APPEAL FROM THE CIRCUIT COURT OF THE UNITED STATES FOR THE DISTRICT OF NEW JERSEY.
MR. JUSTICE BRADLEY delivered the opinion of the court.
This is a suit brought by the appellees against the appellants on a patent issued to Hezekiah Conant for an improvement in machines for winding thread on spools. The patent was issued December 13, 1859, but antedated 22d June, 1859, and at its expiration was renewed for seven years from 22d June, 1873, finally expiring in 1880. Its number was 26,415. The bill was filed in February, 1872, charging the defendants with infringement, and praying for injunction, damages, etc. The defendants promptly answered, and the cause lay until February, 1874, when the complainants filed a supplemental bill setting up the extension of the patent, and repeating the charge of infringement. The defendants answered, and the parties went into proofs. In May, 1879, the Circuit Court, held by District Judge Nixon, rendered a decree in favor of the validity of the patent, adjudged that the defendants had infringed the first and third claims thereof, granted an injunction, and ordered a reference to a master to take an account of profits and damages against the defendants. 4 Bann. & Ard. 133. After a long contest in the master's office, a report was filed in October, 1884, awarding damages to the complainants in the sum of $159,035.22. The defendants filed exceptions, which were overruled by the court, and a final decree for the amount awarded was entered on the 17th of June, 1886. The present appeal was taken from that decree.
One of the principal points of controversy on which the case turns was indicated by the complainants themselves in their original bill. They say:
"And your orators further represent that the said defendants sometimes pretend that they have a right to make use of their said machines for winding thread on spools and to make sale of like machines to others to be used, because they say that such machines are described in letters patent of Great Britain granted to William Weild on the 22d day of January, A.D. 1858, upon a specification filed July 22, 1858, and that the same invention was subsequently patented to the said Weild in the United States on the 2d of January, A.D. 1866;
and they further pretend that said British letters patent anticipate the invention of said Conant. But your orators aver the fact to be that the application of said Conant for letters patent for his invention was made and filed in the Patent Office prior to the date of the sealing of said British letters patent to said Weild, and that the invention of said Conant, for which letters patent were granted to him as aforesaid, was made before the publication or date of sealing of said British letters patent of said Weild."
The allegation that Conant's application for his patent was made and filed in the Patent Office prior to the date of the sealing of Weild's British patent is not correct. It is not proved, and the contrary appears to be the truth. Conant's application was first filed on the 5th or 6th of January, 1859, and was afterwards withdrawn and renewed on the last of April or first of May in the same year. The specification annexed to the patent is dated the 11th of April, 1859; and the drawings are marked as received in the office and filed January 6, 1858, [an evident mistake for 1859,] and received and filed in new application May 2, 1859. There is a certified copy of the file wrapper and contents in the record which shows that the original application was filed in the office January 5, 1859, and was withdrawn and a new application filed April 30, 1859, the papers being received in the examiner's office a day or two later in each case. But as this copy of the file wrapper and contents was only introduced on an unsuccessful motion for a rehearing, and not in the principal case, it may not be proper to rely upon it in a matter affecting the merits.There is other evidence, however, sufficient to verify the same facts.
The allegation that the invention of Conant, for which his said letters patent were granted, was made before the publication or sealing of Weild's patent requires more careful consideration.
The defendants, in their answer, denied that they had infringed Conant's patent, and denied that he was the first inventor of what is claimed to be patented thereby, and averred "that on the contrary, the same, under the broad
construction thereof claimed for it by complainants, was, prior to any invention thereof by said Conant, described in and patented by letters patent granted by the government of Great Britain to Archibald Thomson, which were dated the 10th day of November, 1801, and numbered 25,053; also described in and patented by letters patent granted by the government of Great Britain to Wm. Young, which were dated the 2d day of December, 1848, and numbered 12,353; also described in and patented by letters patent granted by the government of Great Britain to Thomas Willis, which were dated the 1st day of June, 1852, and numbered 14,151; also described in and patented by letters patent granted by the government of Great Britain to John Wibberly, which were dated the 4th day of December, 1853, and numbered 2901."
As to the Weild patent, referred to in the bill of complaint, the defendants answered as follows:
"And these defendants, further answering, say that letters patent of the United States for an invention in machines for winding thread upon spools were granted to William Weild, dated the 2d day of January, 1866, and that the only machine which these defendants have used for winding thread on spools, and those which they now have in use for that purpose, were purchased by them from said Weild under said patent, and were made in conformity therewith, and that they paid said Weild royalty for the use of the same.
"And these defendants, further answering on information and belief, say that said letters patent for said last-named invention were granted by the government of Great Britain to said Weild, dated January 22, 1858, and sealed April 30, 1858.
"And these defendants, further answering, say that they do not know and are not informed, save by said bill of complaint, when said Conant made his application for the letters patent upon which this suit is brought, or whether or not the same or the invention of said Conant was made prior to the sealing of the English patent to Weild, and leave the complainants to make such proof thereof as they may be advised is material.
"And these defendants, further answering on ...