BROOKS V. FISKE, 56 U. S. 212 (1853)

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U.S. Supreme Court

Brooks v. Fiske, 56 U.S. 15 How. 212 212 (1853)

Brooks v. Fiske

56 U.S. (15 How.) 212


A machine for planing boards and reducing them to an equal thickness throughout, which was patented by Norcross, decided not to be an infringement of Woodworth's planing machine, for which a patent was obtained in 1828, reissued in 1845.

The operation of both machines explained.

The appellants were the owners of the Woodworth patent for a planing machine, the documents respecting which are set forth in extenso in the report of the case of Wilson v. Rousseau, 4 How. 646. They filed a bill against the appellees for an injunction to restrain them from using a certain planing machine, known as the Norcross machine, upon the ground that it was an infringement of their letters patent. Other matters were brought into the bill, which it is not material here to state.

In their answer, the appellees say, that they have jointly, under the firm of Fiske & Norcross, and not otherwise, used one planing machine and no more, since December 25, 1849, at their mill in said Lowell and nowhere else; but they believe, and therefore aver, that said machine is not the same in principle and mode of operation as the said Woodworth machine, but is substantially different therefrom, and contains none of the combinations claimed in the said Woodworth patent, but is a new and different invention, secured to said Norcross by letters patent, duly granted and issued to him by the United States of America, on the twelfth day of February, in the year one thousand eight hundred and fifty; to which, or a duly certified copy thereof, they refer as an exhibit, with this their answer, for the purpose of showing the substantial difference between said machines.

The answers then admit the filing of the bill of complaint charged in this bill to have been filed against them in 1844, and the making of the agreement recited in this bill; but they say that the machine referred to in that agreement, and which they were then using, was constructed according to a patent granted to one Hutchinson, on 16 July, 1839, but they admit that

Page 56 U. S. 213

it embraced the first combination claimed in the Woodworth amended patent. The answers further contain the following averments:

"And these defendants, further answering, say that they believe, and therefore aver, that the said Woodworth patent is void in part, for want of novelty in the first claim therein, to-wit, for the employment of rotating planes in combination with rollers or any analogous device to keep the board in place, the same thing substantially having been before patented in France, to-wit, in 1817 and 1818, by Sir Louis Victor, Joseph Mari Roguin, and in 1825 by Sir Leonore Thomas de Manneville, and described in the printed publication commonly called Brevets d'Inventions, vol. 23, pages 207 to 212, plates 27 and 28, and vol. 41, pages 111 to 116, plate 12, and these defendants refer also to the Hill machine, mentioned in the said patent of Norcross, as publicly used by Joseph Hill of Lynn, prior to the pretended invention of the said combination by the said William Woodworth, deceased."

"And these defendants further say, that they believe, and therefore aver, that the said patent issued to William W. Woodworth, July 8, 1845, is not for the same invention as the original patent issued to William Woodworth, December 27, 1828, exclusive of the part disclaimed January 2, 1843, as alleged in the plaintiffs' bill."

"And these defendants, further answering, say that they are informed by numerous and able experts, and they verily believe, and therefore aver, that the machine used by them and patented by said, Norcross, as aforesaid, is not an infringement of the said Woodworth patent, nor of any rights of the plaintiffs under the same; and they pray that the question of infringement may be tried by a jury under the direction of the court."

To this answer a general replication was filed.

Much evidence was taken, and in March, 1852, the cause came on to be heard upon the bill annexed, general replication, and the proofs taken therein, before the judge of the district court, MR. JUSTICE CURTIS having been of counsel in the case. The court adjudged that the machine made and used by the defendants, and complained of in the said bill, is not an infringement of the right secured to the complainants under and by virtue of the letters patent reissued and granted to William W. Woodworth, administrator, on the eighth day of July, in the year one thousand eight hundred and forty-five, referred to in the said bill, and under and by virtue of the several mesne conveyances recited in the said bill, and thereupon the court doth order, adjudge, and decree, that the complainants' said bill be, and the same hereby is, dismissed with costs.

Page 56 U. S. 214

The complainants appealed to this Court.

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