Elizabeth v. American Nicholson Pavement Company (JWB)

The Case

• APPEAL from the Circuit Court of the United States for the District of New Jersey
• Brought by American Nicholson Pavement Co. against city of Elizabeth, NJ, upon a patent issued to Samuel Nicholson (dated 8/20/1867)
• Patent: new and improved wooden pavement
  • A process of constructing wooden block pavements on a foundation along a street with facility, cheapness, and accuracy,… comparatively permanent and durable
• bill charges that the defendants infringed this patent by laying down wooden pavements in the city of Elizabeth, N. J., constructed in substantial conformity with the process patented
• Defendants claimed that:
  • their construction was in accordance to other patents from 1/12/1869, and denied infringement
  • denied novelty in Nicholson’s patent
  • alleged that his patent was in public use for six years before he applied for a patent

Ruling

• Found invention to have novelty – invention dated back to 1848, earliest English patent was 1850
  • most similar inventions had no filling in the depressions or grooves formed
• Public Use
  • 1848 Mill-dam Ave in Boston – 75-foot stretch of road
  • Nicholson merely intended this piece of pavement as an experiment, to test its usefulness and durability.
  • Roads cannot be tested indoors; MUST be tested on a highway (public) over a period of time, often years
  • “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”
  • “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”
  • Gained no extended monopoly
• Defendants were found to have infringed
• We think there is no error in the decree of the Circuit Court, except in making the city of Elizabeth and George W. Tubbs accountable for the profits (New Jersey Wood-Paving company must pay injunctions)

Class Notes

• Nicholson invented a new type of road (1877), wooden foundation with spaces filled with sand and gravel
• Elizabeth made roads, and Nicholson sued for infringement
• Elizabeth claimed that the roads were based on previous patents, not Nicholson’s; also that Nicholson’s was in public use before the patent

Timeline

• 1848 Mill-Dam Road built in Boston (privately owned, publicly used toll road)
• 1852 patent application
  • road built 6 years before application, beyond 2-year period
• 1854 patent issued
• 1867 patent re-issued

Ruling

• not public use
• Nicholson was testing his design on Mill-dam Road

Evidence of Experimentation

• Keep records
• No profit (Nicholson paid for the construction of the road)
• Confidentiality
• Control
• Observation (Nicholson was “there everyday”)
• No other reasonable way to test the invention (other than build a road and let people use it)
• Time scale needed for testing (Nicholson needed more than two years to ensure his invention worked)