MANNING & Another
v.
CAPE ANN ISINGLASS & GLUE COMPANY & Others.
Supreme Court of United States.
Decided May 7th, 1883. APPEAL FROM THE CIRCUIT COURT OF THE UNITED STATES FOR THE DISTRICT OF MASSACHUSETTS.*463 Mr. Thomas William Clarke for appellants.
Mr. George L. Roberts for appellees.
*464 MR. JUSTICE WOODS delivered the opinion of the court.
We think that the defence, 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, Mass., in copartnership with his brother-in-law, Caleb Norwood, under the same 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, Mass., 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 *465 on by Norwood and his son after the dissolution of the firm of Norwood and 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. § 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 *466 of the inventor, for more than two years prior to the application. The patent is threefore 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 must be affirmed.