Page:Federal Reporter, 1st Series, Volume 9.djvu/628

 ILLINGWORTH V. SPAXJLDING. 613 �In the amendment proposed a foreign use of the patent is set up, which, in itself, is an immaterial fact. But the offer goes further, and includes proof of a knowledge of such use by persons residing in this country. This suggests a defence different from that of a for- eign patent, or of a description in a printed publication, and one, I believe, that bas never been adjudieated. The nearest approach to it is the case of Judson v. Gope, supra. A careful examination of the questions raised on the trial leads to the conclusion that the learned judge who presided was inclined to regard as tenable «the defence here proposed. A witness named Prench was on the stand, and the defendants' counsel asked: "Have you any knowledge of Buch valve being known and used prier to 1850 by James Watt, at his manufactory in Birmingham called Soho?" The question was objected to for want of sufficient notice under the statute, inasmuch as the notice had not stated "who had knowledge" of the use of the valve by James Watt, but stated simply thait it had been used by him at the place named in the interrogatory. The judge said that the question was new, and although he had serious doubts whether any proof was competent to render void an American patent, except that it had been patented abroad, or had been described in a printed publication; yet, in speaking of the defective notice, he said: �"If the averment had been that the witness French, residing at a certain place described, had knowledge of the fact that James Watt had known and used this invention in England, perhaps the proof would be competent. If the notice had averred that this witness had knowledge of the use of this in- vention at Birmingham at the time stated, the question perhaps might be admissible." �But we are not willing to attempt to determine a question so im- portant upon a motion to amend a pleading. Without expressing any opinion, we have concluded to allow the amendment proposed in the case of Illingworth v. Spaulding, and to deny the application to strike out in the case of Doyle v. Spaulding. This leaves the matter within the record to be decided upon the final hearing, and gives to either party the benefit of an appeal, if the decision here should be unsat- isfactory. ��� �