The facts in this case show a public use of the alleged
invention for more than four years prior to the date of the
patent.
This was a suit brought by the appellants, John J. Manning and
Caleb J. Norwood, to restrain the infringement by the appellees of
letters patent dated January 7, 1873, issued to the appellants and
W. N. Manning, as assignees of the inventor, James Manning. By the
subsequent assignment of W. N. Manning, the appellants became
vested with the title to the entire patent.
It is well known that the swimming bladders or sounds of certain
fishes are largely composed of that variety of gelatin called
isinglass. The sounds are usually found in the market in a dry and
hard state. They are manufactured into isinglass by a mechanical
operation which consists in passing the macerated sounds
successively between several sets of rollers, the first set
kneading the sounds into a homogeneous sheet, and the subsequent
sets squeezing and elongating the sheets into the ribbons of
isinglass known to commerce. The invention covered by the patent
sued on was for "an improvement in the manufacture of isinglass
from fish sounds."
The specification of the patent declared as follows:
"In the manufacture of ribbon isinglass from fish sounds, it is
customary to feed the softened and moist or macerated sounds to and
between feed and compressing rollers, by which the viscid substance
is compressed and joined and formed into a continuous sheet.
Notwithstanding the constant application of cold water into the
rolls, the substance adheres tenaciously to the roll and
Page 108 U. S. 463
accumulates thereupon and has to be cut away therefrom, an
operation which is very slow and laborious, and productive of
imperfect sheets."
"My invention is designed to obviate the return of the adhering
gelatinous substance to the action of the rolls before it is
stripped therefrom, and to so strip it that the rolls may work
continuously or without stoppage; the ribbon, as it is stopped,
being again fed or guided by the operator into and between the
rolls until sufficiently reduced or elongated for removal or for
the action of other rolls set nearer together to produce a thinner
ribbon."
"To effect this result, I place at the side of each roll a
scraper extending the whole length of the roll and having an edge
set up to the roll, so that the roll shall run just clear of it,
which scraper or cleaner strips from the whole surface of the roll
the adhering gelatine in the form of a sheet."
"The invention consists in this method of passing the isinglass
between hollow rolls, cooled by water thrown into the rolls, and
then stripping the gelatinous matter from the rollers and returning
it to the hopper to be again treated, the rollers being
adjustable."
The claim was as follows:
"The herein described method of converting isinglass into sheets
of any desired thickness by running it between hollow rolls into
which cold water is thrown to cool the compressing surfaces, such
rolls being preferably made adjustable to graduate the degree of
compression, and the adhering sheets being removed from the rolls
by stationary scrapers or clearers and returned to the hopper as
required."
One of the defenses set up in the answer and relied on was that
the improvement described in the patent had been in public use for
more than two years before the patent was applied for.
The circuit court dismissed the bill on that ground. From its
decree this appeal is prosecuted by the complainants.
Page 108 U. S. 464
MR. JUSTICE WOODS delivered the opinion of the Court.
We think that the defense that the improvement described in the
patent had been in public use for more than two years prior to the
application therefor is established by the testimony.
The appellants contend that the patent covers an improvement in
the process of making isinglass. It is not contended that the
patent covers the rolls between which the fish sounds are passed or
the keeping of the rolls cool by making them hollow and injecting a
stream of cold water into the cavity, nor the automatic scrapers,
but in the use of automatic scrapers applied to such rolls to
prevent the isinglass from being carried through the rolls a second
time without aeration.
The testimony shows that as early as the year 1860, James
Manning, the inventor, was engaged in the manufacture of isinglass
at Ipswich, Massachusetts, in co-partnership with his
brother-in-law Caleb Norwood, under the name of Norwood &
Manning. In that year, Oliver C. Smith, a machinist at Salem,
constructed for the firm a machine containing adjustable hollow
water-cooled rolls with stationary scrapers, substantially such as
are described in the patent, for converting isinglass into sheets
in the manner therein set forth. The use of this machine was
continued down to the year 1867, when the firm of Norwood &
Manning was dissolved. In the division of the assets of the firm
between the partners, the machine with the scraper, made by Smith,
fell to Norwood. He took into the business with him as a partner
his son, Caleb J. Norwood, and continued it in the same factory
from 1867 to 1870, using the machine with the stationary scraper
which had been made by Smith.
James Manning, after the dissolution of the firm of Norwood
& Manning, established an isinglass factory at Rockport,
Massachusetts, and procured to be constructed two machines similar
to that disclosed in the patent. With this factory and machinery he
set up in business his two sons, John J. Manning and William N.
Manning, and they carried on the business of manufacturing
isinglass under the name of J. J. Manning & Brother from the
year 1868 until the testimony in this case was taken in 1877, using
the two machines with scrapers above mentioned. James Manning, the
inventor, had no interest in the business carried
Page 108 U. S. 465
on by Norwood and his son after the dissolution of the firm of
Norwood & Manning in 1867, nor in the business of J. J. Manning
& Brother, carried on from 1868 until after the issue of the
patent.
Some attempt is made to show that the use of the machines in the
factory of Caleb Norwood, from 1867 to 1870, was a secret, and not
a public use. But we think the testimony shows a use open to the
public generally. But whether this be so or not is immaterial, for
Norwood and his son were allowed by the inventor the unrestricted
use of the patent during the period mentioned, without injunction
of secrecy or other condition. This is sufficient to constitute a
public use.
Egbert v. Lippman, 104 U.
S. 333.
The decided weight of the evidence shows that there was also a
public use of the invention in the factories of J. J. Manning &
Brother for more than four years prior to the application for the
patent -- namely from 1868 to 1873.
It is also made clear by the testimony not only that the
machinery but the process used by Norwood & Manning from 1860
to 1867, by Norwood & Son from 1867 to 1870, and by J. J.
Manning & Brother from 1868 to 1873, and after that year, was
substantially the same as that described in the patent. During all
these years, there was no material change either in the machinery
or the process. The use of the machinery and process was not,
therefore, an experimental use. These conclusions of fact are fatal
to the complainant's case.
It is the policy of the patent laws to forbid the issue of a
patent for an invention which has been in public use before the
application therefor. The statute of 1836, 5 Stat. 117, section 6,
did not allow the issue of a patent when the invention had been in
public use or on sale for any period, however short, with the
consent or allowance of the inventor, and the statute of 1870, 16
Stat. 201, section 24; Rev.Stat. ยง 4886, does not allow the issue,
when the invention had been in public use for more than two years
prior to the application, either with or without the consent or
allowance of the inventor. Under either of these statutes the
patent relied on in this case was improvidently issued, for there
was a public use, with the consent
Page 108 U. S. 466
of the inventor, for more than two years prior to the
application. The patent is therefore void.
McClurg v.
Kingsland, 1 How. 202;
Egbert v. Lippman, ubi
supra; Consolidated Fruit Jar Co. v. Wright, 94 U. S.
92;
Worley v. Tobacco Co., 104 U.
S. 340.
The decree of the circuit court was therefore right, and
must be affirmed.
