Elizabeth v. American Nicholson Pavement Company (901422128)

Read for 2/21/11

Reading Notes

• Decided 1877 on appeal from the Circuit Court
• American sued Elizabeth for infringement of a patent for a new and improved wooden pavement
  • Process for constructing wooden pavements along a road and for constructing such pavements
• Elizabeth responded that their method was in accordance with a similar patent granted to another inventor and denied novelty of Nicholson's invention
  • Also said his method was used with his consent for six years prior in Boston
• Determined his was novel, so not an issue
• Must determine if the laying in Boston is "public use" withing the meaning of the law
  • Need to look at his object in purpose in this initial laying
• All the evidence suggests that the laying was entirely experimental and did not suggest an abandonment of the invention
• Have to determine if his experimentation put the process in "public use"
  • Could not have experimented properly without a highway
• He tested at his own expense and with the consent of the road owners
• Had the city used the process in other streets with his consent then it would be barred
• Agree that he did not abandon the intent to patent and therefore the patent is valid
• Now must determine if it was infringed
  • Their method was more or less identical
• Could only render a decree for profits alone because it was filed before an act in 1879 which allowed both profits and damages
  • Appealed that no profits were actually due because none were dependent upon the infringed method
• Response to appeal points
  • The city of Elizabeth did not receive the profits
    • Were liable for damages, but those were not sought here
  • Profits were result of the infringed method
• Agree in full with the Circuit Court except for who is responsible for the profits
  • Reverse the decree and remand the cause to enter one in accordance with this court

Statutory Bars

• A foreign patent or publication is irrelevant unless published before the actual invention
• Statement on precedent:

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.

• Qualifications of experiment
  • May take years to test durability
  • May or may not need to make alterations
  • Must remain in inventor's control
• It is not public knowledge of an invention that bars its patentability but their use or sale thereof
  • Public benefit does not necessarily constitute public use in these terms