Shaw v. Cooper. lic any useful invention or art, and making it a subject of private monopoly. Against this consequence, the legislature have carefully guarded in the laws they have passed on the subject. It is undoubtedly just, that every discoverer should realize the benefits resulting from his discovery, for the period contemplated by law. But these can only be secured by a substantial compliance with every legal requisite. His exclusive right does not rest alone upon his discovery; but also upon the legal sanctions which have been given to it, and the forms of law with which it has been clothed. No matter by what means an invention may be communicated to the public, before a patent is obtained; any acquiescence in the public use, by the inventor, will be an abandonment of his right. If the right were asserted by him who fraudulently obtained it, perhaps, no lapse of time. could give it validity. But the public stand in an entirely different relation to the inventor. The invention passes into the possession of innocent persons, who have no knowledge of the fraud, and at a considerable expense, perhaps, they appropriate it to their own use. The inventor or his agent has full knowledge of these facts, but fails to assert his right; shall he afterwards be permitted to assert it with effect? Is not this such evi dence of acquiescence in the public use, on his part, as justly forfeits *321] his right? If an individual witness a sale and transfer of real estate under certain circumstances, in which he has an equitable lien or interest, and does not make known this interest, he shall not afterwards be permitted to assert it. On this principle it is, that a discoverer abandons his right, if, before the obtainment of his patent, his discovery goes into public use. His right would be secured, by giving public notice that he was the inventor of the thing used, and that he should apply for a patent. Does this impose anything more than reasonable diligence on the inventor? And would anything short of this be just to the public? The acquiescence of an inventor in the public use of his invention, can in no case be presumed, where he has no knowledge of such use. But this knowledge may be presumed from the circumstances of the case. This will, in general, be a fact for the jury. And if the inventor do not, immediately after this notice, assert his right, it is such evidence of acquiescence in the public use, as for ever afterwards to prevent him from asserting it. After his right, shall be perfected by a patent, no presumption arises against it from a subsequent use by the public. When an inventor applies to the department of state for a patent, he should state the facts truly; and indeed, he is required to do so, under the solemn obligations of an oath. If his invention has been carried into public use by fraud; but for a series of months or years, he has taken no steps to assert his right; would not this afford such evidence of acquiescence as to defeat his application, as effectually, as if he failed to state that he was the original inventor? And the same evidence which should defeat his application for a patent, would, at any subsequent period, be fatal to his right. The evidence he exhibits to the department of state is not only ex parte, but interested; and the questions of fact are left open, to be controverted by any one who shall think proper to contest the right under the patent. A strict construction of the act, as regards the public use of an invention, before it is presented, is not only required *by its letter and spirit, but also by sound policy. A term of fourteen years was *322] Shaw v. Cooper. deemed sufficient for the enjoyment of an exclusive right of an invention by the inventor; but if he may delay an application for his patent, at pleasure, although his invention be carried into public use, he may extend the period beyond what the law intended to give him.' A pretence of fraud would afford no adequate security to the public in this respect, as artifice might be used to cover the transaction. The doctrine of presumed acquiescence, where the public use is known, or might be known to the inventor, is the only safe rule which can be adopted on this subject. In the case under consideration, it appears, the plaintiff came to this country, from England, in the year 1817, and being an alien, he could not apply for a patent, until he had remained in the country two years. There was no legal obstruction to his obtaining a patent in the year 1819; but it seems, that he failed to apply for one, until three years after he might have done so. Had he used proper diligence in this respect, his right might have been secured; as his invention was not sold in England, until the year 1819. But, in the two following years, it is proved to have been in public use there, and in the latter year, also in France. Under such circumstances, can the plaintiff's right be sustained? His counsel assigns as a reason for not making an earlier application, that he was endeavoring to make his invention more perfect; but it seems, by this delay, he was not enabled, essentially, to vary or improve it. The plan is substantially the same as was carried into public use through the brother of the plaintiff, in England. Such an excuse, therefore, cannot avail the plaintiff. For three years, before the emanation of his patent, his invention was in public use, and he appears to have taken no step to assert his right. Indeed, he sets up, as a part of his case, the patent of Forsyth, as a reason why he did not apply for a patent in England. The Forsyth patent was dated six years before. Some of the decisions of the circuit courts which are referred to, were overruled in the case of Pennock v. Dialogue. They made the question of abandonment to turn upon the *intention of the inventor. But such is not considered to be the true ground. Whatever may be the [*323 intention of the inventor, if he suffers his invention to go into public use through any means whatsoever, without an immediate assertion of his right he is not entitled to a patent; nor will a patent, obtained under such cir cumstances, protect his right. The judgment of the circuit court must be affirmed, with costs. THIS cause came on to be heard, on the transcript of the record from the circuit court of the United States for the southern district of New York, and was argued by counsel: On consideration whereof, it is adjudged and ordered by this court, that the judgment of the said circuit court in this cause be and the same is hereby affirmed, with costs. 1 Planing-Machine Co. v. Keith, 101 U. S. 479. * Wyeth v. Stone, 1 Story 278. 203 *SYLVAN PEYROUX and others, Claimants of The Steamboat PLANTER, Appellants, v. WILLIAM L. HOWARD and FRANCOIS VARION, Libellants. Admiralty jurisdiction.-Lien of material-men.- Waiver. A libel was filed in the district court of the United States for the eastern district of Louisiana, against the steamboat Planter, by H. & V., citizens of New Orleans, for the recovery of a sum of money alleged to be due to them, as shipwrights, for work done and materials found in the repairs of the Planter; the libel asserted, that, by the admiralty law and the laws of the state of Louisiana, they had a lien and privilege upon the boat, her tackle, &c., for the payment of the sums due for the repairs and materials, and prayed admiralty process against the boat &c.; the answer of the owners of the Planter averred, that they were citizens of Louisiana, residing in New Orleans, that the libellants are also citizens, and that the court have no jurisdiction of the cause: Held, that this was a case of admiralty jurisdiction. By the civil code of Louisiana, workmen employed in the construction or repairs of ships or boats enjoy the privilege of a lien of such ships or boats, without being bound to reduce their contracts to writing, whatever may be their amount; but this privilege cases, if they have allowed the ship or boat to depart, without exercising their rights; the state law, therefore, gives a lien in this case. In the case of The General Smith, 4 Wheat. 438, it was decided, that the jurisdiction of the admiralty in cases where the repairs are upon a domestic vessel, depends upon the local law of the state. Where the repairs have been made, or necessaries furnished, to a foreign ship, or to a ship in the ports of a state to which she does not belong, the general maritime law gives a lien on ships as security; and the party may maintain a suit in the admiralty to enforce his right; but as to repairs or necessaries in the port or state to which the ships belong, the case is gov. erned altogether by the local law of the state; as no lien is implied, unless it is recognised by that law; if, however, the local law gives the lien, it may be enforced in the admiralty.1 The services in this case were performed in the port of New Orleans, and whether this was done within the jurisdiction of the admiralty or not, depends on the fact, whether the tide in the Mississippi ebbs and flows as high up the river as the port of New Orleans. The court considered themselves authorized judicially to notice the situation of New Orleans, for the purpose of determining whether the tide ebbs and flows as high up the river as that place; and being satisfied, that although the current of the Mississippi, at New Orleans, may be so strong as not to be turned backwards by the tide, yet as the effect of the tide upon the current is so great as to occasion a regular rise and fall of the water, New Orleans may be *properly said to be within the ebb and flow of the tide, and the jurisdiction of the admiralty prevails there. In order to the decision whether the admiralty jurisdiction attaches to such services as those performed by the libellants, the material consideration is, whether the service was essentially a maritime service, and to be performed substantially on the sea or tide-water. It is no objection to the jurisdiction of the admiralty in the case, that the steamboat Planter was to be employed in navigating waters beyond the ebb and flow of the tide. In the case of The Steamboat Jefferson, it was said by this court, that there is no doubt, the jurisdiction exists, although the commencement or termination of the voyage may happen to be at some place beyond the reach of the tide. *325] Some of the older authorities seem to give contenance to the doctrine, that an express contract operates as a waiver of the lien; but it is settled, at the present day, that an express contract for a stipulated sum is not of itself a waiver of a lien; but that, to produce that effect, the contract must contain some stipulations inconsistent with the continuance of such lien, or from which a waiver may fairly be inferred. 'See note to The General Smith, 4 Wheat. Murray v. Lazarus, 1 Paine 572; The Kenting444. ton, 8 Am. L. Reg. 145; The Mary, Bee 00; The Commonwealth, 23 Am. L. Reg. 86. As to what amounts to a waiver of the lien for repairs, see The Medora, 2 W. & M. 92; The Planter. APPEAL from the District Court for the Eastern District of Louisiana. In the district court, a libel was filed, on the 10th December 1830, by Howard & Varion, shipwrights, residing in New Orleans, against the steamboat Planter, claiming the sum of $2193.35, being the balance asserted to be due to them for the price of work, labor, materials furnished, and repairs made, on the said boat, under contracts of 13th September and 19th October 1830; and alleging that, by the admiralty law and the law of the state of Louisiana, they had a lien on the said boat for the payment of the same; and that she was about leaving the port of New Orleans, and praying process, &c. The account for the work, materials, &c., was annexed to the libel. The owners of the steamboat Planter filed a claim and plea, setting forth, that they were all citizens of Louisiana, all resided in the city of New Orleans, and that the libellants were also citizens of that state; and that, therefore, the district court of the United States had not jurisdiction of the case. By a supplemental answer, the respondents denied all the facts set forth in the libel. *The plea to the jurisdiction of the court was overruled and dis[*326 missed; and the parties proceeded to take the testimony of witnesses, by depositions, which were filed as part of the proceedings in the case. By the first contract, the shipwrights stipulated to do certain specified work, and furnish certain materials, the same to be approved by 66 experts,' ," for which they were to be paid the sum of $1150. By the contract of the 19th of October, the Planter was to be hauled on shore, and in consideration of $475, of which $200 was to be paid in cash, and $275 in one month after the boat should be launched and set afloat, certain other repairs were to be done to her, and she should be delivered and ready to receive a cargo by the 20th of November, under a penalty of $25 per day for each day her delivery should afterwards be retarded by the shipwrights. The evidence in the case is fully stated in the opinion of the court. The district court made the following decree: "The libellants claim a balance due them of $2193.35 for work and materials furnished in the repairs of the steamboat Planter, at the request of the claimants, and for which they have a lien by the local law. The claimants, in their first answer, deny the jurisdiction of the court, on the ground, that all the parties were citizens of the same state, to wit, of Louisiana; that objection, however, was not insisted upon at the trial, and is not sustainable on the admiralty side of this court. In their supplemental answer, they deny generally the allegations of the libellants, and pray for the dismissal of the libel and damages. The whole account of the libellants against the owners amounts to $3693.35, including the amount of the written contracts entered into between the parties; of this sum they acknowledge the payment of $1500, leaving, as they allege, a balance of $2193.35 due *them. By the first contract, made on the 11th September 1830 (the boat be[*327 ing then in the water), the libellants agreed, for the sum of $1150, to make certain repairs on that part of the boat which was above water, from the wheel-house to the bow; and it was further stipulated, that if they made any other repairs, by replacing unsound timbers, in any other part of the boat above water, not then discovered, they were to be paid separately for so much. After commencing the work, it was perceived, that the boat The Planter. required repairs under the water as well as above, and in consequence of that discovery, the claimants, through Captain Jarreau, master of the boat, and one of the owners, agreed to pay the libellants $475 for hauling out the boat, and for launching her, when she should be repaired; and as the quantity of work to be done was uncertain, it was stipulated, that an account of it should be kept, and if approved by Captain Jarreau, under whose inspection the work was to be done, the claimants bound themselves to pay the amount thus to be ascertained; this latter contract was made on the 19th October last. After the boat was hauled out, it appears, the work under both contracts was carried on simultaneously. On a first view of the account-current exhibited in this case, it would seem, from the dates, that at least a part of the work to be done under the first contract was again charged, but the subsequent testimony taken in this case shows that these charges were made on account of the extra repairs provided for under the first contract; and it further appears, that all the charges made after the 19th of October, have no relation to the first agreement, but all relate to the work contemplated by the second contract. From the complexion of the testimony taken by the complainants, their real defence seems to be, that the prices of the work charged are greater than they should be, that it was not executed in a proper manner, and that the libellants have forfeited a considerable sum of money, in consequence of not delivering the boat within the time stipulated in the contract. As to the first two objections, the evidence is conclusive in favor of the libellants; Captain Jarreau, himself, upon being shown the account, did not object to it; on the contrary, expressed himself satisfied with the work, and said he was "not surprised at *328] it, because there was a great deal more work done than he had any idea of ;" with respect to the non-delivery of the boat at the time agreed upon, the fault chiefly attaches to Captain Jarreau, who, in several instances, retarded the work, by opposing repairs which were proposed by the libellants, but which turned out to be indispensable, and were afterwards ordered by him to be made; besides, he promised them indemnity against their obligation to pay $25 a day for every day they were in default in delivering the boat, and gave as the reason, that they had to do more work than was at first anticipated. The charge of $475, is for the specific service of hauling out and launching the boat, and must be allowed as such. On the whole, the evidence and exhibits in the case fully sustain the demand of the libellants; it is, therefore, ordered, adjudged and decreed, that the claimants pay to them the said sum of 1193.35, and costs of suit." From this decree the owners of the Planter appealed to this court. The case was argued by Morton, for the appellants; Livingston submitted a printed argument. For the appellants, it was contended-1. It does not appear, upon the proceedings, that the court below had jurisdiction. 2. That the libellants had waived any privilege or lien upon the said steamboat, under the laws of Louisiana, and therefore, proceedings in rem were improper. 3. Though the court had jurisdiction, yet the decree rendered is erroneous. On the first point, "that it does not appear, upon the proceedings, that the court below had jurisdiction ;" Mr. Morton contended, that jurisdiction. should appear affirmatively, for the district courts of the United States are |