Graham vs. McCormick. HUGH GRAHAM vs. CYRUS H. McCORMICK et al. CIRCUIT COURT-NORTHERN DISTRICT OF ILLINOIS- IN EQUITY. 1. PATENT LAW-APPLICATIONS-REJECTED CLAIMS-CONTINUITY OF PROCEEDINGS TWO YEARS' LIMITATION OF PUBLIC USER.-Where an application for a patent was filed, covering several claims, some of which were rejected, and subsequently, but before any patent was issued on such application, a second application was filed, embracing the subjectmatter of the rejected claims of the first application, and the invention in the second application being described in the specifications and drawings of the first, the said rejected claims being afterwards withdrawn from the first application, and a patent thereupon issuing upon the good claims of such application, and a patent subsequently issuing upon the second application: Held, that for the purpose of fixing the time when the two years began to run within which the invention could be sold and publicly used without invalidating the patent, the continuity of the proceedings which originated in the first application was not broken up to the time of the issuing of the latter patent, and the two years dated back from the time of filing the first application. 2. PUBLIC USE FOR TWO YEARS EVIDENCE.-When the infringer of a patent sets up in defense that the patent was void by reason of public use for two years prior to the filing of the application therefor, the proof should be clear and satisfactory in order to justify the court in sustaining that defense. 3. SPECIFICATIONS-APPLICATION-ESTOPPEL.-Where in the specifications accompanying a patent, a certain invention is described for which no claim is made and which is not covered by the patent issuing, this does not estop the inventor from afterwards applying for and obtaining a patent for such invention 4. GRAHAM PATENT, issued February 11, 1868, for an improvement in harvesters, sustained. Banning & Banning, for complainant. E. N. Dickerson, M. D. Leggett and Offield & Towle, for defendants. Graham vs. McCormick. DRUMMOND, J.-This is a bill filed by the plaintiff as assignee of A. B. Graham, to whom a patent was issued on the 11th of February, 1868. The controversy arises only upon the first and second claims of the patent. Various objections have been made to the patent, and to the right of the plaintiff to maintain suit thereon. It is objected by the defendants that the Graham patent is invalid, because the invention was in public use and on sale for more than two years prior to the application for a patent. The first conception in the mind of the patentee seems to have been in the winter of 1862-3, and during the year 1863 he made an arrangement with certain parties under which some machines were constructed containing his invention, which, however, proved unsuccessful. Under an arrangement made with another person in the following year, several other machines were constructed, parts of the old machines of 1863 being used in the construction of some of the new ones. Conditional sales were made of some of these machines, and with a few of them some grass or grain was cut. They were continually getting out of repair and could not be regarded as a success, and in some instances where money had been paid for the machines, it was refunded in whole or in part. It is insisted on the part of the defendants that these facts constituted a sale and use of the invention for more than two years prior to the application for the patent, while on the part of the plaintiff it is claimed that it was nothing. more than testing, by experiment in various ways, whether the invention was successful. In order to a proper understanding of this part of the case, it is necessary to consider the history of the application for the patent. That was first made on the 25th of February, 1864, by being placed in the hands of solicitors in New York to be by them presented to the patent office. The application, however, for some unexplained reason, was not in fact filed Graham vs. McCormick. there until the 2d of December, 1865. The patentee claims that instructions were given to the solicitors to file the application at once, and he supposed that it was so filed. It contained five claims, the first of which embraced the invention now in controversy. On the 30th of December, 1865, the first three claims were rejected, an offer being made at the time to allow the other two claims. This offer was not accepted, and on the 24th of March, 1866, an amended claim was filed in place of the first rejected claim. It is understood that this referred to the invention now in controversy. On the 4th of April, 1866, this claim was rejected. On the 11th of February, 1867, the first application being still pending, with the action of the patent office as stated, a second application was filed, containing, among others, the two claims now in suit. In June, 1867, the claims which embraced the invention now in controversy, were withdrawn from the first application, and on the 23d of July, 1867, a patent was issued on the first application. As issued, that patent did not include the invention now in suit. A patent for the invention in controversy now, was issued on the second application on the 11th of February, 1868. A description of the invention now under consideration was contained in the original specifications and drawings which accompanied the first application. It is claimed by the plaintiff that under this state of facts, the application for the patent embracing this invention for the purpose of fixing the time when the two years should begin to run, should be considered as having been made on the 25th of February, 1864, when the patentee's first application was put in charge of his solicitors; or, if that be not so, that it should be considered as made when that application was filed in the patent office on the 2d of December, 1865, so that the two years would embrace the years 1864 and 1865. On the other hand, it is contended by the defendants that the two years began to run on the 11th of February, 1865, because the second application, upon which Graham vs. McCormick. the present patent was issued, was filed on the 11th of February, 1867; and that the connection between the first and second application was effectually broken, under the circumstances, so that the two applications could not be considered one continuous proceeding. The rule is well settled that if an invention has been in public use or on sale with the knowledge and consent of the inventor more than two years before his application for a patent, it will render the patent invalid; but it is clear that in order to determine whether the case is within the rule, we must consider whether the particular devices which the inventor claims to have invented were perfect, so that they embodied a complete invention. We have some doubts, even upon the theory that the two applications should be considered as parts of one and the same proceeding, whether the patentee's first application can be regarded as made, within the meaning of the law, at the time it was placed in the hands of his solicitors, in February, 1864; but we think, under the circumstances which attended the efforts of the patentee to obtain a patent, together with the connection which the second application seems to have with the first, that for the purpose of fixing the time when the two years began to run, the second application should be treated as a continuation of the first, and that both are part of one proceeding. In this respect, this case is not wholly unlike that of Smith vs. Goodyear Dental Vulcanite Company, 93 United States, 500, where the court held that the effort to obtain a new patent in 1864, ought not to be regarded as disconnected from the original application made in 1855, and that it was but one stage in a continuous effort. It is true that in this case, unlike that, a patent was granted on the first application covering the claims which were not rejected, and the patent in this suit was granted on the second application; but the subjectmatter of the second application was embraced in the first, and the invention now in controversy was described in the Graham vs. McCormick. specifications and the drawings which constituted part of the first application, and we think it may be said that the continuity of the proceedings which originated in the first application was not broken, up to the time when the patent for the invention in suit was granted in 1868. See, also, Blandy vs. Griffiths, 3 Fisher, 616. In view, therefore, of the circumstances under which Graham made his second application and withdrew from the first the claims covering the invention now in suit, we cannot say that the proceedings should be severed so as to make the two years date back from the 11th of February, 1867; and we think that the two years, within which the invention could be sold and publicly used without invalidating the patent, began to run on the second of December, 1863, which was two years prior to the filing of the first application. It is manifest that the only machine made in 1863, which is distinctly proved to have been sold, was delivered on trial and warranted, and should be regarded rather in the light of a use of the invention for such practical tests as the law permits an inventor to make, than as such a public sale or use as is contemplated by the statute. At that stage of the inventor's work his invention was largely in experiment and trial. It could only be tested by practical use in the field, and it was essential that it should be so tested by farmers on their farms. The inventor was then struggling, as inventors often do, to establish the success of his invention. It was necessary that thorough experimental tests should be made, and that he should have the assistance of others in making them; and it is manifest, we think, that the machines of 1863 were not yet so perfected as to be practical machines, capable of successful work. In the light of all the testimony we conclude that what was done by the patentee with reference to the use of the machines in 1863, was intended by him, and was in fact, for the purpose of experiment, and as a test of the machines with a view to their perfection. This part of the defense |