Supplemental Material Concerning James v. Campbell

Has the Supreme Court Held that Patents Are Property?




Consolidated Fruit-Jar Co v. Wright
(The “Mason Jar Case”)
United States Supreme Court
94 U.S. 92 (1876)

Mr. Justice Swayne

The appellants sued to enjoin the appellee from infringing a patent to John L. Mason for an improvement in fruit jars. The invention was completed in 1859. The application for the patent was made in 1868. The intervening period was between eight and nine years. There is no conflict in the testimony. No sufficient reason is disclosed in the record why the application for the patent was not made earlier.

In the mean time, large interests had grown up in the way of the manufacture and sale of jars substantially the same as Mason's, and of others more or less like it. He was stimulated to make his application by seeing such jars in the market. Large amounts of money must then have been invested in the business of making and selling such jars by various persons. It is sufficient to mention the case of Rowley, who is defending this suit in the name of the appellee. Prior to 1868 he had sold 36,000 jars. Thus, before Mason applied for his patent, and as early as 1866, the public was in possession of the invention in question from sources entirely independent of Mason.

It is enough to say, without recapitulating the facts, that in our judgment the defense of abandonment to the public is also clearly made out. He who is silent when he should speak must be silent when he would speak, if he cannot do so without a violation of law and injustice to others. The supineness of the patentee is unexplained and inexcusable. A principle akin to the doctrine of equitable estoppel applies.

Inventors are a meritorious class. They are public benefactors. They add to the wealth and comfort of the community, and promote the progress of civilization. A patent for an invention is as much property as a patent for land. The right rests on the same foundation, and is surrounded and protected by the same sanctions. There is a like larger domain held in ownership by the public. Neither an individual nor the public can trench upon or appropriate what belongs to the other. The inventor must comply with the conditions prescribed by law. If he fails to do this he acquires no title, and his invention or discovery, no matter what it may be, is lost to him, and is henceforward no more his than if he had never been in any wise connected with it. It is made, thereupon, as it were by accretion, irrevocably a part of the domain which belongs to the community at large. The invention here in question is within this category.

Hollister v. Benedict & Burnham Mfg. Co.
United States Supreme Court
113 U.S. 59 (1885)

Matthews, J.

This is a bill in equity to enjoin the alleged infringement of letters patent No. 93,391, issued to Edward A. Locke for certain improvements in identifying revenue marks or labels, dated August 3, 1869, the appellees being assignees of the patentee, and the appellant, the collector of internal revenue for the district of Connecticut.

One of the defenses relied on by the appellant is thus stated in the answer, and is by stipulation admitted to be true:

That any and all acts complained of in said bill by the said petitioner, as done by the respondent, were done and performed by him in the discharge of his duties as Collector of Internal Revenue for the United States for a designated collection district of the State of Connecticut, and by direction of the Commissioner of Internal Revenue, an officer of the Treasury Department of the United States; that any revenue stamps by him used have been furnished by the Bureau of Internal Revenue, for use in the discharge of said duties as collector, and the same have been used solely as a means of collecting the taxes due to the United States, which said taxes have been imposed by the laws of the United States, and the manner of said collection, as followed by said collector, regulated and authorized by such laws.

It was authoritatively declared in James v. Campbell, 104 U. S. 356, that the right of the patentee, under letters patent for an invention granted by the United States, was exclusive of the government of the United States as well as of all others, and stood on the footing of all other property, the right to which was secured, as against the government, by the constitutional guaranty which prohibits the taking of private property for public use without compensation; but doubts were expressed whether a suit could be sustained, such as the present, against public officers, or whether a suit upon an implied promise of indemnity might not be prosecuted against the United States by name in the Court of Claims. If the right of the patentee was acknowledged, and without his consent an officer of the government, acting under legislative authority, made use of the invention in the discharge of his official duties, it would seem to be a clear case of the exercise of the right of eminent domain, upon which the law would imply a promise of compensation, an action on which would lie within the jurisdiction of the Court of Claims. And it may be that, even if the exclusive right of the patentee were contested, such an action might be brought in that court involving all questions relating to the validity of the patent; but as we have concluded to dispose of the present appeal upon other grounds, it becomes unnecessary to decide the question arising upon this defense. It is referred to only for the purpose of excluding any that might be drawn from our passing it over without notice.

The counsel for the appellee describes the Locke stamp as a combination of three parts:

In this combination it will not be questioned that the first and second elements were well known, and that the third, so far as its contents are identical with those on the stub, is not new. The question turns on that feature of the third element where, by a removable part of the stamp proper, the contents of which indentify the stamp with the stub after the stamp has been attached, can be so removed as to retain its own integrity, but mutilates and thereby cancels the stamp by its removal. This is what we ascertain to be the precise idea embodied in the invention described and claimed in the patent, and which, although we find to be new in the sense that it had not been anticipated by any previous invention, of which it could therefore be declared to be an infringement, yet is not such an improvement as is entitled to be regarded in the sense of the patent laws as an invention.

No change, it will be observed, was made in the character of the stamp, so far as the relation between the stamp proper and the stub is concerned, nor in the identifying marks which constituted the written and printed matter upon both; and the expedient of using a paper backing which prevented the adhesion to the package of the part intended to be detached and removed, it is manifest would be adopted by any skilled person having that end in view. The idea of detaching that portion of the stamp, with the double effect of destroying the stamp by mutilation and preserving the evidence of the identity of the package on which it had been first placed in use, which is all that remains to constitute the invention, seems to us not to spring from that intuitive faculty of the mind put forth in the search for new results or new methods, creating what had not before existed, or bringing to light what lay hidden from vision; but, on the other hand, to be the suggestion of that common experience which arose spontaneously, and by a necessity of human reasoning, in the minds of those who had become acquainted with the circumstances with which they had to deal.

Cutting out a portion of the stamp, as a means of defacing and mutilating it so as to prevent a second use, was matter of common knowledge and practice before the date of this patent; and cutting out a particular portion on which the identifying marks had been previously written or printed was simply cutting a stub from the stamp instead of cutting the stamp from the stub, as before. So that when the frequency and magnitude of the frauds upon the revenue, committed by the removal of tax-paid stamps from packages on which they had been originally placed by the officer to others surreptitiously substituted for them, or by emptying the packages of their original contents and fraudulently refilling them with spirits on which no tax had been paid, attracted the general attention of the revenue department, the answer to the problem of prevention was found by immediate inference from the existing regulations, in the adoption of the expedient now in question. As soon as the mischief became apparent, and the remedy was seriously and systematically studied by those competent to deal with the subject, the present regulation was promptly suggested and adopted; just as a skilled mechanic, witnessing the performance of a machine, inadequate by reason of some defect, to accomplish the object for which it had been designed, by the application of his common knowledge and experience perceives the reason of the failure and supplies what is obviously wanting. It is but the display of the expected skill of the calling, and involves only the exercise of the ordinary faculties of reasoning upon the materials supplied by a special knowledge, and the facility of manipulation which results from its habitual and intelligent practice; and is in no sense the creative work of that inventive faculty which it is the purpose of the Constitution and the patent laws to encourage and reward.

On this ground the decree of the circuit court is reversed, and the cause remanded, with directions to dismiss.

Note

Does Hollister hold that which James v. Campbell is said to have “authoritatively declared”?

Does Hollister hold that a government officer's unconsented–to infringement of an acknowledged patent right gives rise to an implied promise of compensation? Combined together, what do Hollister and James hold?

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