BISCHOFF V. WETHERED, 76 U. S. 812 (1869)

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U.S. Supreme Court

Bischoff v. Wethered, 76 U.S. 9 Wall. 812 812 (1869)

Bischoff v. Wethered

76 U.S. (9 Wall.) 812


1. A judgment recovered in the Common Pleas, at Westminster, England, against a person in the United States, without any service of process on him or any notice of the suit other than a personal one served on him in this country, has no validity here, even of a prima facie character.

2. On a suit at law involving a question of priority of invention where a patent under consideration is attempted to be invalidated by a prior patent, counsel cannot require the court to compare the two specifications and to instruct the jury, as matter of law, whether the inventions therein described are or are not identical. The rule on the subject stated.

Bischoff and others brought an action in the court below against Wethered to recover damages for breach of covenant in the assignment of one-fortieth part of an English patent granted to one Newton. The covenant was that the patent was in all respects valid and unimpeachable. The breach complained of was that it was null and void. The declaration contained certain other counts -- namely the ordinary money counts and a count on a judgment recovered in the Common Pleas, at Westminster Hall, in England. To the latter count the defendant pleaded nul tiel record. The only evidence adduced in its support was an exemplified copy of a judgment recovered against the defendant in the said Common Pleas without any service of process on him or any notice of the suit other than a personal notice served in the City of Baltimore, and as no evidence was adduced to sustain the common counts, the chief question in the case arose under the count on the alleged covenant, that the patent in question was valid and unimpeachable.

This patent was granted to Newton on the 25th of May, 1853, and was for certain improvements in the generation of steam, consisting of an accessory steam pipe carried from the boiler through the fire or chimney so as to cause the steam conveyed therein to become superheated, and from thence carried to the steam chest or to an intermediate pipe, there to connect with the ordinary steam pipe which conveys the steam from the boiler to the engine, so as to mix the superheated

Page 76 U. S. 813

steam with the ordinary steam as it comes from the boiler. The effect of this mixture is described to be that the superheated steam converts into steam all the remaining watery particles, froth and foam, contained in the ordinary steam, and thus dries and rarefies the whole mass and makes it more effective.

The plaintiff, having put in evidence the assignment containing the covenant declared on and the letters patent granted to Newton in order to show the breach of covenant, put in evidence a prior English patent, granted to one Poole in 1844, for an invention which the plaintiff claimed was identical with that patented to Newton. The plaintiff then called upon the court to compare the two specifications and to instruct the jury that the patent to Newton was not a valid and unimpeachable patent, inasmuch as the invention therein described was not novel, but was already substantially described in the specification of Poole, and that under the covenants contained in the assignment, the plaintiffs were entitled to recover �500, the amount of purchase money paid, with interest. This the court refused to do, and the plaintiffs excepted.

The defendant then prayed the court to instruct the jury, amongst other things, that there is not on the face of the respective patents of Newton and Poole such an identity as authorizes the court to pronounce that they are for one and the same invention, and that for that reason the patent granted to Newton is invalid; and such invalidity being necessary to support the plaintiffs' claim and being wanting, the verdict must be for the defendant. The court granted this prayer and instructed the jury accordingly, and a verdict was found for the defendant. The plaintiffs excepted to this instruction. The case being brought here, the questions were:

1st (one not pressed). What effect had the proceeding in the Common Pleas in England?

2d. The principal one(whether the court below was bound to compare the two specifications, and to instruct the jury as matter of law whether the inventions therein described were, or were not, identical.

Page 76 U. S. 814

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