Elizabeth v. American Nicholson Pavement Company SKH

• In 1847 the inventor of a new and useful improvement in wooden pavements filed in the patent office a caveat of his invention, and in 1848 put down at his own expense, by way of experiment, pavement on a thoroughfare leading out of Boston, and used as a public road, but owned by a corporation of which he was a stockholder and treasurer, where it was exposed to public view and traveled over for several years; it proving successful, he obtained letters patent therefor, August 7, 1854. Held, that they were not avoided by English letters patent for the same invention, enrolled in 1850.
• A foreign patent or other foreign 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 secured by the latter; and it is not enough that the foreign patent was issued or enrolled prior to the issue of the patent by the United States.
• In 1847 the inventor of a new and useful improvement in wooden pavements filed in the patent office a caveat of his invention, and in 1848 put down at his own expense, by way of experiment, pavement on a thoroughfare leading out of Boston and used as a public road, but owned by a corporation of which he was a stockholder and treasurer, where it was exposed to public view and traveled over for several years, and, it proving successful, he, August 7, 1854, obtained letters patent therefor. Held that, there having been no public use or sale of the invention, he was entitled to such letters patent.
• 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 does not constitute a “public use.”
• Any attempt of an inventor to use invention for profit and not by way of experiment for a longer period than two years before the application deprives the inventor of his right to a patent.
• If the public use of an invention is experimental, to ascertain the utility, value, or success of the thing invented by practice, it will not be fatal to the patent.
• Permitting machine to be used by other persons generally either with or without compensation or placing machine on sale for such use with inventor's consent will constitute “public use” and “public sale,” as respects determination of whether invention has been abandoned.
• Abandonment of an invention to the public does not necessarily follow from invention being in use or on sale with inventor's consent and allowance at any time within two years before the application, but 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.
• An abandonment of an invention to the public may be evinced by the conduct of the inventor at any time even within two years before the application.
• The presumption, arising from the oath of the applicant, required by law, 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.
• A device is none the less an infringement because it contains an improvement upon the patented invention.
• Contractors laid a pavement for a city which infringed the patent of one A., and the city paid them as much therefor as it would have had to pay A. 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, notwithstanding they answered jointly, the latter alone were responsible, although the former might have been enjoined before the completion of the work, and would undoubtedly have been liable in an action for damages.
• Where a contract was made in the name of an agent in behalf and for the benefit of a corporation, the fulfillment of which involved the infringement of a patent belonging to a third person, held, that the corporation alone was liable in a suit in equity to recover profits resulting from the infringement.
• The burden is on an infringer to show that a portion of his profits is due to the use of something other than the patented article.
• No stipulation between a patentee and his assignee as to royalty to be charged can prevent the latter from recovering from an infringer, in a suit in equity, the whole profits realized by reason of the infringement, though it might have some bearing on the measure of damages in an action at law.
• Before Act July 8, 1870, 16 Stat. 198, 35 U.S.C.A. §§ 1, 3, courts of equity could not allow damages in addition to profits.
• When the entire profit of a business or undertaking results from the use of an invention, the patentee will be entitled to recover the entire profit, if he elects that remedy.
• When profits are made by an infringer by the use of an article patented as an entirety or product, he is responsible to the patentee for them, unless he can show that a portion of them is the result of some other thing used by him.
• When the entire profit of a business or undertaking results from the use of an invention, the patentee will be entitled to recover the entire profit, if he elects that remedy; and in such 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.