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COFFIN V. OGDEN, 85 U. S. 120 (1873)

U.S. Supreme Court

Coffin v. Ogden, 85 U.S. 18 Wall. 120 120 (1873)

Coffin v. Ogden

85 U.S. (18 Wall.) 120




1. When, in a patent case, a person claims as an original inventor and the defense is a prior invention by the defendant, if the defendant prove that the instrument which he alleges was invented by him was complete and capable of working, that it was known to at least five persons and probably to many others, that it was put in use, tested, and successful, he brings the case within the established severe tests required by law to sustain the defense set up.

2. Barthol Erbe anticipated William S. Kirkham in the invention of door locks with reversible latches.


The case was one chiefly of fact, involving the question of priority of invention. The court below was of the opinion that the complainant, or rather the person under assignment of whose patent he claimed and was working, had been anticipated in his invention, and dismissed the bill. From that decree the defendants took this appeal.

MR. JUSTICE SWAYNE stated the case, recited the evidence, and delivered the opinion of the Court.


Page 85 U. S. 121



It is equally clear that Erbe made his invention not later than January 1, 1861. This was not controverted by the counsel for the appellant, but it was insisted that the facts touching that invention were not such as to make it available to the appellees, as against the later invention of Kirkham and the patent founded upon it. This renders it necessary to examine carefully the testimony upon the subject.


Page 85 U. S. 122


Brossi. In 1860, he was engaged in lockmaking for the Jones and Nimmick Manufacturing Company. He had known Erbe about seventeen years. In 1860, Erbe was foreman in the lock shop of Jones, Wallingford & Co., at Pittsburg. In that year, and before the 1st of January, 1861, he went to Erbe's house. Erbe there showed him a lock, and how it worked, so that it could be used right or left. He says:

"He (Erbe) showed me the follower made in two pieces. One piece you take out when you take the knob away. The other part -- the main part of the follower -- slides forward in the case of the lock with the latch, so you can take the square part of the latch and turn it around left or right, whichever way a person wants to."

He had then been a lockmaker eight years. He examined the lock carefully. He had never seen a reversible lock before. He has examined the exhibit lock. It is the same in construction. The only difference is that the original lock was made of rough wrought iron. It was a complete lock, and capable of working. Erbe thought it a great thing. Erbe showed him the lock twice afterwards at Jones, Wallingford & Co.'s. He saw such a lock attached to the office door there and working, but doesn't know whether it was the first lock made or one made afterwards.

Masta. In 1860, he was a pattern maker for Jones, Wallingford & Co. Had known Erbe fourteen or fifteen years. Erbe showed him his improvement in reversible locks New Year's day, 1861. He examined the lock with the case open.

"You had to pull out the spindle, and the hub was fitted so that it would slide between the spindle and the plate and let the latch forward. . . . The whole hub was made of three pieces. One part was solid to the spindle or hub shanks, and then the hub that slides between the plate and case, and a washer at the other side of the spindle. . . . There is not a particle of difference between the exhibit and the original lock. It is all the same."


Page 85 U. S. 123


Patterson. Until recently, he was a manufacturer of locks and other small hardware. In the year 1860, he was the superintendent of the lock factory of Jones, Wallingford & Co., and their successors in Pittsburg. He had known Erbe since 1856. About the 1st of January, 1861, Erbe showed him an improved reversible lock of his invention like the exhibit lock. The improvement

"consisted in constructing the hub or follower, so that when the spindle was withdrawn, the hub would slide forward between the cases so that the head of the latch would protrude beyond the face of the lock, so as to permit its reversal from right to left; the latch head being connected with the yoke by a swivel joint, so that it might be reversed. . . . It was our uniform practice to put our new locks on the doors about the office to test them, and I believe that one was put on; but at this distance of time, I cannot say positively that it was."

There is no proof that Erbe made any locks according to his invention here in question but those mentioned in his testimony. He applied for a patent in 1864, and failed to get it. Why is not disclosed in the record.


Page 85 U. S. 124


The case arose while the Patent Act of 1836 was in force, and must be decided under its provisions. The sixth section of that act requires that to entitle the applicant to a patent, his invention or discovery must be one "not known or used by others before his invention or discovery thereof." The fifteenth section allowed a party sued for infringement to prove, among other defenses, that the patentee "was not the original and first inventor of the thing patented, or of a substantial and material part thereof claimed to be new."

The whole act is to be taken together and construed in the light of the context. The meaning of these sections must be sought in the import of their language, and in the object and policy of the legislature in enacting them. [Footnote 1] The invention or discovery relied upon as a defense, must have been complete, and capable of producing the result sought to be accomplished, and this must be shown by the defendant. The burden of proof rests upon him, and every reasonable doubt should be resolved against him. If the thing were embryotic or inchoate; if it rested in speculation or experiment; if the process pursued for its development had failed to reach the point of consummation, it cannot avail to defeat a patent founded upon a discovery or invention which was completed, while in the other case there was only progress, however near that progress may have approximated to the end in view. The law requires not conjecture, but certainty. If the question relate to a machine, the conception must have been clothed in substantial forms which demonstrate at once its practical efficacy and utility. [Footnote 2] The prior knowledge and use by a single person is sufficient.

Page 85 U. S. 125

The number is immaterial. [Footnote 3] Until his work is done, the inventor has given nothing to the public. In Gayler v. Wilder, the views of this Court upon the subject were thus expressed:

"We do not understand the circuit court to have said that the omission of Conner to try his safe by the proper tests would deprive it of its priority, nor his omission to bring in into public use. He might have omitted both, and also abandoned its use and been ignorant of the extent of its value; yet if it was the same with Fitzgerald's, the latter would not, upon such grounds, be entitled to a patent, provided Conner's safe and its mode of construction were still in the memory of Conner before they were recalled by Fitzgerald's patent."

Whether the proposition expressed by the proviso in the last sentence is a sound one it is not necessary in this case to consider.

Here it is abundantly proved that the lock originally made by Erbe "was complete and capable of working." The priority of Erbe's invention is clearly shown. It was known at the time to at least five persons, including Jones, and probably to many others in the shop where Erbe worked, and the lock was put in use, being applied to a door, as proved by Brossi. It was thus tested and shown to be successful. These facts bring the case made by the appellees within the severest legal tests which can be applied to them. The defense relied upon is fully made out.

Decree affirmed.

[Footnote 1]

Gayler v. Wilder, 10 How. 496.

[Footnote 2]

Reid v. Cutter, 1 Story 590.

[Footnote 3]

Bedford v. Hunt, 1 Mason 302.

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