Agawam Company v. Jordan
ERROR to the Circuit Court for Massachusetts, the suit having been one to restrain the use, by the Agawam Woollen Company, of a certain machine for manufacturing wool and other fibrous materials, patented to John Goulding.
The process formerly in use in the production of yarn from wool, was by a set of carding engines, a billy and a jenny; a series usually consisting of three carding machines, commonly called a first breaker, a second breaker, and a finisher, one billy and two jennies, sometimes two double carding machines being used instead of three single carding machines.
The wool was fed to the first carding machine, called the first breaker, on a feed table, and was doffed off the doffer of that machine by a comb. The material thus doffed off was taken to the second carding machine, called the second breaker, and was fed into it in the same manner as in the first, and upon leaving the doffer, was either wound round a large cylinder, making what was called a lap or bat, or dropped on the floor. The material was then taken to the third carding machine, and was fed to it in the same way, and, by a roller and shell at the delivery-end of this machine, was made into short rolls, which were about as long as this machine was wide. These short rolls were then taken to the billy, and were spliced together on the apron roll of the billy by children, by rubbing the rolls together with their hands, and were carried forward on the billy, after being so spliced together, by the apron roll, which fed them through the jaws of the billy to the spindles. The product of the billy was called roving. This roving was then taken from the billy and set up on cops to the jenny, upon which it was spun into yarn.
As early as 1812, Goulding, born in 1793, the son of a machinist, and from early years familiar in his father's factory with machines and machinery, sought to improve this long train of engines, called in their whole series 'the carding machine.' He thought that he could so improve it as to produce yarn from wool in a cheaper manner, of better quality, and in greater quantity than was produced by the old process. Engaged at different times in Massachusetts, at Worcester, Halifax, and, lastly, at Dedham, where, in 1823, he fixed himself as both a machinist and a manufacturer of textile fabrics, he only sought, for some years, to improve the billy; but, as experiments were made by him, he aimed, finally, at dispensing with the billy entirely, and accomplishing with four machines that which had previously required the use of five. His purpose was also to dispense with short rolls entirely, and get the perpetual or endless roll, and carry it through its different stages, from the crude wool until it became finally converted into yarn.
The result of his experiments and trials, extending over a long term of time, and after the use by him of very many devices, was, as he alleged, successful. He dispensed with the billy entirely, and by processes testified to by many witnesses as invented by him, and by himself so sworn to be, obtained a continuous or perpetual roll as the product of each carding engine; accomplished a successful mixing of the wool-as well where the same color was used, as where different colors were used; dispensed with a large amount of manual labor, and secured a larger product at half the expense as compared with the old process, a better and more uniform roving, and a better and more uniform quality of yarn.
Such was his view and his case, as set forth in the bill.
But Goulding's claim to these high merits of invention were not conceded. There were witnesses also, chiefly one Cooper, of Concord, New Hampshire, who swore that he derived great aid from others. Specific conversations and admissions of Goulding, about the time of the alleged invention, were sworn to by Cooper. But his testimony was strongly impeached; and relationship, bad feeling, or interest were shown in others of the witnesses. As to Cooper himself, forty different persons swore that his general reputation for truth and veracity was bad. Very numerous ones, however, swore that they had not heard it called in question. This sort of testimony covered some hundred pages of the record.
Taken all together, this part of the case, on favorable assumption for the defendant, seemed somewhat thus: After Goulding came to Dedham, and had been experimenting there for a considerable time, one Edward Winslow, a blacksmith by trade, but if the testimony in his favor was to be believed, an ingenious man, came into his service. Winslow professed no skill out of his business, but made himself useful generally in whatever Goulding found it most convenient to set him to do; working generally in iron. He had no charge of Goulding's machine shop, but was not unfrequently in it. Goulding himself directed all that was done about machinery, whether as to making or as to altering it. In 1824, Winslow having been to a neighbor's factory, where certain devices, meant to produce long or endless rolls, and to serve as receptacles for the rovings, had been introduced on machinery for spinning yarn, Goulding, who had now nearly completed his improvement, and while he was diligently prosecuting his experiments, asked him what he thought of them. Winslow replied that the principle of them was good, but that the agencies employed were bad, and suggested certain substitutes (a spool and drum) for them. 'You don't know anything,' was Goulding's first reply. However, upon seeing an experiment, apparently at first successful, made at his own mill, on the basis of Winslow's idea, he exclaimed, 'Winslow, you have got it. I will give you $2500 and half of what we can make.' But the experiment broke down in the process of exhibiting it. Goulding then exclaiming, 'Your plan isn't worth a cent. I would not give a fig for it,' left the mill. Upon further conversation and consideration, Goulding saw merit in Winslow's suggestions, and having made them practicable by an addition of his own (the 'traverser,' whose effect was to wind the roving evenly on the spool), he adopted them (instead of cans, the far less convenient agency previously used) as two items of his far larger improvement. As it turned out in the result they proved useful.
It appeared, however, and was so assumed by this court, after a very minute statement  in the terms of art, of many details of the matter, that it was only as an auxiliary part of Goulding's invention that they were of value, and that they did not make either the entire invention or any one of its separate combinations.
Goulding went on continuously engaged in perfecting his improvement, till November, 1826, before the middle of which month he filed his application for letters patent, and on the 5th December he received them for the whole combined invention. None of the devices described in his specifications were new, and the claims were for combinations arranged in a manner set forth.
The patented improvement soon came into universal use, and worked a revolution, both here and in Europe, in the art of manufacturing fibrous yarns. It has not been improved, but remains now what it was when the patent was granted.
The patent granted, as above mentioned, expired December 5, 1849. Goulding desired to make application for its renewal, but through erroneous information given him by the Commissioner of Patents, he failed to apply for the extension until too late for the commissioner legally to entertain his application, and the patent expired accordingly as already stated. Congress finally, and after persistent efforts by Goulding, passed May 30, 1862, a special act, authorizing the commissioner to entertain his application for extension as though it had been made within the time prescribed by law. This special act contained a proviso,
'That the renewal and extension shall not have the effect, or be construed, to restrain persons who may be using the machinery invented by said Goulding at the time of the renewal and extension, thereby authorized for continuing the use of the same, nor subject them to any claim or damage for having so used the same.'
The patent was extended by the commissioner August 30, 1862. The patent having been reissued July 29, 1836, was again reissued in June, 1864, having before this last date become vested in Jordan, the complainant, to whom the reissue was made.
The proviso of the act authorizing a renewal and extension, was not recited in the reissued letters patent. But the certificate of renewal and extension was made subject, in express terms, to the proviso contained in the act. In this condition of things, the Agawam Woollen Company, using certain machinery alleged to be the same with that now patented to Jordan, he filed his bill against them, praying for injunction, account, and other relief. The bill put specific and categorical interrogatories in reference to the fact of infringement. The defendants did not answer the interrogatories as put. They only denied the use of any machinery 'in violation and infringement of any rights of the plaintiff, or that they are using, or have made, or sold, or used any machines not protected or covered by the proviso in the act of Congress;' and putting it to the court to say whether they should make further answer. The machinery which they did use, they began to use after the date of the extension (the company not being incorporated at that date), but before the surrender and reissue of June, 1864.
With this implied admission of infringement, the answer put the defence chiefly on four grounds:
First. 'This defendant denies that the said Goulding ever bestowed any ingenuity upon the invention or improvement mentioned in either of the letters patent aforesaid, and alleges that the improvements therein described, were invented and applied by one Edward Winslow, then of Dedham, from whom said Goulding first obtained knowledge of the same, and fraudulently and surreptitiously obtained a patent on the 15th day of December as aforesaid, for that which he well knew was the invention of said Winslow, at and before the application by him for a patent, as set forth in said bill.'
Second. That at the time of Goulding's application for a patent, the invention had been on sale, and in public use, with his consent and allowance, for a long time; and that he abandoned the same to the public. Sale and public use for more than two years, prior to the application for a patent, were not, however, alleged in the answer.
Third. That the certificate on the reissued letters patent of 1864, was not in conformity with the act of Congress, and did not contain the limitations or conditions as annexed to the patent, as extended; and, therefore, that the reissued patent was void.
Fourth. That the defendant's machinery, although built subsequently to the date of the extension, yet, having been in use before and at the time of the reissuing of that patent in 1864, was within the saving proviso of the act of Congress.
The court below decreed for the complainant, and the case was now here on appeal by the other side.
Mr. Robb, for the appellant-after remarking that nearly half a century had passed since the events which were the subject of investigation, occurred; that nearly all of those who had personal knowledge of them, had been dead many years; and that, in every patent case, the loss of testimony affected the defendant more seriously than it did the plaintiff, since the defendant has upon him the burden of overcoming the presumption which the plaintiff derives from his patent alone-commented on the facts, arguing that Winslow was the undoubted inventor of the spool and drum-most important features of the mechanism patented-and that in regard to these, Goulding had no merit.
The efforts at impeachment of Cooper were to be received (the learned counsel argued) with great distrust. It was easy to bring men, in almost any case, who would swear before a commissioner, and from the bias of revenge or interest, that they would not believe a particular witness, and so to make a record the vehicle of scandal, which would never have been spoken if the witnesses had been in the presence of the court, under the restraints of law, when they told their stories. In this case, of course, the testimony had been taken in this private manner. The learned counsel then contended:
1. That the invention had been in use for more than two years, and had been abandoned, as appeared, by the delays of Goulding in getting a patent; moreover, he had not an extension until twenty-two years after the expiration of the first patent.
2. That the proviso in the act of Congress was a limitation of the authority vested in the commissioner. The grant was to be limited 'so that it shall not be construed' to vest, &c. Now by law, as is well known, no extension of a patent shall be granted by the commissioner after the expiration of the term for which it was originally issued. Prim a facie, therefore, this patent is void, and it is only by invoking the statute that it can be saved. Now, this being a private statute, it should be incorporated with, and accompany the exercise of the authority claimed under and by virtue of it.
3. That by a true interpretation of the act, the defendant's machinery came within the proviso of the act of Congress.
Messrs. B. R. Curtis and Stoughton, contra.
The patent is prim a facie evidence that Goulding was the original and first inventor of the thing patented.
The answer charges a fraudulent and surreptitious appropriation, by Goulding, of Winslow's invention, and fraud is to be proved by the party alleging it.
To sustain this burden, it is not sufficient for the appellants to prove that Winslow, while a hired workman of Goulding, suggested mechanical means of carrying some part or parts of Goulding's plan into effect; he must prove that the entire plan of the invention, as described by Goulding in the original letters patent of December 15, 1826, was the sole invention of Winslow, for the answer does not set up a joint invention by Goulding and Winslow, but a several invention by Winslow, and a fraudulent and surreptitious appropriation of the entire invention by Goulding. 
But these principles of law need not be invoked. There is no sufficient evidence that Winslow invented anything. The attempt is to overturn a title of forty years' standing on evidence that would not be trustworthy, even if it related to recent occurrences. To recollect specific language after the lapse of forty years, is impossible. Conversations are the least trustworthy of all kinds of evidence, even when alleged to be recent; but here, where they are confessed to have occurred upwards of forty years ago, no reliance can be placed on them.  The facility with which conversations can be either invented or distorted, the necessity of knowing all that was said, the occurrences which gave rise to the conversations, and the circumstances under which the conversations occurred, the inability of human memory to retain the precise language that was used, the proverbial fact of the different versions which different witnesses give even of recent conversations, the radical change in meaning which even the slightest transposition of language will sometimes make, all concur in showing that evidence of them is the most unsatisfactory testimony upon which a court of justice can act.
Moreover, forty witnesses have sworn that Cooper's general reputation for truth is bad. Their testimony is affirmative, while all the counter testimony is negative. When we consider the facility with which bad men, with some good qualities, can really friends in support of their character, it is not surprising that many should have appeared to assist Cooper. In a place as large as Concord, there are undoubtedly men whose characters for veracity are bad, and yet many witnesses could be produced who never heard their characters spoken of in respect to veracity. The testimony here is simply negative, not showing-because some of the witnesses have not heard Cooper's character pronounced bad-that it is not bad, but only showing that they have not heard it stated to be so. It is impossible, we submit, for any man's character for truth and veracity to be otherwise than bad, when forty witnesses swear that it is bad, even if ten times that number should be produced to swear that they had never heard it questioned.
The remaining grounds of defence have no foundation in the facts of the case, nor in the law of patents by any possible view of it.
Mr. Justice CLIFFORD delivered the opinion of the court.
^1 See it, infra, pp. 598, 603.
^2 Pitts v. Hall, 2 Blatchford, 234; Alden v. Dewey, 1 Story, 338, 339; Dixon v. Moyer, 4 Washington, 71, 72; Teese v. Phelps, McAllister, 48; Story, J., in Washburn v. Gould, 3 Id. 133; Webster's Patent Cases, 132, note e; Allen v. Rawson, 1 Manning, Granger & Scott, 574-577; Eyre v. Potter, 15 Howard, 56.
^3 Badger v. Badger, 2 Wallace, 87; Pennock v. Dialogue, 4 Washington, 538; Alden v. Dewey, 1 Story, 339.