WISE V. ALLIS, 76 U. S. 737 (1869)

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U.S. Supreme Court

Wise v. Allis, 76 U.S. 9 Wall. 737 737 (1869)

Wise v. Allis

76 U.S. (9 Wall.) 737


1. In giving notice under the 15th section of the Patent Act of July 4th, 1836, of the names and places of residence of those by whom he intends to prove a previous use or knowledge of the thing, and where the same had been used, the party giving notice is not bound to be so specific as to relieve the other from all inquiry or effort to investigate the facts. If he fairly puts his adversary in the way that he may ascertain all that is necessary to his defense or answer, it is all that can be required, and he is not bound by his notice to impose an unnecessary and embarrassing restriction on his own right of producing proof of what he asserts.

2. Held therefore, in a suit for infringing a patent for balancing millstones, that when, in addition to the particular town or city in which such large objects as millstones are used, the name and residence of the witness by whom that use was to be proved was also given, there was sufficient precision and certainty in the notice.

The Patent Act of July 4, 1836, referring to suits for the infringement of patents, enacts by its 15th section that

"Whenever the defendant relies in his defense on the fact of a previous invention, knowledge, or use of the thing patented, he shall state in his notice of special matter the

Page 76 U. S. 738

names and places of residence of those whom he intends to prove to have possessed a prior knowledge of the thing, and where the same had been used."

This section being in force, Wise sued Allis in the court below for infringement of a patent for an improvement in balancing millstones. The defendant pleaded the general issue, and also gave notice that the invention claimed was well known and in general use before the patentee professed to have invented it, and he specified Utica, Rochester, Buffalo, Albany, New York City, and Brooklyn, in the State of New York, as the places where it had so been used, and gave the names of witnesses in each of those places by whom he expected to prove that fact, but he did not specify the mills in which the supposed prior use had been made.

On the trial, the judges of the circuit court differed in opinion as to whether the notice was sufficiently specific in its reference to the places where the prior use was had, and certified that difference to this Court in the shape of two questions, in substance, to-wit, this, whether the evidence of use, taken under that notice, was admissible. In form, the questions were:

1st. Is the defendant entitled, under his notice, to give evidence of the use of said invention or millstone balance by any person or persons prior to the alleged invention by the patentee thereof?

2d. Should evidence of such prior use of said invention or millstone balance be excluded on the ground that the notice aforesaid is defective and insufficient for the purpose of such evidence?

Page 76 U. S. 739

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