied by an assertion of the inventor's claim to the discovery, those who should make or use the subject of the invention would at least be put upon their guard. But if the public, with the knowledge and the tacit consent of the inventor, is permitted to use the invention without opposition, it is a fraud upon the public afterwards to take out a patent. It is possible that the inventor may not have intended to give the benefit of his discovery to the public; and may have supposed that by giving permission to a particular individual to construct for others the thing patented, he could not be presumed to have done so. But it is not a question of intention, which is involved in the principle which we have laid down; but of legal inference, resulting from the conduct of the inventor, and affecting the interests of the public. It is for the jury to say, whether the evidence brings this case within the principle which has been stated. If it does, the court is of opinion that the plaintiffs are not entitled to a verdict.'
To this charge the plaintiffs excepted, and the jury gave a verdict for the defendant.
Mr Webster, for the plaintiff in error, contended,
1. That the invention, being of such a nature that the use of it, for the purpose of trying its utility and bringing it to perfection, must necessarily be open and public; the implication of a waiver or abandonment of the right, furnished by such public use, is rebutted by the circumstance that the article was made and sold only by one individual; and that individual was authorized and permitted so to do by the inventors.
2. That the use of an invention, however public, if it be by the permission and under the continual exclusive claim of the inventor; does not take away his right, except after an unreasonable lapse of time, or gross negligence, in applying for a patent.
3. That the jury should have been instructed, that, if they found the riveted hose, which was in use by the hose companies, had been all made and sold by Jenkins, and by no one else, prior to the grant of the patent; and that he was permitted by the inventors, under their agreement, so to make and sell the same; that such use of the invention, not being adverse to their claim, did not take away their exclusive right, nor imply an abandonment of it to the public.
4. That, if they found the hose had not been made or sold, prior to the grant of the patent, by any person but Jenkins, then the giving of permission to him, being in itself an assertion of claim, was not a dedication to the public; and that the public, by purchasing and using the hose, thus made by the permission of the inventors, acquired no title to the invention-but, on the contrary, if the price paid included a premium for the invention, the public by so purchasing, admitted the right of the inventors.
5. That, at any rate, there being no use, by the public, of this invention, it should have been left to the jury, to say, whether, under all the circumstances, considering the nature of the invention, and the time necessary to perfect it; the plaintiffs have been guilty of negligence, in not sooner applying for a patent.
Mr Webster stated, that the question to be decided by the Court laid within a narrow compass. The defence set up was, that the plaintiffs had suffered their invention to be used before their application for a patent; and had thus lost all right to the exclusive use of it.
The Court, in this case, would be called upon to reverse the English decision relative to abandonments; for it was admitted, that those cases had gone to the whole extent of the principles applied to this case in the circuit court. Those cases have decided, that any public use of an invention, even for experiment, renders it no longer a new machine. In the courts of the United States, a more just view had been taken of the rights of inventors. The laws of the United States were intended to protect those rights, and to confer benefits; while the provisions in the statute of England, under which patents are issued, are exceptions to the law prohibiting monopolies. Hence, the construction of the British statute had been exceedingly straight and narrow, and different from the more liberal interpretation of our laws.
By the decisions of our courts, there must be a voluntary abandonment, or negligence, or unreasonable delay in obtaining letters patent, to destroy the right of the patentee. Goodyear vs. Mathews, Paine's Rep. 300; Morris vs. Huntington, Id. 348.
The exception to the charge of the court is, that they the jury should have been instructed to decide upon the evidence, whether the plaintiff meant to abandon his invention by the permission to Jenkins to use it. Jenkins must be considered as the private agent of the inventors; and their agreement with him, under which he made the hose, is to be considered rather as an assertion of their exclusive right to the invention, than a surrender of it. By omitting to leave to the jury this question of an intention to abandon, the case was erroneously withdrawn from them. The rights of the parties also entitled them to have the causes of their delay in patenting their invention inquired of by the jury. As the case is presented on the bill of exceptions, the court in their charge undertook to state the whole law of the subject matter to the jury; and the omission to instruct them on any one point is error.
If in this charge of the court any thing is omitted which was matter of law for the jury, it is misdirection.
In a case in Massachusetts, said to be reported in 4th Mason's Rep., it was left to the jury to decide whether seventeen years' delay could be accounted for.
Under the provisions of the laws of the United States, the right is created by the invention, and not by the patent. The court, therefore, may have misled the jury, in stating that the plaintiffs allowed the invention to be used. The thing invented was only permitted to be used.
The suggestion, that by adopting the language of the English statute, the cases decided in England upon that statute are adopted, may be answered by a reference to those cases. They have all arisen within a few years, since the enactment of our law; and, except the dictum of Lord Coke in 2d Institute, the authorities are all of modern date.
If this Court shall be of opinion, that as no instructions were particularly asked upon the questions raised here, the court below were not bound to notice them in the charge, and that the court did not undertake to decide the whole law; the plaintiff in error can made out no case here. But if this Court shall consider the questions now submitted doubtful, as the rights of the plaintiffs may not have been fully investigated; by sending the case back to the circuit court, a more full investigation of all the points involved in it may be made.
Mr. Sergeant, for the defendant, insisted,
1. That mere invention gives no right to an exclusive use, unless a patent is obtained; and that if at a time when no right is infringed, the public fairly acquire possession of it, the inventor cannot, by subsequently obtaining a patent, take it away.
2. That the inventor, by abstaining from getting a patent encouraged the public to use the article freely, and thus benefited his own manufactory. And he is not at liberty, when this advantage is exhausted, to turn round, and endeavour to reach another and a different kind of advantage, by appropriating the use exclusively to himself.
In the circuit where this cause was tried, it was not the practice to ask the court for special instructions to the jury. After the evidence had been closed, and counsel heard, a charge was given to the jury, according to the nature of the case, upon the points made by counsel, or which might suggest themselves to the mind of the judge. It was competent, however, to either party, after the charge, to ask the opinion of the court upon any point supposed to have been omitted, which was material to the decision. In this case, no such request had been made; and no objection can now be made to the charge, for any imputed omission. The only question was, whether the principles laid down to the jury for their guidance were correct, and according to law, in the particular excepted to.
The charge must of course be considered with reference to the facts, the whole of which appear upon the record. The petition of the plaintiffs to the secretary of state stated, in the words of the patent law, that they were the inventors of a 'new and useful improvement,' 'not known or used before their application.' The 'application' was made in July 1818. Their averment therefore, upon which they obtained their patent was, that the rivet hose was a new invention, not 'known or used' before the year 1818. The facts proved upon the trial were, that the invention had been completed and published in the year 1811, seven years before the application. That during all that period, it had been known and used as common public property, (and not as private property) which any one might use as publicly known. And that it was so known and used, with the knowledge of those who now claim to be the inventors; property, any assertion or claim on their part of exclusive property, and without notice of intention to make such claim. There was not a single circumstance offered to explain the delay.
There was an attempt to show, that the making of the article for use, was limited by the authority and permission of the plaintiffs, and thence to infer that they did not intend to give it to the public. A witness, produced by them, and the only person who appeared to have made the article, declared in substance, 'that he was taught by the plaintiffs in 1811 to make hose; that in that year he made a certain quantity of it for the Philadelphia Hose Company, plaintiffs being members of the committee; and that by permission of the plaintiffs he made about thirteen thousand feet of hose, for different hose companies, from 1811 to the time of granting the patent.'
Thus, in point of fact, nearly two miles and a half in length of hose, had been made at different times in the course of seven years before the patent; and had been sold to different hose companies; not to experiment with, in order to bring the invention to perfection; but for public use, as a thing already completed, and adapted to the purpose of arresting the ravages of fire. It was so used; and from the year 1811 to the year 1818, it was never materially altered or improved. The thing patented in 1818 was precisely the thing invented, completed and used in 1811.
Were the plaintiffs, under these circumstances, entitled to a patent? or could a patent, thus obtained, be supported? The authorities upon the subject are decisive. He did not admit that the weight of judicial or legal opinion in England was lessened by the supposed difference in the policy of the two countries, or that in fact any such difference existed. It was true, that the process or mode of legislation was varied according to the existing state of things. The statute of James was made to abolish monopolies; but it saved, by exception, the rights of the inventors of new and useful inventions, who had before enjoyed exclusive privileges. The constitution of the United States and the act of congress; on the contrary, having no monopolies to deal with; created exclusive privileges in favour of the same description of persons. The one preserved to them a pre-existing monopoly, and the other conferred it upon them. Both were influenced by the merits of the inventor, and the public advantage of encouraging inventive genius. And they were equally influenced by these considerations; for it required at least as strong a sense of their just claims to distinction, to except new and useful inventions from the statutory odium and denunciation of monopolies, as it did to confer upon them the benefits of monopoly by direct enactment. There was no reason, therefore, why the judicial construction of the statute of James, (from which our act of congress was in this respect copied,) which had become, as it were, incorporated with and part of the statute, should not be as much respected as in the instance of any other statute. The adoption of the language of the statute, was the adoption also of its settled interpretation. It could not surely be insisted that England was wanting in intelligence to discern the value of genius, or in liberality to reward it; or that there was a prevailing bias in her judiciary towards an unjust restriction of the rights of meritorious inventors. The sentiment of the nation, and the government, in all its branches, was the opposite of this.
Before referring to the cases, it might be well, however, to examine the matter a little upon principle. What is the right of an inventor? It is the right, given to him by the law, to apply for and obtain a patent for his invention. The patent, when duly obtained, secures to him the exclusive enjoyment. Has he any other right before he obtains a patent than the one just stated? It is obvious that he has not. This, then, is what the learned judge, in his charge, styles, with peculiar aptness, an inchoate right; that is, a right to have a title upon complying with the terms and conditions of the law. It is like an inchoate right to land, or an inceptive right to land, well known in some of the states, and every where accompanied with the condition, that to be made available, it must be prosecuted with due diligence, to the consummation or completion of the title. If the condition be not complied with, the right is abandoned or lost, and the rights of others are let in. The abandonment is not a question of intention of the party, but it is the legal construction of his acts or omissions.
Had the plaintiffs ever such an inchoate right? According to the opinion of the judge, they undoubtedly had such a right by their invention in 1811. Then, they could have made out the case required by the first section of the act of congress-they could have stated with truth, that the thing invented 'was not known or used before their application.' But in the year 1818 it was no longer true. It might be stated, but it could not be truly stated. They were unable to comply with the condition of law. For, if the inventor, as was the case here, voluntarily permit his invention to be known and used, as a thing not intended to be patented, how can he make this statement? By so doing, he abandons his inchoate right, he proclaims to the world that he does not mean to secure it by patent, and every one is at liberty to consider it abandoned; because every one acquainted with the law knows that he has incurred a disability. This is the inevitable legal construction of his conduct, and is altogether independent of his intention; unless we suppose the act to be guilty of the absurdity of requiring that to be stated which it does not require to be true.
But the terms of the act are in this respect too plain to admit of a doubt. Suppose an applicant should state, that his invention had been known and used for seven years before his application, could he obtain a patent? Suppose he should state, that he had always intended to reserve to himself a right to obtain a patent, would that help him? Or, if he should state that it had been so known and used only by his permission? The language of the act is plain and imperative. There is no scope for interpretation. The prescribed condition is express. And there is no doubt that it was the intention of congress to refer to the 'application,' as the period before which the thing was not known or used; for in the subsequent act of 17th April 1800, conferring the privileges of the patent law upon resident aliense, the same word is used for the same purpose. And it is declared that the patent shall be void if the thing patented was known or used before the application. Act of 17th April 1800, section 1.
It is not contended, that if the invention should be pirated, the use or knowledge, obtained by the piracy, or otherwise obtained without the knowledge or consent and without the fault of the inventor; would bar him from getting a patent. Nor is it contended that his own knowledge and use would be a bar. The latter is a necessary exception out of the generality of the terms of the law, because every inventor must know his invention, and must use it to the extent of ascertaining its usefulness, before he applies for a patent. The former is a case where there is no fault on the part of the inventor. But it is contended, that the inventor who means to rely upon a patent must make his application within a reasonable time; and that if he permit his invention to be publicly known and used before he applies, he cannot obtain a patent. He abandons his right, if he sell it for public use himself, and a fortiori, if he permit another so to sell it.
There is a cautious intimation in the charge, that possibly there might be some saving efficacy in accompanying the use with an assertion of claim by the inventor. And it is also put as a circumstance against the plaintiffs (which was clearly in evidence) that there was no such assertion or notice. The charge is therefore applicable only to a case of unqualified public use, without notice or assertion of claim. That such a notice would be available, or that there can be any other assertion of claim than the legal assertion by applying for a patent; are propositions which it is not now necessary to examine. They were not affirmatively laid down by the court, nor otherwise adverted to than for the purpose of showing that the facts did not entitled the plaintiffs to the benefit of them. They cannot therefore complain. Whether such assertions or notice, contradicted by the acts of the inventor, will be available, is a question not decided below. Certain it is, that a secret permission given to their own agent, can no more be an assertion or notice, than a resolution locked up in their own breasts.
The construction contended for is in accordance with the policy of the law. Patents are intended to be granted for a limited time, beginning with the invention. He who asks for one must describe his invention with such certainty as will ensure to the public its use, when the patent expires; and at the expiration of the time, the thing invented is public property. The inventor, to enjoy its benefits, must place his whole reliance upon it. Is it competent for him, then, to secure to himself the advantages of his own peculiar knowledge and skill, as long as these will avail him, and when they are exhausted, to apply for a patent? There are many inventions, the secret of which is not at once discoverable from an inspection of the thing invented. The inventor may keep that as long as he can. He may have extraordinary skill or methods of working which will enable him to keep the market to himself. May he enjoy these exclusive privileges for seven years, and then obtain a patent for fourteen more? He would then have the exclusive use for twenty-one years. If for seven, why not for fourteen, or twenty-one, or any other assignable time? The moment that his invention comes into the most common or public use, is the moment when he applies for a patent. When the public have fully got possession of it, he seeks to withdraw it from the common stock and appropriate it to himself. This is directly contrary to the design of the law. It extends the term, and inverts the order of proceeding. The inconveniences would be very great. Those who were engaged in making the article must stop. Those who had arranged for making it must abandon their arrangements. Those who had employed their time in learning to make it must lose their time and their labour. And even a bona fide inventor, who had discovered the same thing by his own study and experiments, would be deprived of the fruits of his ingenuity and exertions. And why? Simply because the first inventor did not choose sooner to take out a patent, as he might have done. The conditions of the law being such as he can comply with, and ought to comply with; he postpones a compliance for his own profit, and leads the community into an injurious error. If it be designed, it is a wrong. If it be without design, it is negligence. Ought he to be benefited by his own wrong or negligence?
The authorities are against him. He cited 3 Inst. 184; Wood vs. Zimmer, 1 Holt's N. P. Rep. 58; Whittemore vs. Cutter, 1 Gall. 482: and referred to Evans vs. Eaton, 1 Peters's C. C. Rep. 348; Thompson vs. Haight, 1 U.S. Law Journal, 563.
He then examined the several points stated for the defendant, contending that some of them were unsupported by the facts, and others by the law. Under the second he argued that there had been an 'unreasonable lapse of time,' and 'gross negligence.' That seven years (the period here) unexplained were beyond all reasonable bounds.
He contended, also, that due diligence, where there were no circumstances of explanation, was a question of law; and that it consisted in applying for a patent as soon, after the invention was completed, as could reasonably be done: and, finally, that due diligence required that the application should be made before the thing invented was publicly known and used with the consent of the inventor.
Mr. Justice STORY delivered the opinion of the Court.

## Notes

This work is in the public domain in the United States because it is a work of the United States federal government (see 17 U.S.C. 105).
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