Keplinger v. De Young

Citations: 23 U.S. 358; 6 L. Ed. 341; 10 Wheat. 358; 1825 U.S. LEXIS 230

Court: Supreme Court of the United States; March 19, 1825; Federal Supreme Court; Federal Appellate Court

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Keplinger initiated a lawsuit against De Young in the Fourth Circuit for the District of Maryland, alleging infringement of his patent for a machine designed to manufacture watch chains. The case focused on the third count of the declaration, which accused De Young of unlawfully using Keplinger's patented improvement without written consent. In his defense, De Young denied that Keplinger was the rightful inventor and claimed he merely purchased watch chains from John Hatch and John C. Kirkner, who were manufacturing them using Keplinger's machine.

During the trial, Keplinger presented his patent, dated May 4, 1820, and demonstrated that he was indeed the original inventor. Evidence showed that De Young, along with Hatch and Kirkner, utilized the patented machine to produce watch chains from May to December 1820. To support his defense, De Young introduced a contract dated May 3, 1820, with Hatch and Kirkner, outlining their obligation to manufacture a specified quantity of watch chains exclusively for De Young, detailing pricing and payment terms. The contract stipulated that Hatch and Kirkner would not engage in any competing manufacturing and would devote their efforts solely to fulfilling De Young's orders.

The defendant testified that his relationship with Hatch and Kirkner was solely as a purchaser of watch-chains made under a contract. The plaintiff demonstrated that at the time of the contract, the defendant was aware of the machine described in the patent, its original invention by the plaintiff, and the plaintiff's intent to patent it. The contract was established for Hatch and Kirkner to manufacture watch-chains using a machine similar to the plaintiff's after the patent was secured. It was confirmed that Hatch and Kirkner used the plaintiff's machine with the defendant's knowledge and consent, receiving notice of the patent on May 5, 1820, and delivering the manufactured chains to the defendant under the contract.

At the defendant's request, the court instructed the jury that the plaintiff was not entitled to a verdict on the first two counts of his declaration, as the alleged actions did not constitute a violation of the plaintiff's patent. If the jury found the plaintiff to be the sole inventor and that the defendant's only connection to Hatch and Kirkner was through the contract, then no breach of the patent rights occurred, and the verdict should favor the defendant, regardless of whether the defendant supplied materials for the chains.

The plaintiff's counsel objected to this instruction, leading to a verdict for the defendant, which was appealed. The central issue for the appellate court is whether the lower court erred in its jury instruction, hinging on the interpretation of the 3rd section of the act of Congress from April 17, 1800, which stipulates penalties for unauthorized use of patented inventions. The contract and evidence presented could suggest either that the machine was owned or leased by the defendant, potentially infringing on the plaintiff's patent rights, but the court did not resolve this matter definitively.

The contract in question constituted an agreement for the defendant to purchase up to five gross of watch chains per week from Hatch and Kirkner over six months, with the stipulation that Hatch and Kirkner would exclusively dedicate their time to this manufacturing and not sell the chains elsewhere. The court indicated that if this contract was genuine and not merely a facade, then it would be unreasonable to determine that it breached the plaintiff's patent rights, especially if the defendant had no other association with Hatch and Kirkner apart from this agreement. Such a ruling could unjustly penalize innocent parties who contract with manufacturers without knowledge of existing patents. The court clarified that while arguments were presented as if the lower court had considered all evidence, only the defendant's counsel requested specific instructions, which pertained solely to their relationship with Hatch and Kirkner regarding the watch chains. The jury retained the authority to find a breach of the patent rights if they concluded the contract was insincere or merely an attempt to evade the law. The court noted that had the plaintiff's counsel sought broader instructions regarding the evidence, they would have been obliged to provide guidance, but since this was not done, the court would not address any evidence outside the limited scope of the defendant's instruction. The court also affirmed that the legal status of the case remained unchanged even if the defendant had supplied materials for the chains at Hatch and Kirkner's expense, as this was based on the same principles. The judgment was upheld with costs awarded.