WASHINGTON, Circuit Justice.
The patent being prima facie evidence, and no more, of the right of the patentee to the subject patented; the one in question is objected to upon the following grounds:
1. That the plaintiffs are not the true and original discoverers of the improvement mentioned in the patent, but that the same was in use prior to their supposed discovery. Evidence having been given that the improvement was in use prior to the-date of the patent, the plaintiffs insist that they made the discovery some time in the year 1811, and to establish that fact, they have given the following evidence: Three witnesses, Mr. Haines, Mr. Vaux, and Mr. Wainwright, have stated that the first specimen of rivet hose they ever saw or heard of, was shown to them by one of the plaintiffs, in the. year 1811; and Mr. Robins, another witness, who gives the same testimony, has further deposed, that he saw one of the plaintiffs engaged in making the first specimen he had ever seen or heard of; which was completed, and an experiment made of it, in the year 1811.
To the weight and effect of this evidence certain objections have been made by the defendant’s counsel, which it is proper we should notice.
[173]*173It is insisted, first, that the evidence proves no more than that one of the plaintiffs made .a specimen of hose in the year 1811, hut not that he was the author of the invention, and entitled to the merit of the discovery. The objection does not appear to the court to be well founded, because the fact of making or -exhibiting an article never before seen or heard of by the witnesses who prove the fact; is at least prima facie evidence of invention. until other evidence is given to prove that the same article was invented, known, or in use, at an antecedent period -of time, and that the patentee had only im-bodied the conceptions and the discovery of some other person. No evidence of this kind has been given, unless it may be considered •as being so by the witnesses whose testimony will be hereafter noticed.
2. It is next objected that the plaintiffs made no experiment of the piece of hose :made by them in 1811, but that it was first made by the Philadelphia Hose Company, with a specimen laid before them by the ■experimental committee. In answer to this •objection, it may, in the first place, be remarked. that Mr. Robins has stated that he ■ saw Mr. Pennock try the first specimen made by him; and it may be added, that it is in the highest degree improbable that an inventor should not anxiously seek an opportunity to test by experiment the success and practical utility of the article he has invented, before it is exhibited to the public. But be this as it may, it is clearly immaterial whether the experiment be made by himself, or by others; the only question being, is he the original inventor of an art not before known or used. The hose company •do not pretend that they were the inventors; ■ and consequently, the experiment, if first made by them, cannot detract from the merit of plaintiffs, if, in point of fact, they or either of them, was the original inventor.
3. It is insisted that the Philadelphia Hose Company, by their zeal, public spirit, and their money, caused the discovery to be made. This may be admitted; and further, that but for the laudable exertions of that body, the discovery might probably not have been made, either by the plaintiffs, or by any other person, to the present moment. But what has this to do with the question of original discovery? The conduct of the company may entitle them to every kind of merit except that of inventors, but cannot deprive the plaintiffs of that merit, if they were in fact the inventors. Lastly, it is insisted, that, the absence of any proof that the plaintiffs or either of them, at any time, to the company, or to their associate members of the experimental committee, or to any other person, claimed to be the inventors of this improvement, is sufficient to outweigh all the evidence of original invention which they have given. It must be admitted that, as an argument ripon the weight of evidence, this is fairly urged. It has before been observed, that the making, or exhibiting the first specimen of hose ever seen or heard of by the witnesses of that fact, is prima facie evidence of the plaintiffs’ invention. It is fair then to oppose to that evidence, the total silence of the plaintiffs, or of Mr. Pennock, as to their or his claim of original invention, and to urge the probability, from that circumstance, that they did no more than give form and substance to the invention of some other person. But whether the circumstance is sufficient to outweigh the evidence to which it is opposed, is for the jury to decide.
The defendant has given evidence for the purpose of showing that the improvement in question was invented and in use long before the year 1811; and to enable you to understand and apply this evidence it will be necessary for you constantly to keep in mind what the improvement is which is patented, the mode of constructing it, and the use and design of it. It is for an improvement in making leather hose or tubes for conveying water and other fluids; and they are con-strueted^ by lapping their edges over, and fastening them by metallic rivets and burs, so as to be rendered water proof, and capable of resisting a heavy pressure of that fluid. Now, it is for the jury to say wheth-ed the harness, the parts of which were fastened by metallic rivets, or the Indian scabbard, which was intended as a covering for a knife, not lapped, but their edges united by lead rivets, is in form, structure, or principle, the same thing as the hose for which this patent was granted? It is true, that, in the construction of those articles, leather, and metallic rivets were employed; but it is clear law, that if old materials, and old principles ' in mechanics, or otherwise, are used in a state of combination, so as to produce a new result, the inventor of the article so produced is entitled to apply for, and may obtain a valid patent. The hose invented by Mr. Bedford more nearly resembles that which the plaintiffs have patented. It was made of leather, the edges of which were lapped and fastened by nails, having their heads on the inside, and their points clinched on the outside; and its use was, to convey water. Now you have to decide upon the evidence, first, whether a. hose made with clinched nails, and one made with rivets and burs, are, in principle, the same; — to prove, and to controvert which fact, specimens of each have been exhibited, and some witnesses examined; and secondly, whether there is any proof that the hose invented by Mr. Bedford was ever in use? If they are the same in principle, but Bedford’s was never in use before the plaintiff’s invention, then it. cannot impeach the validity of their patent. If it was the same in principle, and had been so used, the plaintiffs cannot recover in this action.
The last invention relied upon by the defendant’s counsel is that of John Anderson. [174]*174He swears that in 1799, he made six or seven pieces of hose on board the Samuel Smith, for conveying water from her deck, and fastened them to her scuppers — that he made them with scupper leather, and fastened them with iron rivets and burs. That, in the year 1S02, he made a small fire engine for Hr. M’Callister, with whom he lived, for the pui'pose of washing his windows; and as a substitute for a goose neck, he made a piece of hose about eighteen inches long, and fastened the edges with metallic rivets and burs; that it was in common use whilst he lived with that gentleman by his family and by his neighbour.
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WASHINGTON, Circuit Justice.
The patent being prima facie evidence, and no more, of the right of the patentee to the subject patented; the one in question is objected to upon the following grounds:
1. That the plaintiffs are not the true and original discoverers of the improvement mentioned in the patent, but that the same was in use prior to their supposed discovery. Evidence having been given that the improvement was in use prior to the-date of the patent, the plaintiffs insist that they made the discovery some time in the year 1811, and to establish that fact, they have given the following evidence: Three witnesses, Mr. Haines, Mr. Vaux, and Mr. Wainwright, have stated that the first specimen of rivet hose they ever saw or heard of, was shown to them by one of the plaintiffs, in the. year 1811; and Mr. Robins, another witness, who gives the same testimony, has further deposed, that he saw one of the plaintiffs engaged in making the first specimen he had ever seen or heard of; which was completed, and an experiment made of it, in the year 1811.
To the weight and effect of this evidence certain objections have been made by the defendant’s counsel, which it is proper we should notice.
[173]*173It is insisted, first, that the evidence proves no more than that one of the plaintiffs made .a specimen of hose in the year 1811, hut not that he was the author of the invention, and entitled to the merit of the discovery. The objection does not appear to the court to be well founded, because the fact of making or -exhibiting an article never before seen or heard of by the witnesses who prove the fact; is at least prima facie evidence of invention. until other evidence is given to prove that the same article was invented, known, or in use, at an antecedent period -of time, and that the patentee had only im-bodied the conceptions and the discovery of some other person. No evidence of this kind has been given, unless it may be considered •as being so by the witnesses whose testimony will be hereafter noticed.
2. It is next objected that the plaintiffs made no experiment of the piece of hose :made by them in 1811, but that it was first made by the Philadelphia Hose Company, with a specimen laid before them by the ■experimental committee. In answer to this •objection, it may, in the first place, be remarked. that Mr. Robins has stated that he ■ saw Mr. Pennock try the first specimen made by him; and it may be added, that it is in the highest degree improbable that an inventor should not anxiously seek an opportunity to test by experiment the success and practical utility of the article he has invented, before it is exhibited to the public. But be this as it may, it is clearly immaterial whether the experiment be made by himself, or by others; the only question being, is he the original inventor of an art not before known or used. The hose company •do not pretend that they were the inventors; ■ and consequently, the experiment, if first made by them, cannot detract from the merit of plaintiffs, if, in point of fact, they or either of them, was the original inventor.
3. It is insisted that the Philadelphia Hose Company, by their zeal, public spirit, and their money, caused the discovery to be made. This may be admitted; and further, that but for the laudable exertions of that body, the discovery might probably not have been made, either by the plaintiffs, or by any other person, to the present moment. But what has this to do with the question of original discovery? The conduct of the company may entitle them to every kind of merit except that of inventors, but cannot deprive the plaintiffs of that merit, if they were in fact the inventors. Lastly, it is insisted, that, the absence of any proof that the plaintiffs or either of them, at any time, to the company, or to their associate members of the experimental committee, or to any other person, claimed to be the inventors of this improvement, is sufficient to outweigh all the evidence of original invention which they have given. It must be admitted that, as an argument ripon the weight of evidence, this is fairly urged. It has before been observed, that the making, or exhibiting the first specimen of hose ever seen or heard of by the witnesses of that fact, is prima facie evidence of the plaintiffs’ invention. It is fair then to oppose to that evidence, the total silence of the plaintiffs, or of Mr. Pennock, as to their or his claim of original invention, and to urge the probability, from that circumstance, that they did no more than give form and substance to the invention of some other person. But whether the circumstance is sufficient to outweigh the evidence to which it is opposed, is for the jury to decide.
The defendant has given evidence for the purpose of showing that the improvement in question was invented and in use long before the year 1811; and to enable you to understand and apply this evidence it will be necessary for you constantly to keep in mind what the improvement is which is patented, the mode of constructing it, and the use and design of it. It is for an improvement in making leather hose or tubes for conveying water and other fluids; and they are con-strueted^ by lapping their edges over, and fastening them by metallic rivets and burs, so as to be rendered water proof, and capable of resisting a heavy pressure of that fluid. Now, it is for the jury to say wheth-ed the harness, the parts of which were fastened by metallic rivets, or the Indian scabbard, which was intended as a covering for a knife, not lapped, but their edges united by lead rivets, is in form, structure, or principle, the same thing as the hose for which this patent was granted? It is true, that, in the construction of those articles, leather, and metallic rivets were employed; but it is clear law, that if old materials, and old principles ' in mechanics, or otherwise, are used in a state of combination, so as to produce a new result, the inventor of the article so produced is entitled to apply for, and may obtain a valid patent. The hose invented by Mr. Bedford more nearly resembles that which the plaintiffs have patented. It was made of leather, the edges of which were lapped and fastened by nails, having their heads on the inside, and their points clinched on the outside; and its use was, to convey water. Now you have to decide upon the evidence, first, whether a. hose made with clinched nails, and one made with rivets and burs, are, in principle, the same; — to prove, and to controvert which fact, specimens of each have been exhibited, and some witnesses examined; and secondly, whether there is any proof that the hose invented by Mr. Bedford was ever in use? If they are the same in principle, but Bedford’s was never in use before the plaintiff’s invention, then it. cannot impeach the validity of their patent. If it was the same in principle, and had been so used, the plaintiffs cannot recover in this action.
The last invention relied upon by the defendant’s counsel is that of John Anderson. [174]*174He swears that in 1799, he made six or seven pieces of hose on board the Samuel Smith, for conveying water from her deck, and fastened them to her scuppers — that he made them with scupper leather, and fastened them with iron rivets and burs. That, in the year 1S02, he made a small fire engine for Hr. M’Callister, with whom he lived, for the pui'pose of washing his windows; and as a substitute for a goose neck, he made a piece of hose about eighteen inches long, and fastened the edges with metallic rivets and burs; that it was in common use whilst he lived with that gentleman by his family and by his neighbour. The seams he states were water tight, but he does not state in his deposition, whether the edges were lapped over, or merely united. One of the witnesses, who was examined, stated, that the pressure of the water on the inner lap gave to it the character and utility of a valve; and it is for you therefore to say, whether the hose described by Anderson, and that patented, are the same in principle. To contradict this witness in part, six of the crew of the Samuel Smith, in 1799, have been examined, who state, that they never saw the hose spoken of by this witness — that if it had been made and fixed to the scuppers, it could not have escaped their observation; and finally, that hose would not have answered the purpose of scuppers. The character of this witness for veracity, has also been attacked and defended. As to all this, the jury must decide for themselves.
NOTE. The following points of evidence were ruled in this case: (1) That the minutes of the Philadelphia Hose Company, of which the plaintiffs were members, as they also were of the committee appointed to make inquiries respecting the best method of constructing hose, might be read by the defendant’s counsel to prove that the plaintiffs were not the original inventors of the rivet hose, but that they were in use before their alleged invention in 1811: but not to prove that the plaintiffs had surreptitiously obtained a patent for the invention of another person, that forming no part of the notice to the plaintiffs. (2) That the minutes being read for those purposes, the plaintiffs cannot read other entries made in the minute book, to show that the company, at a subsequent period, acknowledged the plaintiffs to be the original inventors of those hose; the defendant not being a member of that company. The written declarations of the company were good against the plaintiffs, but not for them, unless they should be necessary to explain such parts of the transactions and declarations as shall have been read. If part of a statement be read by one side, the other side may insist upon having the whole read. But a subsequent declaration or statement made by the company, does not come within this exception. Neither can the plaintiffs read other parts of the minutes in order to show that that company were not the inventors, or that the invention was not made at their expense; the defendant’s counsel having disavowed any intention to claim for the company the merit of the invention; and the latter subject being totally irrelevant to the cause, and we shall so instruct the jury. (31 A report of this company, in whic-h the rivet hose is described, cannot be road to bring it within the sixth section of the patent law; because first, the hook containing the minutes, is a private and not a public work; and if it were, then secondly, no notice of such a defence has been given to the plaintiffs. (4) The minutes of other hose companies, of which the plaintiffs were not members, cannot be read by the defendant against them for any purpose.
[174]*1742. The next objection made to this patent is, that it is broader than the discovery, it being proved that the double row of rivets was adopted upon the suggestion of another person. If this be a valid objection, very few patents could be supported; as, in most, cases, it might probably be shown, that, whilst the thing patented was constructing, or before it was brought to perfection, many improvements in the form or proportions were adopted in consequence of the suggestions of the mechanic employed to make the specimen, or of others. But these are not inventions or improvements for which a patent could be obtained, nor can they invalidate the patent for the thing to which they were applied.
3. The next objection is, that the hose, having been known and used prior to the application of the plaintiffs for a patent, the patent is void by the terms of the first section of the patent law. Upon this point, which certainly involves much difficulty, we think it unnecessary to give a decision: because we are clearly of opinion, that, if an inventor makes his discovery public, looks on. and permits others freely to use it, without objection, or assertion of claim to the invention, of which the public might take notice, he abandons the inchoate right to the exclusive use of the invention to which a patent would have entitled him, had it been applied for before such use; and we think it makes no difference in the principle, that the article so publicly used, and afterwards patented, was made by a particular individual, who did so by the private permission of the inventor. As long as an inventor keeps to himself the subject of his discovery, the public cannot be injured; and even if it be made public, but accompanied by an assertion of the inventor’s claim to the discovery, those who should make, or use the subject of the invention, would at least be put upon their guard. But if the public, with the knowledge, and the tacit consent of the inventor, is permitted to use the invention, without opposition, it is a fraud upon that public afterwards to take out a patent. It is possible that the inventor may not have intended to give the benefit of his discovery to the public; and may have supposed that, by giving permission to a particular individual to construct for others the thing patented, he could not be presumed to have done so. But it is not a question of intention which is involved in the principle which we have laid down, but of legal inference, resulting from the conduct of the inventor, and affecting the interests of the public. It is for the jury to say whether the evidence brought this case within the principle which has been stated. If it does, the court is of opinion that the plaintiffs are not entitled to a verdict
Verdict for defendant
Affirmed by the supreme court upon a writ of error at the January term, 1829. 2 Pet [27 U. S.] 1.