## Facts

- Jordan, claiming rights under John Goulding’s patent, sued Agawam Woolen Company in equity to enjoin use of machinery for processing wool and other fibrous materials.
- The patented technology concerned improvements to machinery and processes used to card and prepare fibers for spinning into yarn, streamlining an established multi-machine workflow.
- Agawam used accused machinery and denied infringement and/or attacked the patent’s validity.
- A key dispute concerned inventorship: the alleged inventor had conceived the overall plan and conducted experiments to perfect the machine while employing workers; an employee offered suggestions about certain components, which the defendant characterized as the true invention.
- Agawam asserted defenses including anticipation/prior use, derivation (fraudulent procurement from another’s invention), public use or sale before application, abandonment from delay, and objections relating to a reissue and a special congressional extension.
- The circuit court granted relief to Jordan, sustaining the patent and finding infringement; Agawam appealed.

## Issues

1. In a patent infringement suit in equity, must an answer plead specific names and places before the defendant may introduce evidence of prior knowledge or prior use?
2. Is a defense alleging that the patentee fraudulently obtained the patent for another’s invention sufficient without alleging the other inventor’s reasonable diligence in perfecting the invention?
3. When an employer conceives the plan and experiments to perfect an invention, do employee suggestions that are not a complete independent invention defeat the employer’s claim to inventorship?
4. What weight may be given to heavily impeached testimony offered to invalidate a long-standing patent?
5. Is an allegation of sale or public use “prior to the application” sufficient absent an allegation that the use or sale occurred more than two years before the application?
6. Does delay in applying for a patent while experiments and practical testing continue create a presumption of abandonment?
7. Must a certificate of extension issued under a special act of Congress recite all statutory conditions?
8. May a patentee suing under a reissued patent recover damages for infringements occurring before the reissue date?

## Decision

- The Supreme Court substantially affirmed the decree sustaining the patent and clarified limits on defenses and remedies.
- Evidence of prior knowledge or use was inadmissible absent an answer identifying alleged prior users by name and residence and stating where the invention was used.
- A derivation/fraud defense was insufficient without alleging that the purported first inventor was using reasonable diligence to adapt and perfect the invention.
- Priority belonged to the person who first perfected the machine and made it capable of useful operation.
- Employee suggestions made during the employer’s experimentation did not defeat the employer’s rights unless they amounted to a new method or arrangement constituting a complete invention.
- A long-standing patent would not be declared invalid on testimony whose credibility was extensively impeached.
- The public use/sale defense was inadequately pleaded without alleging that the use or sale occurred more than two years before the patent application.
- No presumption of abandonment arose from delaying application while experiments continued and the invention was being perfected and practically tested.
- An extension certificate issued under a special act of Congress need not recite all provisos contained in the act.
- Damages were unavailable for infringements occurring before the date of the reissue when the patentee sued under a reissued patent.

## Legal Principles

- In equity patent litigation, prior-use/knowledge defenses require specific pleading of the alleged prior users’ identities and the place of use; otherwise the evidence is excluded.
- A derivation defense must allege not only that another conceived the invention first, but also that the other inventor exercised reasonable diligence in reducing it to practical form.
- The right to a patent rests with the inventor who first perfects the invention and makes it capable of useful operation.
- When an employer conceives the invention and is experimenting to perfect it, employee suggestions that do not independently constitute a complete invention do not transfer inventorship or ownership.
- A long-standing patent is not readily invalidated on weak proof, particularly where the principal witness is heavily impeached.
- A public use or sale defense must plead the statutory timing element (use or sale more than two years before application), not merely use or sale before application.
- Delay during ongoing experimentation and testing does not, by itself, show abandonment.
- A reissued patent does not support recovery of damages for infringements occurring before the reissue date.

## Conclusion

The Court upheld the patent against broad invalidity attacks, imposed strict pleading rules for prior-use and public-use defenses in equity, confirmed that priority turns on first perfection and useful operation (with employee suggestions insufficient absent a complete independent invention), and limited remedies by denying damages for infringements predating a reissue.


Agawam Woolen Co. v. Jordan, 74 U.S. (7 Wall.) 583 (1868)